UBS AG v. darya nasr
Claim Number: FA1608001686993
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is Darya Nasr (“Respondent”), District of Columbia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubsglobalassets.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.
Bart Van Besien as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 4, 2016; the Forum received payment on August 8, 2016.
On August 5, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ubsglobalassets.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 August 9, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 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@ubsglobalassets.com. Also on August 9, 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.
A timely Response was received and determined to be complete on September 19, 2016.
On September 27, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bart Van Besien 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
Complainant, UBS AG, is a financial services provider with offices in over 50 countries and employing approximately 60,000 employees. Complainant uses the UBS mark in connection with its business providing financial services and has rights in the mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,573,828, registered December 26, 1989).
Respondent’s domain name, <ubsglobalassets.com>, is confusingly similar to Complainant’s UBS trademark as the domain name contains the entire UBS mark and merely differs through the addition of the generic top-level domain (“gTLD”) “.com” and the generic terms “global assets.” The dominant portion of the disputed domain name (“UBS”) is identical to the UBS trademarks of Complainant. The generic wording “global assets” does not differentiate the domain name from the UBS trademarks, particularly since these trademarks are well-known in the banking industry.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been a licensee of Complainant, authorized to use the UBS mark, or commonly known by or identified by the disputed domain name. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use as the domain name is used to divert internet users to Complainant’s own <ubs.com> domain.
Respondent’s domain name was registered and is being used in bad faith. Respondent registered the domain name to attempt to suggest a false connection or affiliation with Complainant and gain from such use. Respondent’s domain name was registered in bad faith based on the fame of the UBS mark.
B. Respondent
Complainant does not claim to own or have used the mark “ubsglobalassets” or sought domain names including that mark.
Respondent has a legitimate interest in the domain name. Respondent’s domain name was registered to reflect the business that Respondent intends to develop, providing software to small and medium size businesses. The intended name of this software and business is “Unlimited Business Solutions Global Assets”. To date, this business is in development.
Respondent has not registered or used the domain name in bad faith. Respondent has not been contacted by Complainant about the disputed domain name. Respondent has not used the domain name in commerce and has merely used the domain name to redirect to Complainant’s website which is beneficial to Complainant.
The Panel may note that the disputed domain name was registered on August 16, 2015.
Prior to the filing of the Response, Respondent advised Complainant that, since her business was still in development, Respondent was willing to relinquish her rights to the domain name in exchange for a release.
Complainant is a global financial services provider and owns several marks “UBS”, registered in various countries around the globe (as evidenced by registration certificates in Annex 5 to the Complainant).
WHOIS information shows that the disputed domain name was created on 16 August 2015, and is owned by the Respondent.
Many of the registered trademarks of Complainant date from before the registration of the disputed domain name.
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 that its rights in the UBS mark stem from registration of the mark with the USPTO and other national trademark associations (e.g., Reg. No. 1,573,828, registered December 26, 1989). See Compl., at Attached Annex 5. Panels have routinely found that a party has rights in a mark based on registration with the USPTO. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Based on the evidence of trademark registrations submitted by the Complainant, the Panel finds that the Complainant has established rights in the UBS marks through registration of these marks with several trademark authorities throughout the world.
Complainant next claims that Respondent’s domain name is confusingly similar to the UBS mark for purposes of Policy ¶ 4(a)(i). Respondent’s domain name, <ubsglobalassets.com>, differs from the UBS mark through the addition of the gTLD “.com” and the generic terms “global assets.” Panels have consistently found that the presence of the gTLD “.com” is not relevant to an analysis of confusing similarity. See Leland Turner v. joseph derer, FA 1618086 (Forum June 25, 2015) (“The [<lelandturner.com>] Domain Name consists of the Complainant's unregistered mark LELAND TURNER plus the gTLD designation .com. The addition of the .com gTLD does not serve to distinguish the Domain Name from the Complainant's LELAND TURNER mark and the Panellist finds that this domain name is identical to a mark in which the Complainant has rights for the purpose of the Policy.”). Panels have also found that adding generic terms to a domain name does not differentiate a domain name from a mark to which the term is added. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).).
The Panel finds that the addition of the gTLD “.com” and of the generic terms “global assets” do not differentiate the disputed domain name from the registered marks of the Complainant.
