UBS AG v. ALEXANDREA BOCK
Claim Number: FA1612001709778
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is ALEXANDREA BOCK (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dr-ubsonline.com>, registered with eNom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 28, 2016; the Forum received payment on December 29, 2016.
On January 5, 2017, eNom, Inc. confirmed by e-mail to the Forum that the <dr-ubsonline.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 January 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2017 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@dr-ubsonline.com. Also on January 5, 2017, 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 February 2, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink(Ret). 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, UBS AG, is one of the largest financial services firms in the world, present in all major financial centers in world. Complainant has rights in the UBS mark based upon a large number of trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989) as well as other trademark agencies throughout the world. Respondent’s <dr-ubsonline.com> is confusingly similar to the UBS mark, as it contains the mark in its entirety, and adds the generic terms “dr” and “online,” a hyphen, and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by <dr-ubsonline.com>, nor has Complainant authorized or licensed Respondent to use any of Complainant’s marks. Respondent’s use of the disputed domain does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a fraudulent website featuring Complainant’s UBS mark and related logo, as well as links to information about various financial and banking services.
The disputed domain name was registered and is being used in bad faith. Respondent’s use of the domain name and resolving website amounts to an attempt to attract and divert Internet users for commercial gain. Additionally, Respondent had actual or constructive knowledge of Complainant’s rights in the UBS mark when is registered and subsequently used the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <dr-ubsonline.com> 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.
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 rights in the UBS mark based upon multiple registrations of the mark with the USPTO (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). The Panel therefore holds that Complainant’s registration of the UBS mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next claims that <dr-ubsonline.com> is confusingly similar to the UBS mark, as it contains the mark in its entirety, and adds the terms “dr” and “online,” a hyphen, and the gTLD “.com.” Addition of generic terms and a gTLD does not distinguish a domain name from a mark in a Policy ¶ 4(a)(i) analysis for confusing similarity. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Broadcom Corp. v. Domain Depot, FA 96854 (Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark). Likewise, the inclusion of a hyphen in a domain is irrelevant to a Policy ¶ 4(a)(i) analysis. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Accordingly, the Panel finds that the <dr-ubsonline.com> domain name is confusingly similar to the UBS mark pursuant to Policy ¶ 4(a)(i).
Complainant has proved this element.
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 <dr-ubsonline.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant granted Respondent any authorization or license to use the UBS mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “ALEXANDREA BOCK.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by their failure to use the name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, <dr-ubsonline.com> resolves to a website featuring Complainant’s UBS mark and related logo, as well as links to information about deposits, credit cards, loans, insurance, and banking investments, among other financial services and banking topics.The site is also subject of an online fraud alert. Use of a domain name to pass off as Complainant in order to divert Internet users to a respondent’s website, for the respondent’s benefit, is not a use indicative of rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Accordingly, the Panel finds Respondent does not have rights or legitimate interests in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant contends that <dr-ubsonline.com> was registered and is being used in bad faith as the domain name and its resolving website amounts to an attempt to attract and divert Internet users for commercial gain. Registration and use of a domain name in order to intentionally mislead Internet users using a complainant’s marks and logos can be evidence of Policy ¶ 4(b)(iv) bad faith. See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness). The disputed domain name resolves to a website that appropriates Complainant’s UBS mark and its associated logo, and purports to offer financial services and information. Complainant presumes that Respondent reaps commercial gain from such behavior, citing that the website trips an online fraud alert. The Panel agrees and finds <dr-ubsonline.com> to have been registered and used in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant further argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the UBS mark. Complainant argues that Respondent’s inclusion of Complainant’s marks and logos on the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dr-ubsonline.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: February 8, 2017
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