UBS AG v. LaPorte Holdings, Inc.
Claim
Number: FA0501000397672
Complainant is UBS AG (“Complainant”) represented by Kenneth L. Bressler of Nixon Peabody LLP,
437 Madison Avenue, New York, NY 10022.
Respondent is LaPorte Holdings,
Inc. (“Respondent”), c/o Nameking, Inc., 2202 South Figueroa Street, Suite
721, Los Angeles, CA 90023.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <ubsonlineservices.com>, registered with Nameking.com,
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.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
6, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 10, 2005.
On
January 7, 2005, Nameking.com, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <ubsonlineservices.com> is registered
with Nameking.com, Inc. and that Respondent is the current registrant of the
name. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com,
Inc. registration agreement and has thereby agreed to resolve domain name
disputes brought by third parties in accordance with ICANN's Uniform Domain
Name Dispute Resolution Policy (the "Policy").
On
January 10, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
January 31, 2005 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent's registration as technical, administrative and
billing contacts, and to postmaster@ubsonlineservices.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
February 7, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Sandra Franklin
as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <ubsonlineservices.com>
domain name is confusingly similar to Complainant’s UBS mark.
2. Respondent does not have any rights or
legitimate interests in the <ubsonlineservices.com> domain name.
3. Respondent registered and used the <ubsonlineservices.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
UBS, provides a full array of financial services, such as retail banking,
commercial banking, as well as stock, bond, and currency market research,
consultation and trading. Complainant
owns numerous trademark registrations worldwide and with the United States
Patent and Trademark Office for the UBS mark (Reg. No. 1,573,828 issued
December 26, 1989 for banking, investment banking, and securities brokerage).
Complainant has
used the UBS mark in commerce since 1962.
Complainant is one of the largest financial institutions in the world
with over $1.9 trillion under management and employs over 65,000 people in
fifty countries.
Complainant
registered and uses the <ubs.com> domain name to inform the public and
Complainant’s customers of the broad array of services that Complainant
offers. Many of these services are
offered to Complainant’s customers directly through its website.
Respondent
registered the <ubsonlineservices.com> domain name on December 8,
2003. Respondent has configured the
domain name to redirect Internet users to a website that contains links to
Complainant’s competitors and to sex and gambling sites.
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."
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(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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.
Complainant has
established rights in the UBS mark through registration with the United States
Patent and Trademark Office and continuous use of the mark in commerce since
1962. See Janus Int’l Holding
Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) finding that Panel
decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption.; see also Smart Design LLC v. Hughes,
D2000-0993 (WIPO Oct. 18, 2000) holding that ICANN Policy ¶ 4(a)(i) does not
require Complainant to demonstrate ‘exclusive rights,’ but only that
Complainant has a bona fide basis for making the Complaint in the first place; see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000)
(finding that the failure of Complainant to register all possible domain names
that surround its substantive mark does not hinder Complainant’s rights in the
mark. “Trademark owners are not required to create ‘libraries’ of domain names
in order to protect themselves”.)
Respondent’s <ubsonlineservices.com>
domain name is confusingly similar to Complainant’s UBS mark. Respondent’s domain name fully incorporates
Complainant’s mark, and only deviates with the addition of the generic
top-level domain (“gTLD”) “.com” and the addition of the terms “online” and
“services,” which are generic terms that describe Complainant’s services. The addition of “.com” and generic terms to
Complainant’s mark does not distinguish the domain name pursuant to Policy ¶
4(a)(i). See Vivid Video, Inc. v.
Tennaro, FA 126646 (Nat. Arb. Forum Nov. 14, 2002) finding that any
distinctiveness resulting from Respondent’s addition of a generic word to
Complainant’s mark in a domain name is less significant because Respondent and
Complainant operate in the same industry; see also Arthur
Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar.
23, 2001) finding confusing similarity where the domain name in dispute
contains the identical mark of Complainant combined with a generic word or
term; see also Sony Kabushiki Kaisha v. Inja,
D2000-1409 (WIPO Dec. 9, 2000) finding that “[n]either the addition of an
ordinary descriptive word . . . nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied; see
also L.L. Bean, Inc. v. ShopStarNetwork,
FA 95404 (Nat. Arb. Forum Sept. 14, 2000)finding that combining the generic
word “shop” with Complainant’s registered mark “llbean” does not circumvent
Complainant’s rights in the mark nor avoid the confusing similarity aspect of
the ICANN Policy.
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(i).
