UBS AG v. sonia goessi
Claim Number: FA1609001695043
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, Washington D.C., United States. Respondent is sonia goessi (“Respondent”), Oklahoma, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubse-banking.com>, (the ‘Domain Name’) registered with Google Inc.
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.
Complainant submitted a Complaint to the Forum electronically on September 22, 2016; the Forum received payment on September 27, 2016.
On September 26, 2016, Google Inc. confirmed by e-mail to the Forum that the <ubse-banking.com> domain name is registered with Google Inc. and that Respondent is the current registrant of the name. Google Inc. has verified that Respondent is bound by the Google Inc. 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 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 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@ubse-banking.com. Also on September 27, 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 October 25, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant’s contentions can be summarised as follows:
Complainant is one of the largest financial services firms in the world and has offered its services under the UBS mark since 1962. It owns registered trade marks for UBS across the world including in the USA where Respondent is based.
The Domain Name is confusingly similar to Complainant’s UBS trade mark. The dominant portion of the Domain Name is identical to Complainant’s UBS mark.The generic wording ‘e-banking’ does not differentiate the Domain Name from Complainant’s mark. The gTLD .com in the Domain Name has no bearing on the confusing similarity issue.
Respondent has no rights or legitimate interests in the Domain Name or any UBS names or trade marks. Respondent does not have any connection with Complainant yet Respondent is using the Domain Name to resolve to Complainant’s ubs.com website. Such use is not a bona fide offering of goods or a legitimate non commercial use. Respondent is not commonly known by the Domain Name or UBS. Respondent is not a licensee, or partner of, or authorised by Complainant.
The Domain Name was registered and is being used in bad faith to falsely suggest a connection with Complainant and to confuse customers. The fact that the Domain Name has been falsely registered in the name of an actual UBS employee, Sonia Goessi, is also indicative of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is one of the largest financial services firms in the world and has offered its services under the UBS mark since 1962. It owns registered trade marks for UBS across the world including in the USA where Respondent is based.
The Domain Name registered in 2016 is being used to point to Complainant’s web site and has been registered falsely in the name of one of Complainant’s employees.
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.”).
Identical or Confusingly Similar
The Domain Name consists of Complainant's UBS mark (which is registered in the USA for financial services, where Respondent is based and has been used since 1962), the generic term ‘e-banking’ 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 underlying mark held by the Complainant). The Panel agrees that the addition of the generic term ‘e-banking’ to Complainant's mark does not distinguish the Domain Name from Complainant's trade mark pursuant to the Policy. In fact, it may add to confusion as Complainant is in the business of financial services.
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 (Nat Arb 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 for the purpose of the Policy to a mark in which Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
Complainant has not authorized the use of its mark and the Domain Name has been falsely registered in the name of one of Complainant’s employees. Respondent has not answered this Complaint and does not explain why it would be entitled to do this. Although the true identity of Respondent is not known there is no evidence it is commonly known by UBS. Without consent it would be difficult to think of a good faith reason for registration in the name of one of Complianant’s employees given the well known nature of Complainant’s mark. Further, pointing the Domain Name to Complainant’s web site does not make it clear that there is no commercial connection between Respondent and Complainant., The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See also 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 the 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). There is no fair non commercial use as the Domain Name is pointed to a commercial site.
As such the Panel finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Respondent has falsely registered the Domain Name in the name of one of the employees of Complainant. Panels have held that use of false information in connection with the registration of a domain name constitutes bad faith.
See McDonalds Corp v Holy See, FA 155458 (Forum June 27, 2003)(holding that the respondent’s use of falsified information when it registered the disputed domain name was evidence that the domain name was registered in bad faith).
As such, the Panel believes that Complainant has made out its case that the Domain Name was registered and used in bad faith. As such, there is no need to consider further grounds for bad faith put forward by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ubse-banking.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: <<October 31, 2016>>
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