DECISION

 

UBS AG v. yin rui / Tian Hui Jin Ze Guo Ji Zi Chan Guan Li Bei Jing Limited

Claim Number: FA1607001682123

 

PARTIES

 

Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, Washington D.C., United States.  Respondent is yin rui / Tian Hui Jin Ze Guo Ji Zi Chan Guan Li Bei Jing Limited (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <ubsbritish.com> (‘the Domain Name’) registered with West263 International Limited.

 

PANEL

 

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.

 

Dawn Osborne of Palmer Biggs Legal as Panelist.

 

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the Forum electronically on June 30, 2016; the Forum received payment on July 1, 2016.

 

On July 4, 2016, West263 International Limited confirmed by e-mail to the Forum that the <ubsbritish.com> domain name is registered with West263 International Limited and that Respondent is the current registrant of the name.  West263 International Limited has verified that Respondent is bound by the West263 International Limited 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 7, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 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@ubsbritish.com.  Also on July 7, 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 4, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal 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.

 

RELIEF SOUGHT

 

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

 

A. Complainant

 

Complainant is one of the largest financial services firms in the world with offices in more than 50 countries. Since at least 1962 Complainant has been using the UBS mark in commerce in relation to its services. Complainant owns a large number of trade mark registrations in, inter alia, the USA and the EU for its UBS word mark and logo. The UBS mark is famous, The Complainant also owns and operates a web site at UBS.com. 

 

The Domain Name is confusingly similar to the Complainant’s UBS mark. The Domain Name contains all of the Complainant’s UBS mark and the dominant element of the domain name is identical to the Complainant’s mark. The geographically descriptive word ‘British’ and the gTLD .com does not differentiate the Domain Name from the Complainant’s famous mark. 

 

Respondent has no rights or legitimate interests in the Domain Name. Respondent is not authorized to use any of the Complainant’s marks. 

 

Respondent is using the Domain Name to suggest a connection with the Complainant when there is none and to capitalize on the Complainant’s famous mark. The Complainant is also concerned that the Respondent may use the Domain Name to commit fraud.

 

Respondent is using the Domain Name to divert Internet users seeking the Complainant’s web site. This is not a bona fide offering of services or a legitimate noncommercial use. 

 

Respondent is not commonly known or identified by the Domain Name or UBS. 

 

The Domain Name was registered in 2016 more than 50 years after the Complainant began using its UBS mark and more than twenty years after the Complainant registered its UBS.com domain name. 

 

UBS is not an ordinary word. 

 

The Domain Name was registered and is being used in bad faith. Prior Panels have found that use of a domain name to create a likelihood of confusion for commercial profit constitutes bad faith under Policy ¶ 4(b)(iv). 

 

Respondent knew that the Domain Name infringed the Complainant’s rights when it was registered and is currently infringing the Complainant’s rights by using the UBS logo on the web site attached to the Domain Name. 

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

Complainant is one of the largest financial services firms in the world with offices in more than 50 countries. Since at least 1962 Complainant has been using the UBS mark in commerce in relation to its services. Complainant owns a large number of trade mark registrations in, inter alia,  the USA and the EU for its UBS word mark and logo. The UBS mark is famous, The Complainant also owns and operates a web site at UBS.com. 

 

The Domain Name registered in 2016 uses the Complainant’s word mark and logo without permission from the Complainant. 

 

DISCUSSION

 

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:

 

the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

 

Respondent has no rights or legitimate interests in respect of the domain name; and

 

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.”).

 

Language of the Proceedings

 

Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

Identical  or Confusingly Similar 

 

The Domain Name consists of the Complainant's UBS mark (which is registered in USA and EU for financial services and has been used since 1962), the generic term ‘British’ and the gTLD .com. Previous panels have found confusing similarity when a respondent merely adds a generic term to a Complainant's mark. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000)(finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underling mark held by the Complainant). The Panel agrees that the addition of the generic term ‘British’ to the Complainant's mark does not distinguish the Domain Name from the Complainant's trade mark pursuant to the Policy. In fact, it may add to confusion as the Complainant carries on business internationally.

 

The gTLD .com does not serve to distinguish the Domain Name from the UBS  mark, which is the distinctive component of the Domain Name. See Red Hat Inc v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark). 

 

Accordingly, the Panel holds that the Domain Name is confusingly similar to a mark in which the Complainant has rights. 

 

As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied. 

 

Rights or Legitimate Interests

 

The Complainant has not authorised the use of its mark. The Respondent uses the Complainant’s famous name and logo. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact. commonly known by the 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).

 

The Complainant contends that the site is set up for commercial benefit to compete with the Complainant using the latter's intellectual property rights. The web site attached to the Domain Name uses the Complainant's word mark UBS and logo mark in a prominent fashion. The Respondent is using the site in competition with those of the Complainant.  It does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc v Benjamin, FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to advertise real estate services which competed with the Complainant's business did not constitute a bona fide use of goods and services). 

 

As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy. 

 

Registration and Use in Bad Faith

 

Complainant also alleges that the Respondent's use of the site attached to the Domain Name is commercial and it is using it to make a profit by competing with the Complainant in a confusing and disruptive manner. In the opinion of the Panelist the use made of the Domain Name in relation to the site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it offers services under a Domain Name containing the Complainant’s UBS mark. The use of the Complainant's UBS word and logo marks on the Respondent's web site shows that the Respondent is aware of the Complainant. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of the Complainant. See Asbury Auto Group Inc v Tex. Int'l Prop Assocs, FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to advertise car dealerships that competed with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of those competing dealerships and was therefore evidence of bad faith and use). 

 

As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paras. 4(b)(iv) and 4(b)(iii).

 

DECISION

 

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <ubsbritish.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Dawn Osborne, Panelist

Dated:  August 7,2016