Respondent
failed to contest Complainant’s assertion that Respondent lacks rights and
legitimate interests in the disputed domain name. Because Complainant’s evidence and arguments are unopposed, the
Panel is permitted to accept all reasonable inferences made in the Complaint as
true. See Vertical Solutions Mgmt.,
Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31,
2000) holding that Respondent’s failure to respond allows all reasonable
inferences of fact in the allegations of the Complaint to be deemed true; see also Bayerische Motoren Werke AG v.
Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) finding
that in the absence of a Response the Panel is free to make inferences from the
very failure to respond and assign greater weight to certain circumstances than
it might otherwise do; see also Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) drawing two inferences based on Respondent’s
failure to respond: (1) Respondent does not deny the facts asserted by
Complainant, and (2) Respondent does not deny conclusions which Complainant
asserts can be drawn from the facts.
Respondent’s
domain name is confusingly similar to Complainant’s mark and is used to
redirect Internet users to a website that features links to third party
businesses that compete directly with Complainant and links to sex and gambling
sites. Such use has consistently and
frequently been found not to be a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii). See Toronto-Dominion
Bank v. Karpachev, 188 F.Supp.2d
110, 114 (D. Mass. 2002) finding that, because
Respondent's sole purpose in selecting the domain names was to cause confusion
with Complainant's website and marks, its use of the names was not in
connection with the offering of goods or services or any other fair use; see also TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002)
finding that Respondent’s diversionary use of Complainant’s marks to send
Internet users to a website which displayed a series of links, some of which
linked to competitors of Complainant, was not a bona fide offering of goods or
services; see also Sony Kabushiki
Kaisha v. Domain rajadomain@yahoo.com +1.415.0, FA 128701 (Nat. Arb.
Forum Dec. 16, 2002) finding that Respondent’s use of its domain name to divert
Internet users to a website that offers search engine services and links to
adult orientated websites was not considered to be in connection with a bona
fide offering of goods or services or a legitimate noncommercial or fair use
pursuant to Policy; see also
Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum
Jan. 11, 2002) finding that Respondent’s use of the disputed domain name to
redirect Internet users to a financial services website, which competed with
Complainant, was not a bona fide offering of goods or services.
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(ii).
Respondent
registered and used the <ubsonlineservices.com> domain name in bad
faith pursuant to Policy ¶ 4(b)(iv).
Specifically, uncontested evidence indicates that the subject domain
name earns referral fee revenue for Respondent through pay-per-click
advertising. Thus, the Panel infers
that Respondent commercially benefits from its use of Complainant’s UBS mark in
the domain name. See Kmart v. Khan,
FA 127708 (Nat. Arb. Forum Nov. 22, 2002) finding that if Respondent profits
from its diversionary use of Complainant's mark when the domain name resolves
to commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv); see also Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) finding bad faith where Respondent
registered and used an infringing domain name to attract users to a website
sponsored by Respondent; see also
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb.
Forum Nov. 21, 2002) finding that Respondent registered and used the domain
name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using
the confusingly similar domain name to attract Internet users to its commercial
website.
Respondent is
using the disputed domain name to redirect Internet users to a website that
features links to various financial-related websites. Complainant’s business offers financial-related goods and
services. The Panel finds that, by
creating confusion around Complainant’s mark, Respondent it attempting to
disrupt the business of a competitor.
Respondent’s use of Complainant’s mark to offer goods and services
similar to Complainant’s goods and services is evidence of bad faith
registration and use of the domain name pursuant to Policy ¶ 4(b)(iii). See
S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business; see
also Puckett v. Miller,
D2000-0297 (WIPO June 12, 2000) finding that Respondent has diverted business
from Complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii); see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22,
2000) finding that Respondent registered and used the domain name primarily for
the purpose of disrupting the business of Complainant by offering personal
e-mail accounts under the domain name <openmail.com> which is identical
to Complainant’s services under the OPENMAIL mark.
Additionally,
Respondent’s disputed domain name, a domain name that is confusingly similar to
Complainant’s mark, features links to adult material and gambling sites. The Panel infers that Respondent is unfairly
and opportunistically benefiting from the goodwill and reputation associated
with Complainant’s mark. This practice
of diversion, motivated by commercial gain, through the use of a confusingly
similar domain name constitutes bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See Kmart
v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) finding that if
Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv); see
also Encyclopedia Britannica Inc.
v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) finding that Respondent
violated Policy ¶ 4(b)(iv) by using the domain name <britannnica.com> to
hyperlink to a gambling site; see also
Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb.
Forum Mar.18, 2003) finding that Respondent’s
tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence
that the domain names were being used in bad faith.
The Panel finds
that Complainant fulfilled 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 <ubsonlineservices.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
February 21, 2005
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