UBS AG v. S W H Company / Stepeh Williams
Claim Number: FA1810001813122
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is S W H Company / Stepeh Williams (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubsinvestmentplc.com>, registered with NameSilo, LLC.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 23, 2018; the Forum received payment on October 23, 2018.
On October 23, 2018, NameSilo, LLC confirmed by e-mail to the Forum that the <ubsinvestmentplc.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 October 24, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 2018 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@ubsinvestmentplc.com. Also on October 24, 2018, 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 November 15, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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 is one of the largest financial services firms in the world, with offices in over fifty (50) countries and approximately sixty thousand (60,000) employees. Complainant has rights in the UBS mark through its trademark registrations with various government trademark authorities, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989). Respondent’s <ubsinvestmentplc.com> domain name is confusingly similar to Complainant’s UBS mark as Respondent merely adds the generic references “investment” and “plc,” and appends the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <ubsinvestmentplc.com> domain name. Respondent is not licensed or otherwise authorized to use the UBS mark and is not commonly known by the disputed domain name. Additionally, 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. Rather, Respondent diverts users seeking Complainant’s website to its disputed domain name.
Respondent registered and uses the <ubsinvestmentplc.com> domain name in bad faith. Respondent uses the disputed domain name to falsely suggest a partnership, connection, or affiliation with Complainant, in order to confuse users and capitalize on the goodwill of Complainant’s mark. Furthermore, Respondent had actual and constructive knowledge of Complainant’s rights in the UBS mark prior to registering and use of the disputed domain name.
B. Respondent
Respondent failed to submit a response. The Panel notes that the <ubsinvestmentplc.com> domain name was registered on August 16, 2018.
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 through its trademark registrations with various government trademark offices, including the USPTO (e.g., Reg. No. 1.573,828, registered Dec. 26, 1989). Registering a mark with a governmental trademark authority is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (finding, “Registration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶4(a)(i)”). Complainant also provides a list of its trademark certificates with various trademark agencies. Therefore, the Panel finds that Complainant has sufficiently established rights in the UBS mark per Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <ubsinvestmentplc.com> domain name is confusingly similar to the UBS mark, as the name incorporates the mark in its entirety while adding generic terms “investment,” and “plc”. Adding generic terms to a complainant’s mark may not sufficiently mitigate any confusing similarity between the disputed domain name and mark in a Policy ¶ 4(a)(i) analysis. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). The Panel therefore determines that the <ubsinvestmentplc.com> domain name is confusingly similar to the UBS mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the <ubsinvestmentplc.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent 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 a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record identifies the registrant of the at-issue domain name as “S W H Company / Stepeh Williams,” and no information on the record indicates Respondent was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <ubsinvestmentplc.com> domain name.
Additionally, Complainant argues that Respondent fails to use the <ubsinvestmentplc.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant contends that Respondent attempts to divert users seeking Complainant’s website to the disputed domain name. Diverting users from a complainant’s business may not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use under a Policy ¶¶ 4(c)(i) or (iii) analysis. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant provides a copy of the disputed domain name’s resolving website which features information relating to the “UBS Investment Bank Plc” and allows users to submit their contact information. As such, the Panel finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant has therefore also satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent registered and uses the <ubsinvestmentplc.com> domain name in bad faith. Specifically, Complainant contends that Respondent attract users to the disputed domain name where it creates a false affiliation with Complainant. Use of a disputed domain name to create user confusion and commercially benefit from the confusion may demonstrate bad faith under Policy ¶ 4(b)(iv). See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (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); see also Sandhills Publishing Company v. sudeep banerjee / b3net.com, Inc., FA 1674572 (Forum June 17, 2016) (finding that the respondent took advantage of the confusing similarity between the <machinerytraderparts.com> domain name and the complainant’s MACHINERY TRADER mark, which indicated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Complainant provided a copy of the disputed domain name’s resolving website, which features information relating to the “UBS Investment Bank Plc” and allows users to submit their contact information. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Further, Complainant argues Respondent had actual knowledge of Complainant’s rights in the famous UBS mark prior to registering and subsequent use of the <ubsinvestmentplc.com> domain name. Complainant provides various articles and information regarding its UBS mark in support of its contentions. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith registration under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014)
Therefore, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ubsinvestmentplc.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: November 26, 2018
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