UBS AG v. Tilda-Soft LTD
Claim Number: FA1604001671465
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is Tilda-Soft LTD (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubs-uae.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 known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 21, 2016; the Forum received payment on April 22, 2016.
On April 21, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ubs-uae.com> 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 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 2016 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-uae.com. Also on April 22, 2016, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 16, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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
Policy ¶ 4(a)(i)
Complainant has rights in the UBS mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,573,828, registered on December 26, 1989). Respondent’s <ubs-uae.com> domain name is confusingly similar to the UBS mark because it contains the mark along with a hyphen, geographic descriptor and generic top-level domain (“gTLD”).
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <ubs-uae.com> domain name as Respondent has no association with Complainant. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used to confuse Internet users into believing that Respondent is connected to Complainant.
Policy ¶ 4(a)(iii)
Respondent uses the <ubs-uae.com> domain name in bad faith because the resolving website falsely suggests a partnership between Complainant and Respondent to confuse customers and capitalize on Complainant’s goodwill. Respondent registered the <ubs-uae.com> domain name in bad faith because it did so with constructive or actual knowledge and because the UBS mark is famous such that its use by Respondent indicates opportunistic bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is UBS AG of Zurich, Switzerland. Complaint is the owner of numerous domestic and international registrations for the mark UBS and related marks, which it has used continuously since at least as early as 1962, in connection with its provision of financial services including banking, wealth management, securities brokerage and lending services.
Respondent is Tilda-Soft LTD of London, United Kingdom. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. The Panel notes that the <ubs-uae.com> domain name was created on or about March 28, 2016.
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.”).
Complainant asserts rights in the UBS mark through its registration with the USPTO (e.g., Reg. No. 1,573,828, registered on December 26, 1989). Complainant has provided a copy of this registration hence the Panel finds that Complainant holds rights in the UBS mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
Complainant contends that Respondent’s <ubs-uae.com> domain name is confusingly similar to the UBS mark because it contains the mark along with a hyphen, the term “uae” and the “.com” gTLD. Complainant claims that “uae” is a geographically descriptive term, and that none of these changes can satisfactorily distinguish the mark and the domain name. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis). The Panel here finds the <ubs-uae.com> domain name confusingly similar to the UBS mark according to Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes 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), 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 (Nat. Arb. 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). The Complainant has met this burden.
Complainant states that Respondent is not commonly known by the <ubs-uae.com> domain name and that Respondent has no association with Complainant. The Panel notes that the WHOIS information lists “Tilda-Soft LTD” as Registrant and Respondent has provided no evidence to contradict Complainant’s assertions. As such, the Panel finds that Respondent is not commonly known by the <ubs-uae.com> domain name according to Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Complainant alleges that Respondent uses the <ubs-uae.com> domain name to confuse consumers into thinking that Respondent is affiliated with Complainant, thereby failing to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant has provided screenshots which include a direct reference to Complainant on the “Contact” page of the website to which the disputed domain name resolves. The Panel finds that evidence sufficient to support a finding that Respondent fails to use the <ubs-uae.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). 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).”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent uses the <ubs-uae.com> domain name in bad faith because the resolving website falsely suggests a partnership between Complainant and Respondent to confuse customers and capitalize on Complainant’s goodwill. Complainant has provided screenshots of the resolving website to illustrate this use. The Panel finds that evidence sufficiently supports a finding that Respondent has registered and uses the <ubs-uae.com> domain name in bad faith according to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also Monsanto Co. v. Decepticons, FA 101536 (Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <ubs-uae.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: May 30, 2016
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