UBS AG v. Jouet Daniels
Claim Number: FA1804001783500
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is Jouet Daniels (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubs-bank.org>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dr. Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 25, 2018; the Forum received payment on April 25, 2018.
On April 25, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ubs-bank.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant 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 April 25, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 15, 2018 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-bank.org. Also on April 25, 2018, 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 technical, administrative and billing contacts.
A timely Response was received and determined to be complete on May 14, 2018.
On May 16, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Beatrice Onica Jarka 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant contends that:
· It is one of the largest financial services firms in the world, present in all major financial centers worldwide, and has offices in more than 50 countries.
· Complainant uses the UBS mark to identify and distinguish its services, and has rights therein based upon its registration of the mark with trademark authorities worldwide, including with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,573,828, registered Dec. 26, 1989).
· Respondent’s <ubs-bank.org> domain name is confusingly similar to Complainant’s UBS mark, as the dominant portion of the domain name is identical to the mark, and the name includes the word “bank” and the “.org” generic top-level domain (“gTLD”).
· Respondent has no rights or legitimate interests in the <ubs-bank.org> domain name.
· Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the UBS mark in any manner.
· Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the name is used in connection with a website which purports to offer banking and financial education services under the name “UBS Bank.”
· Respondent registered and is using the <ubs-bank.org> domain name in bad faith. The registration and use of the name and associated website amounts to an intentional effort to mislead and defraud consumers for commercial gain.
· Further, Respondent clearly had actual and/or constructive knowledge of Complainant and its rights at the time it registered and subsequently used the domain name.
B. Respondent
Respondent, Jouet Daniels, contends that:
· It is an uninterested third party who was contracted as a web designer to put up a landing page for a client of a client.
· It does not know and has no communication with the owner of the domain name for which Respondent designed the website.
· Respondent did not have any knowledge of Complainant.
· Respondent has notified the client that the site will be removed, and that the client should speak with his client about possible trademark infringement. The <ubs-bank.org> domain name is now offline and will remain that way.
Respondent stated without documenting that it registered at a request of a client the disputed domain name in its capacity as a web designer, without having other further communication with the client. The Panel considers that such statement even if documented would not relieve the Respondent in its capacity as registrant of the disputed domain name to act in good faith while seeking and using the registration of the said domain.
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.
Complainant claims rights in the UBS mark based upon registration of the mark with the USPTO (e.g. Reg. No. 1,573,828, registered Dec. 26, 1989). See Compl. Annex 3. According to the UDRP practice, registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). In this sense, the Panel holds that Complainant’s registration of the UBS mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues Respondent’s <ubs-bank.org> domain name is confusingly similar to the UBS mark, as the name incorporates the mark in its entirety, and includes the word “bank” and the “.org” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis, according to the UDRP practice. See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark); see also 3M Company v. Kabir S Rawat, FA 1725079 (Forum May 9, 2017) (”Respondent’s <nexcare.org> domain name incorporates the NEXCARE mark and merely adds “.org.” This addition does not distinguish the disputed domain name from Complainant’s mark.”). The Panel notes —though Complainant does not argue—that the domain name also includes a hyphen between the mark and added term. Addition of hyphens does not distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Health Devices Corp. v. Aspen S T C, FA 158254 (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).”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Consequently, this Panel determines the <ubs-bank.org> domain name is confusingly similar to the UBS mark per Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), the Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name, then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <ubs-bank.org> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the UBS mark in any way. WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “Jouet Daniels,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel finds therefore under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that Respondent uses the domain name to pass off as Complainant and purport to offer banking and financial services. Use of a domain name to pass off as and compete with a complainant may not amount to a bona fide offering of goods and services or legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also j2 Global Canada, Inc. and Landslide Technologies, Inc. v. VIJAY S KUMAR / STRATEGIC OUTSOURCING SERVICES PVT LTD, FA 1647718 (Forum Jan. 4, 2016) (finding that the disputed domain purports to offer for sale goods and services in the field of electronic marketing, which directly overlap with the services covered by Complainant’s registrations and offered by Complainant online, and therefore Respondent does not have rights or legitimate interests through its competing use). Complainant provides screenshots of the website resolving from the domain name which show the use of the “UBS Bank” name in connection with the offering of financial services similar to those which are offered by Complainant. See Compl. Annex 4. The Panel determines therefore that Respondent lack rights and legitimate interests in the domain name per Policy ¶¶ 4(c)(i) and (iii).
Complainant further argues Respondent lacks rights and legitimate interests in the disputed domain name because the website resolving from the domain name appears to be fraudulent. Use of a domain name to phish for information from, or otherwise defraud, Internet users is not a use indicative of rights or legitimate interests in the name per Policy ¶ 4(a)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent lacked rights and legitimate interests in a domain name with which it conducted a phishing scheme to procure “Internet users’ personal information”). Complainant does not expand on its assertion except to claim the resolving website has “the look and feel of a fraudulent site.”
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
The Panel agrees and finds Respondent’s use to be indicative of a lack of rights and legitimate interests in the name per Policy ¶ 4(a)(ii).
Complainant claims Respondent’s use of the <ubs-bank.org> domain name to pass off as Complainant in order to compete with Complainant’s business demonstrates that Respondent registered and used the domain name in bad faith. Use of a domain name to create a false impression of affiliation with a complainant in order to compete with complainant’s business is behavior indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 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.”). Complainant claims the at-issue domain name resolves to a website which prominently displays the name “UBS Bank” and purports to offer financial services, the same services offered by Complainant. See Compl. Annex 4. Consequently, the Panel finds Respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant's UBS mark, it is inconceivable that Respondent could have registered the <ubs-bank.org> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines 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.").
The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant further asserts that Respondent’s use of the domain name to display Complainant’s mark and purport to offer services in the same industry as Complainant indicates it had actual knowledge of Complainant’s rights. The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the mark and thus registered the name in bad faith.
Respondent claims it did not register the domain in bad faith, as it had not heard of Complainant, and merely registered and used the domain name to the specifications of a client. In this regards, the Panel first notes that Respondent does not offer affirmative evidence of its good faith registration of the disputed domain name. Second, it is the opinion of this Panel that acting in the name or on behalf of a client does not waive any Registrant of the domain name of the obligation to show good faith in the registration and use of the domain name for which registration is sought.
As a consequence, this Panel finds that Respondent did register and has used the domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ubs-bank.org> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Beatrice Onica Jarka - Panelist
Dated: May 30, 2018
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