Therefore, the Panel finds that Respondent’s domain name is confusingly similar to the UBS marks under Policy ¶ 4(a)(i).
Complainant argues that Respondent has not been a licensee of Complainant, authorized to use the UBS mark(s), or commonly known by or identified by the disputed domain name. Respondent’s WHOIS information identifies Respondent as “darya nasr,” which does not appear to resemble the disputed domain name. Previous Panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS and a lack of authorization or relationship with a complainant. 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 mark).
The Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). The Panel also notes that Complainant claims that Respondent has not been a licensee of Complainant, that Respondent has not been authorized to use the UBS mark(s), and that Respondent does not contest these claims.
Complainant next claims that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s domain name has been used to resolve to Complainant’s website resolving from the domain name <ubs.com> (See Compl. at 5 ¶ 28; Resp. at 2 ¶ 6(c)). Previous Panels have held that a Respondent’s use of a domain name to redirect to Complainant’s own website is not a use that should be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”). This Panel concurs with such view.
The Panel concludes that Respondent’s domain name is not used within the parameters of Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent claims that its domain name was registered to reflect the business that Respondent intends to develop, providing software to small and medium size businesses. The Panel notes that Respondent did not include any evidence to corroborate the intended use of the disputed domain name.
In the given circumstances (in particular, the use of Complainant’s registered trademark UBS in the domain name; the complete lack of evidence that Respondent has made efforts to prepare for the use of the disputed domain name in connection with a bona fide offering of goods or services; the lack of evidence that the Respondent is commonly known by the domain name or has corresponding trademark or service mark rights; and the lack of evidence that Respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the mark of Complainant), the Panel cannot conclude that the Respondent has rights or legitimate interests in the disputed domain name.
The Panel concludes that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant contends that, in light of the fame and notoriety of Complainant's UBS mark, it is inconceivable that Respondent could have registered the <ubsglobalassets.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. Complainant has included evidence of prior UDRP proceedings where the panel has acknowledged the fame and notoriety of Complainant’s marks. See Compl., at Attached Ex. 6.
The Panel notes that several of the trademarks registered by Complainant are valid for inter alia investment services and asset management services (for instance, US service mark “UBS” no. 3,623,958; US service mark “UBS INVESTMENT BANK” no. 2,918,463; US service mark “UBS WEALTH MANAGEMENT” no. 2,918,462; US service mark “UBS” no. 3,018,190; etc.). The Panel notes that several major business lines of Complainant carry the following titles: “Wealth Management”, “Wealth Management Americas”, “Global Asset Management”, etc. The Panel accepts that, given Complainant’s worldwide position (including in the United States) in financial services (including asset management and global asset management), it is indeed inconceivable that Respondent could have registered or used the disputed domain name – which includes a combination of both the UBS trademark of Complainant and the wording “global assets” – without knowledge of Complainant’s rights and market position in inter alia global asset management. Complainant has provided evidence of its global market position in these services (see Annex 4 to the Complaint). Complainant has also provided evidence that its UBS trademarks and service marks are well-known (see Annexes 4 and 6 to the Complaint).
Respondent claims that the intended use of the disputed domain name is for software services, more in particular cloud based physical asset management, tracking usage and maintenance schedules for distributed assets. However, Respondent failed to provide any evidence of such (intended) use.
Complainant claims that Respondent’s use of the disputed domain name to redirect to Complainant’s own website demonstrates bad faith. See Compl. at 5 ¶ 28. Respondent appears to agree that the domain name is used to redirect to Complainant’s website. See Resp. at 2 ¶ 6(c). Previous Panels have held that a Respondent using a domain name to redirect to a complainant’s own website can be demonstrative of a respondent’s bad faith attempt to attract page views and potentially business. See Altavista Co. v. Brunosousa, D2002-0109 (WIPO Apr. 3, 2002) (finding, when a domain name is used to redirect to the complainant’s website, that “such redirection will allow the Respondent to divert future users to competing web sites after having built up mistaken confidence in the source of the content,” which constitutes bad faith registration and use). This Panel concurs with such view.
The Panel finds that, by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its own web site, by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site.
The Panel concludes that, in the given circumstances, Respondent has registered and 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 <ubsglobalassets.com> domain name be TRANSFERRED from Respondent to Complainant.
Bart Van Besien, Panelist
Dated: October 10, 2016
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