UBS AG v. KHANH TRAN HUYNH
Claim Number: FA1606001682014
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, United States. Respondent is KHANH TRAN HUYNH (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubsvn.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 30, 2016; the Forum received payment on July 1, 2016.
On July 1, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ubsvn.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 July 5, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 25, 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@ubsvn.com. Also on July 5, 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 August 2, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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’s Contentions
1. Complainant uses the UBS mark in connection with providing financial services. Complainant has registered the UBS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989), which establishes rights in the mark. See Compl., at Attached Annex 5. Respondent’s <ubsvn.com> domain name is confusingly similar to the UBS mark as it contains the mark in its entirety, the geographic tern “vn” for Vietnam, and the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the <ubsvn.com> domain name. Respondent is not commonly known by the disputed domain name, nor is Respondent a licensee or partner of Complainant. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <ubsvn.com> domain name. Rather, the domain resolves to a website that is falsely suggesting a partnership with Complainant for financial services. See Compl., at Attached Annex 7.
3. Respondent is using the <ubsvn.com> domain name in bad faith. First, Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Second, Respondent has engaged in opportunistic bad faith due to the website being so obviously connected with Complainant. Third, Respondent is attempting to pass itself off as Complainant by using the UBS mark on the website, and similar color schemes and layouts that are used on <ubs.com>. See Annexes 4, 7. Further, Respondent had actual and/or constructive knowledge of the UBS mark and Complainant’s rights therein because of Respondent using it prominently on the site, the marks’ fame and notoriety, and multiple trademark registrations.
B. Respondent’s Contentions
1. Respondent has failed to submit a response in this proceeding.
1. Respondent’s <ubsvn.com> domain name is confusingly similar to Complainant’s UBS mark.
2. Respondent does not have any rights or legitimate interests in the <ubsvn.com> domain name.
3. Respondent registered or used the <ubsvn.com> domain name 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 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 uses the UBS mark in connection with providing financial services. Complainant purports it has registered the UBS mark with the USPTO (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989), and argues that its demonstration of trademark registrations is sufficient in establishing Policy ¶ 4(a)(i) rights in the UBS mark. Panels have found that a complainant’s valid USPTO registration is sufficient in establishing rights in a mark per Policy ¶ 4(a)(i), irrespective of a respondent’s country of origin. See Homer TLC, Inc. v. Artem Ponomarev, FA 1623825 (Forum July 20, 2015) (finding Policy ¶ 4(a)(i) rights “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 operates (here Russia).”). Therefore, this Panel finds that Complainant has established Policy ¶ 4(a)(i) rights in the UBS mark.
Next, Complainant argues that Respondent’s <ubsvn.com> domain name is confusingly similar to the UBS mark as it incorporates the mark in its entirety while adding the geographic term “vn” (for “Vietnam”), and the gTLD “.com. Panels have determined that such alterations do not overcome a finding of confusing similarity under Policy ¶ 4(a)(i). See Alticor Inc. v. Amway Vietnam Site At Amway-vn.com c/o Helping People Live Better Lives - Amway Vietnam Site, FA 1040099 (Forum Sept. 4, 2007) (finding the addition of the geographic abbreviation ‘vn’ and the gTLD “.com” to the AMWAY mark in <amwayvn.com> creates confusing similarity under Policy ¶ 4(a)(i)). The Panel finds the facts and holding in Alticor Inc. are applicable here, and determines that Respondent’s <ubsvn.com> domain name is confusingly similar to the UBS mark under Policy ¶ 4(a)(i). Therefore, the Panel agrees that Respondent’s <ubsvn.com> domain name is confusingly similar to the UBS mark under Policy ¶ 4(a)(i).
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.”).
Complainant argues that Respondent has no rights or legitimate interests in the <ubsvn.com> domain name. To begin, Complainant asserts that Respondent is not commonly known by the disputed domain name, is not affiliated with Complainant, and does not have authorization from Complainant to use the UBS mark. The Panel’s attention is directed to the WHOIS information for the disputed domain name, listing “KHANH TRAN HUYNH” as registrant of record. Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence, this Panel agrees that there is no basis to find Respondent is commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 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).
Further, Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <ubsvn.com> domain name. Rather, Complainant contends that the domain name resolves to an active website that is falsely suggesting a partnership with Complainant and offering financial services. See Compl., at Attached Annex 7. Panels have found such competitive use by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). Therefore, this Panel agrees that Respondent is making neither a bona fide offering of services, nor a legitimate noncommercial or fair use through the subject domain name.
Complainant contends that Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Complainant argues that the domain name resolves to an active website falsely suggesting a partnership with Complainant and offering financial services. See Compl., at Attached Annex 7. If the Panel agrees with Complainant and holds that Internet user confusion subsequently results, and that Respondent is making a profit, it may find that Respondent’s behavior constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See 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 argues that Respondent’s registration of the disputed domain containing Complainant’s allegedly famous UBS mark is evidence of bad faith registration. Complainant asserts that “the registration of a well-known trademark by a party with no connection to the owner of the trademark and no authorization and no legitimate purpose to utilize the mark is indicative of bad faith.” Compl., at p. 5. Implicit in Complainant’s argument, and nonexclusive of the enumerated Policy ¶ 4(b) contentions, is one of “opportunistic bad faith” (contained in the Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) citation). The language in Charles Jourdan reads that a situation where the incorporation of a mark in a domain may arise where it is ‘so obviously connected with the Complainant and its products that its very use by someone with no connection with the Complainant suggests opportunistic bad faith.’ D2000-0403 (WIPO June 27, 2000). But see Arizona Board of Regents, for and on behalf of Arizona State University v. Weiping Zheng, FA1504001613780 (Forum May 28, 2015) (finding that the respondent had acted in opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the disputed domain name just one week after the complainant filed applications to register the SUB DEVIL LIFE mark, and just days after those applications became public through the USPTO’s website); Avocent Huntsville Corp. v. Taro Yamada / Personal, FA1409001582613 (Forum Nov. 25, 2014) (holding that the respondent had engaged in opportunistic bad faith pursuant to policy ¶ 4(a)(iii), when it registered the disputed domain name immediately after the complainant mistakenly allowed it to expire). Therefore, the Panel finds that while Complainant has not laid out a case that falls within the parameters of what is understood as “opportunistic bad faith,” Complainant has still adduced a totality of evidence that demonstrates Respondent registered and used its famous UBS mark in bad faith under Policy ¶ 4(a)(iii).
Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the UBS mark prior to registration of the domain names because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ubsvn.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 15, 2016
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