UBS AG v. stephane lebecque
Claim Number: FA1901001824720
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is stephane lebecque (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubs-crypto.online> (‘the Domain Name’), registered with NameSilo, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 11, 2019; the Forum received payment on January 11, 2019.
On January 11, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <ubs-crypto.online> 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 January 14, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 2019 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@ubs-crypto.online. Also on January 14, 2019, 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 5, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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 the owner of the UBS trade mark registered, inter alia, in the USA and the EU for financial services with first use recorded as 1962.
The Domain Name is confusingly similar to Complainant’s UBS mark adding only the generic term ‘crypto’, a hyphen and the gTLD .online which do not prevent confusing similarity between the Domain Name and Complainant’s trade mark.
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not commonly known by the Domain Name or authorized by Complainant. Respondent has no connection with Complainant and is using the Domain Name to point to a web site that uses Complainant’s UBS mark, its cross keys logo and colour scheme makes the false statement that Respondent is connected with Complainant, purports to offer financial services and has a log in screen where users can sign up for accounts. This is not a bona fide offering of goods or services or a legitimate commercial or fair use. It is bad faith registration and use diverting Internet users for commercial gain in knowledge of Complainant’s trademarks, logo and its rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the UBS trade mark registered, inter alia, in the USA and the EU for financial services with first use recorded as 1962.
The Domain Name registered in 2018 has been pointed to a web site offering financial services not connected with Complainant but using Complainant’s UBS trade mark and cross keys logo, offering a log in page and stating falsely that there is a connection with Complainant.
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, inter alia, the EU for financial services with first use recorded as 1962), a hyphen, the generic term ‘crypto’ and the gTLD .online which does not prevent confusing similarity between the Domain Name and Complainant’s mark.
Adding a hyphen does not distinguish a domain name from a domain name containing the complainant’s mark. See Health Devices Corp. v. Aspen STC, FA 158254 (Forum July 1, 2003) (The addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy 4 (a)(i)).
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 ‘crypto’ to Complainant's mark does not prevent confusing similarity between the Domain Name and Complainant's trade mark pursuant to the Policy.
The gTLD .online does not serve to distinguish a Domain Name from a complainant’s mark. See Red Hat Inc. v. Haecke FA 726010 (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 to Complainant’s UBS registered mark.
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 marks. There is no evidence or reason to suggest Respondent is commonly known by the Domain Name. 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).
The web site attached to the Domain Name has copied Complainant’s logo and colour scheme so that Respondent’s site appeared to be an official site of Complainant. It did not make it clear that there is no connection with Complainant. The Panel finds this use is deceptive and passing off. As such it cannot amount to the bona fide offering of goods and services. See iFinex Inc. v. Yuri Heifetz/Genie-Solution, FA 1789385 (Forum July 9, 2018) (holding that the respondent’s mimicking the complainant’s web site in order to cause existing or potential customers of the complainant’s to believe they are dealing with the complainant is prima facie evidence of the respondent’s lack of rights and legitimate interests in the disputed domain name). Further phishing by means of offering a fraudulent log in cannot be a bona fide offering of goods and services or a legitimate noncommercial fair use.
As such the Panelist 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
In the opinion of the panelist the use made of the Domain Name in relation to Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by Complainant as it uses Complainant’s name, logo and colour scheme to offer financial services without permission showing that Respondent is aware of Complainant and its business. Accordingly, the Panel holds that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with Complainant's trade marks as to the source, sponsorship, affiliation or endorsement of the web site likely to disrupt the business of Complainant. See Allianz of AM. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use where the respondent was diverting Internet users searching for the complainant to its own website).
Further phishing can be evidence of bad faith registration and use within the Policy 4 (a)(iii) See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA 1506001625750 (Forum July 17, 2015).
As such, the Panelist believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(iv) and 4 (b)(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 <ubs-crypto.online> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: February 6, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page