UBS AG v. ratzel laura
Claim Number: FA1706001735687
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, Washington D.C., USA. Respondent is ratzel laura (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubsfinancialpro.com>, registered with Ligne Web Services SARL dba LWS.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 13, 2017; the Forum received payment on June 13, 2017. The Complaint was submitted in both English and French.
On June 15, 2017, Ligne Web Services SARL dba LWS confirmed by e-mail to the Forum that the <ubsfinancialpro.com> domain name is registered with Ligne Web Services SARL dba LWS and that Respondent is the current registrant of the name. Ligne Web Services SARL dba LWS has verified that Respondent is bound by the Ligne Web Services SARL dba LWS 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 June 20, 2017, the Forum served the French language Complaint and all Annexes, including a French language Written Notice of the Complaint, setting a deadline of July 10, 2017 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@ubsfinancialpro.com. Also on June 20, 2017, the French language 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 technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 13, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 Notices, 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 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 made the following contentions
Complainant has been using the UBS mark in commerce in connection with a wide range of financial services, including banking, investment banking, securities brokerage services, and lending services. Complainant registered the UBS mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,573,828, registered Dec. 26, 1989). See Compl., at Attached Annex 3. Respondent’s <ubsfinancialpro.com> domain name is confusingly similar to Complainant’s mark as it contains the mark in its entirety and appended the generic terms “financial” and “pro,” along with the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <ubsfinancialpro.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses it to divert users seeking Complainant to a website which engages in phishing. See Compl., at Attached Annex 4.
Respondent registered and uses the <ubsfinancialpro.com> domain name in bad faith. Respondent attempts to falsely suggest a partnership, connection, and affiliation with Complainant, confuse consumers, and capitalize on the fame and notoriety of Complainant and its UBS mark. Further, Respondent uses the webpage to engage in phishing. See Compl., at Attached Annex 4. Finally, Respondent had actual or constructive notice of Complainant’s mark because it registered a confusingly similar domain name using the entire and distinct UBS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
LANGUAGE OF THE PROCEEDINGS
The Panel notes that the Registration Agreement is written in the French Language, thereby making French the language of the proceedings. However, having reviewed the applicable rules regarding language of the proceedings under the UDRP and pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the French language Complaint and Commencement Notification, and, absent a Response, concludes that the remainder of the proceedings may be conducted in the English language.
1. Complainant is a Swiss company that provides a wide range of financial services, including banking, investment banking, securities brokerage services, and lending services.
2. Complainant registered the UBS mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,573,828, registered Dec. 26, 1989).
3. Respondent registered the <ubsfinancialpro.com> domain name on June 10, 2017.
4. Respondent uses the disputed domain name to divert users seeking Complainant to a website which engages in phishing.
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 cancelled or transferred:
(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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 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 Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the 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.”).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s UBS mark. Complainant argues that Respondent’s <ubsfinancialpro.com> domain name is identical or confusingly similar to Complainant’s mark as it contains the mark in its entirety and appended the generic terms “financial” and “pro,” along with the gTLD “.com.” An objective bystander would naturally think that the domain name related to Complainant’s professional financial services.Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that the <ubsfinancialpro.com> domain name is confusingly similar to the UBS mark under Policy ¶4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s UBS mark and to use it in its domain name adding the generic terms “financial” and “pro” creating the false impression that the domain name related to the professional financial activities of Complainant;
(b) Respondent registered the <ubsfinancialpro.com> domain name on June 10, 2017;
(c) Respondent uses the disputed domain name to divert users seeking Complainant to a website which engages in phishing;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent has no rights or legitimate interests in the <ubsfinancialpro.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “ratzel laura” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the UBS mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant submits that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel finds that Respondent is not commonly known by the <ubsfinancialpro.com> domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use because Respondent engages in a phishing scheme to obtain information from users. Phishing schemes can evince a failure to provide a bona fide offering of goods or services or legitimate noncommercial or fair use. See Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum March 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving website containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). Complainant provides a screenshot of a warning it received when attempting to access the disputed domain name. See Compl., at Attached Annex 4. The screenshot displays the message with the headline “Deceptive site ahead.” Id. The Panel therefore finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <ubsfinancialpro.com> domain name in bad faith by attempting to suggest falsely a partnership, connection, and affiliation with Complainant, confuse consumers, and capitalize on the fame and notoriety of Complainant and its UBS mark. Commercially benefiting attempting to cause confusion can evince bad faith registration and use. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum October 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complainant submits that Respondent uses the resolving webpage for the disputed domain name to phish for users’ information. The Panel agrees with that conclusion. See Compl., at Attached Annex 4. Phishing for information can also evince bad faith. See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).”). The Panel finds that Respondent has attempted to benefit commercially off Complainant’s mark, that this is in bad faith per Policy ¶ 4(b)(iv), and that Respondent has attempted to phish for information in bad faith per Policy ¶ 4(a)(iii).
Secondly, Complainant submits that Respondent had actual or constructive knowledge of Complainant’s UBS mark at the time of registering the domain name. Panels may disregard arguments of bad faith based on constructive notice as UDRP decisions generally decline to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, the Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge does adequately evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of the mark because it registered a confusingly similar domain name using the entire and distinct UBS mark. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, further demonstrating bad faith under Policy ¶ 4(a)(iii).
Thirdly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the UBS mark and in view of the conduct that Respondent has
engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ubsfinancialpro.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 14, 2017
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