UBS AG v. Kaihua Wen
Claim Number: FA1909001863023
Complainant is UBS AG (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is Kaihua Wen (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ubsfinancialtrust.com>, registered with Web4Africa 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 19, 2019; the Forum received payment on September 19, 2019.
On October 8, 2019, Web4Africa Inc. confirmed by e-mail to the Forum that the <ubsfinancialtrust.com> domain name is registered with Web4Africa Inc. and that Respondent is the current registrant of the name. Web4Africa Inc. has verified that Respondent is bound by the Web4Africa 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 October 10, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 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@ubsfinancialtrust.com. Also on October 10, 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 November 1, 2019, 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, UBS AG, is one of the largest financial services firms in the world. Complainant has rights in the UBS mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989). Respondent’s <ubsfinancialtrust.com> is confusingly similar to Complainant’s mark as Respondent merely adds the generic terms “financial” and “trust” along with the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
Respondent does not have rights or legitimate interests in the <ubsfinancialtrust.com> domain name. Respondent is not permitted or licensed to use Complainant’s UBS mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the disputed domain name to impersonate Complainant in furtherance of a fraudulent, phishing scheme.
Respondent has registered and uses the <ubsfinancialtrust.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business by impersonating Complainant as part of a phishing scheme. Finally, Respondent had knowledge of Complainant’s UBS mark prior to registering the <ubsfinancialtrust.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the disputed domain name was registered on September 16, 2019.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights to the UBS mark based upon registration with the USPTO. Registration with USPTO sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). 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)). Complainant provides copies of its USPTO registrations for the UBS mark (e.g., Reg. No. 1,573,828, registered Dec. 26, 1989). Therefore, the Panel finds that Complainant has rights in the UBS mark per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <ubsfinancialtrust.com> domain name is confusingly similar to Complainant’s UBS mark as Respondent merely adds a modifier to the mark. Additions of a generic and/or descriptive terms and to a complainant’s mark does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653178 (Forum Jan. 21, 2016) (determining that confusing similarity exist 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.) Complainant argues that Respondent merely adds the terms “financial,” or “trust,” to Complainant’s UBS mark. The Panel agrees with Complainant and finds that the <ubsfinancialtrust.com> does not contain changes that would sufficiently distinguish it from the UBS mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in the <ubsfinancialtrust.com> domain name. Specifically, Complainant argues that Respondent is not licensed or authorized to use the UBS mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1574905 (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.). Additionally, lack of authorization to use a complainant’s mark may demonstrate that the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1620789 (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 WHOIS information of record identifies Respondent as “Kaihua Wen,” and there is no other evidence to suggest Respondent was authorized to use the UBS mark. The Panel therefore finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Moreover, Complainant argues that Respondent is not using the <ubsfinancialtrust.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent attempts to impersonate Complainant as part of a fraudulent scheme. Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent lacked rights and legitimate interests in the domain name because it used the name to resolve to a website virtually identical to the complainant’s to prompt users to enter their login information so that the respondent may gain access to that customer’s cryptocurrency account). Here, Complainant claims Respondent is using the disputed domain name in connection with a webpage that contains Complainant’s UBS word mark and logo; Complainant’s red, white, and black color scheme; links and information about banking and financial services, including loans, savings accounts, credit cards, and online banking services, that are identical and similar to those provided by Complainant; and login and account sign-up screens containing Complaint’s UBS and logo marks that will be used to defraud users and steal their personal information and banking details. Thus, the Panel agrees that Respondent’s use of the domain name indicates it lacks rights and legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) and (iii).
Therefore, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent has registered and uses the <ubsfinancialtrust.com> domain name in bad faith. Complainant alleges that Respondent attempts to disrupt Complainant’s business and commercially benefit from the disputed domain name. Specifically, Complainant argues that Respondent is attempting to impersonate Complainant in order to conduct a fraudulent scheme for commercial gain. Use of a domain name to impersonate a complainant in furtherance of a fraudulent scheme may constitute bad faith pursuant to Policy ¶ 4(b)(iii) and/or (iv). See The Prudential Insurance Company of America v. Henrique Bryan Souza / DATAMIX ENSINO DE INFORMATICA, FA 1718308 (Forum Apr. 3, 2017) (finding bad faith where the respondent used the disputed domain name to resolve to a website upon which the respondent imitated the complainant’s mark, logo, and color scheme to create a “strikingly similar” website). As previously mentioned, Respondent’s webpage displays Complainant’s UBS word mark and logo; Complainant’s red, white, and black color scheme; links and information about banking and financial services, including loans, savings accounts, credit cards, and online banking services, that are identical and similar to those provided by Complainant; and login and account sign-up screens containing Complaint’s UBS and logo marks that will be used to defraud users and steal their personal information and banking details. 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 must have had knowledge of Complainant’s UBS mark. Complainant claims that due to Respondent’s use of Complainant’s famous UBS mark and Respondent’s impersonation of Complainant, Respondent had actual knowledge of Complainant’s UBS mark. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the UBS mark, thus constituting bad faith under Policy ¶ 4(a)(iii).
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 <ubsfinancialtrust.com> domain name be TRANSFERRED from Respondent to Complainant,
David A. Einhorn, Panelist
Dated: November 14, 2019
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