UBS AG v. Zeng Jian
Claim Number: FA1609001692695
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is Zeng Jian (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubsrsb.com>, registered with HiChina Zhicheng Technology Limited.
The undersigned certifies that he 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 September 7, 2016; the Forum received payment on September 9, 2016. The Complaint was submitted in both English and Chinese.
On September 9, 2016, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <ubsrsb.com> domain name is registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the name. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology 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 September 14, 2016, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of October 4, 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@ubsrsb.com. Also on September 14, 2016, the Chinese language 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 October 11, 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:
1. Complainant, UBS AG, is a financial services firm operating in more than 50 countries and employing over 60,000 people. Complainant has registered and has rights in the UBS mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989). Respondent’s domain name <ubsrsb.com> is confusingly similar to the UBS mark as the domain name only differs through the addition of the generic top-level domain “.com,” and the letters “rsb.”
2. Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been commonly known by the disputed domain name, been connected with Complainant in any manner, or authorized to use any of Complainant’s marks in any manner. Respondent’s is using the disputed domain name to confuse and defraud consumers which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Compl., at Attached Annex 6.
3. Respondent has registered and has used the disputed domain name in bad faith. Respondent registered the domain name to falsely suggest a partnership, connection, and affiliation with Complainant to capitalize on the fame and notoriety of Complainant’s UBS mark. Further, Respondent’s use of the disputed domain name, and the fame of Complainant’s mark lead to the conclusion that Respondent had actual knowledge of Complainant’s rights in the UBS mark at the time of registration.
B. Respondent:
1. Respondent has not submitted a Response in this proceeding.
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, concludes that the remainder of the proceedings may be conducted in English.
1. Respondent’s <ubsrsb.com> domain name is confusingly similar to Complainant’s UBS mark.
2. Respondent does not have any rights or legitimate interests in the < ubsrsb.com> domain name.
3. Respondent registered or used the <ubsrsb.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 claims to have rights in the UBS mark based on registration of the mark with the USPTO (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989). See Compl., at Attached Annex 4. Panels routinely hold, and this Panel may also hold, that a complainant has rights in a mark based on registration of the mark with the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant next claims that Respondent’s domain name <ubsrsb.com> is confusingly similar to the UBS mark in which Complainant asserts rights. Respondent’s domain name incorporates the entire UBS mark and merely differs from the mark through the addition of the gTLD “.com” and the letters “rsb.” Panels routinely conclude that the addition of the gTLD “.com” is relevant for an analysis of confusing similarity. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Panels have also held that adding strings of letters to a domain name does not prevent a finding of confusing similarity. See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”). Taken together, this Panel finds that Respondent’s 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 contends that Respondent has not been commonly known by the disputed domain name, been connected with Complainant in any manner, or authorized to use any of Complainant’s marks in any manner. In light of a lack of Response, the Panel may agree that Complainant has succeeded under Policy ¶ 4(c)(ii). 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).
Next, Complainant argues that Respondent is using the disputed domain name to confuse and defraud consumers. See Compl., at Attached Annex 6. Panels have agreed that a general intent to divert Internet users cannot amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)). Therefore, while Respondent is argued to be operating the disputed domain to generally “confuse and defraud” consumers, the Panel agrees that Complainant has met its burden of proof under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent has registered and has used the disputed domain name in bad faith through falsely suggesting a partnership, connection, and affiliation with Complainant to capitalize on the fame and notoriety of Complainant’s UBS mark. See Compl., at Attached Annex 6. Panels have found competing or misleading use of a disputed domain name to be in bad faith per Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Therefore, while the disputed domain is argued to contain confusing and misleading content to suggest an affiliation with Complainant, presumably for commercial gain, the Panel agrees that Complainant has proven Policy ¶ 4(b)(iv).
Further, Complainant asserts that its trademark registrations for the UBS mark existed well before the registration of the disputed domain name. Complainant argues that Respondent has constructive knowledge of Complainant's rights in the mark. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, and Respondent’s incorporation of the mark on the disputed domain’s resolving page, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name 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 <ubsrsb.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page