UBS AG v. Hildegard Gruener
Claim Number: FA1403001547946
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, Washington D.C., USA. Respondent is Hildegard Gruener (“Respondent”), Austria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubs-com.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on March 11, 2014; the National Arbitration Forum received payment on March 11, 2014.
On March 11, 2014, GODADDY.COM, LLC confirmed by e-mail message ad-dressed to the National Arbitration Forum that the <ubs-com.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current reg-istrant of the name. GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 12, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@ubs-com.com. Also on March 12, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as tech-nical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 7, 2014, pursuant to Complainant's request to have this dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Not-ices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is one of the largest financial services firms in the world, present in all major financial centers worldwide with offices in more than 50 countries, and with a staff of approximately 60,000 employees around the world.
Complainant holds a registration, which is on file with the United States Patent and Trademark Office (“USPTO”) for the UBS service mark (as Registry No. 1,573,828, registered December 26, 1989).
Respondent registered the disputed <ubs-com.com> domain name on January 13, 2013.
That domain name is confusingly similar to Complainant’s UBS mark.
Respondent has not been commonly known by the domain name.
Respondent does not have any connection with Complainant.
Respondent is not a licensee of Complainant, nor is it otherwise authorized to use Complainant’s UBS mark.
Respondent uses the website resolving from the disputed domain name to host links to third-party websites, including those of both Complainant and its com-mercial competitors.
Respondent presumably collects click-through fees from the operation of each of these links.
Respondent has no rights to or legitimate interests in the domain name.
Respondent has been a respondent in three previous UDRP proceedings in which it has been found to have registered and used in bad faith domain names derived from the marks of others.
Respondent knew of Complainant and its rights in the UBS service mark when it registered the <ubs-com.com> domain name.
The <ubs-com.com> domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representa-tions pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Complainant has rights in the UBS service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a UDRP complainant’s rights in a mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Austria). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates, it being sufficient that a UDRP complainant can demonstrate rights in a mark in some jurisdiction).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a re-view of the record that Respondent’s <ubs-com.com> domain name is confusing-ly similar to Complainant’s UBS service mark. The domain name contains the mark in its entirety, merely adding a hyphen followed by “com” and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in form-ing the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy. See Borders Props., Inc. v. Hewitt, FA 114618 (Nat. Arb. Forum July 23, 2002):
The added ‘com’ does not defeat a confusing similarity claim be-cause it takes advantage of a common typographical error. It is a basic mistake to type ‘com’ twice without typing the period after the targeted search term . . . [t]herefore, Respondent’s domain name is confusingly similar to Complainant’s mark.
As to Respondent’s inclusion of a hyphen in the domain name, see Health De-vices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003):
[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).
Finally, under this head of the Policy, with regard to the presence of gTLD “.com” in the domain name, see: Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007):
Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <ubs-com.com> domain name, that Respondent does not have any connection with Complainant, that Respondent is not a licensee of Complainant nor is it authorized to use Com-plainant’s UBS mark. Moreover, the WHOIS information for the domain name identifies the registrant only as “Hildegard Gruener,” which does not resemble the domain name. On this record, we conclude that Respondent has not been com-monly known by the <ubs-com.com> domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the pertinent WHOIS information, as well as all other evidence in the record, gave no indication that that respondent was commonly known by the domain names, and where a UDRP complainant had not authorized that respondent to register a domain name containing its mark).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <ubs-com.com> domain name to provide advertising links to third-party websites, including those of Complainant and its commercial competitors, and that Respondent presumably collects click-through fees from the operation of each of these links. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legit-imate noncommercial or fair use under Policy ¶ 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel there finding that, because a respondent’s domain names resolved to a website featuring advertis-ing links to websites of various third-parties, many of whom offered products and services in competition with those offered under a UDRP complainant’s mark, that respondent was not using the disputed domain names for either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that, as is alleged in the Complainant, Re-spondent has been a party to three other UDRP proceedings in which it was found to have registered and used in bad faith domain names derived from the marks of others. See OneWest Bank FSB v. Hildegard Gruener, FA 1482946 (Nat. Arb. Forum March 20, 2013); State Farm Mut. Auto. Ins. Co. v. Hildegard Gruener, FA 1521506 (Nat. Arb. Forum Oct. 22, 2013); Bloomberg Finance, L.P. v. Hildegard Gruener, FA 1522367 (Nat. Arb. Forum Nov. 17, 2013). Under Pol-icy ¶ 4(b)(ii), this pattern of bad faith registration and use of domain names stands as proof of bad faith in the registration and use of the instant domain name. See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (finding, under ¶ 4(b)(ii), that a pattern of prior UDRP proceedings in which a respondent was determined to have registered and used in bad faith domain names derived from the marks of others were evidence of a pattern of bad faith registration and use sufficient to justify a conclusion of bad faith in the registration and use of the domain name there in issue).
We are also convinced by the evidence that Respondent uses the contested <ubs-com.com> domain name to provide links to third-party websites, including those of both Complainant and its commercial competitors, that this employment of the domain name is likely to continue to cause confusion among Internet users as to the possibility of Complainant’s affiliation with the domain name and its resolving website, and that Respondent likely profits from this employment of the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of bad faith in the registration and use of the domain name. See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003):
Respondent's … use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the do-main name provided links to Complainant's competitors and Re-spondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’
Finally, we find from the evidence that Respondent knew of Complainant and its rights in the UBS service mark when it registered the <ubs-com.com> domain name. This independently demonstrates bad faith in the registration of the do-main name. See, for example, Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. For-um Aug. 17, 2006) (finding, under Policy ¶ 4(a)(iii), bad faith registration of a disputed domain name where a respondent was "well-aware of” a UDRP complainant's YAHOO! mark at the time of its registration of the domain name).
For all of these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <ubs-com.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 15, 2014
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