The Complainant is UBS AG of Zurich, Switzerland, represented by KLAKA Rechtsanwälte, Germany.
The Respondent is DomCollect AG, André Schneider of Zug, Switzerland. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 6, 2015. On February 6, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 9, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 17, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 9, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 12, 2015.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on April 1, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is one of the world’s leading banks and has provided for 150 years financial services to private, institutional and corporate clients worldwide as well as to retail clients in Switzerland. Headquartered in Zurich and Basel in Switzerland, the Complainant is present in all major financial centers worldwide and employs 60,000 people around the world. It has offices in more than 50 countries and is listed on all major stock exchanges in the world. The Complainant’s operating income has been over CHF 25 billion between 2011 and 2013.
The Complainant owns numerous trademarks consisting in whole or in part of the term “UBS” worldwide, notably in Switzerland, such as Reg. No: 510105 (priority date: November 11, 2002) and 451007 (priority date: April 1, 1998).
The Complainant performs its services online under more than 1,000 domain names incorporating its company name and trademark UBS.
The Respondent registered the disputed domain name on July 5, 2012.
On December 9, 2014, the disputed domain name resolved to a home page displaying links to commercial websites offering services identical to those covered by the Complainant’s trademarks, and, more particularly, links to services of the Complainant’s direct competitors such as Crédit Suisse or Deutsche Bank AG. Furthermore, the disputed domain name’s site displayed an offer to purchase the disputed domain name as well as the brand of the ISP “Sedo” in relation to its domain name parking program.
On February 4, 2015, the homepage of the website attached to the disputed domain name indicated again that the disputed domain name was for sale in partnership with Sedo.
The Respondent owns more than 5,000 domain names and has regularly been involved in the past with the registration of domain names incorporating well-known brands to be used as parking websites. 5. Parties’ Contentions A. Complainant
The Complainant first contends that the disputed domain name is confusingly similar to its registered trademarks and company name UBS as it entirely contains the term “UBS” in combination with the descriptive term “services”.
The Complainant then affirms that the Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no indication that the Respondent would ever have been known by the disputed domain name or by any name corresponding to it. The Respondent is not affiliated in any manner to the Complainant and the Complainant has never licensed or otherwise authorized the Respondent to use its registered trademarks and company name or to register the disputed domain name. Considering the well-known character of the Complainant’s trademarks, the Respondent cannot reasonably pretend that he was intending to develop a legitimate activity through the disputed domain name.
The Complainant finally considers that the disputed domain name was registered and is being used in bad faith. It is not conceivable that the Respondent could have registered the disputed domain name without having the Complainant and its company name and trademarks in mind. Bad faith is obvious when considering that the Complainant’s company name and trademarks have been registered and used decades before the registration of the disputed domain name. The Complainant adds that registration and use in bad faith is also obvious as the Respondent has engaged in a pattern of business to register and offer for sale domain names which incorporate well-known brands. Finally, the Complainant states that bad faith would also stem from the fact that the disputed domain name redirects Internet users to websites of competing organizations. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “[…] decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant holds numerous word trademarks throughout the world consisting of the term “UBS”, whose well-known character is beyond doubt, in particular in Switzerland were both parties are located.
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the Policy (see, e.g., Uniroyal Engineered Products, Inc., v. Nauga Network Services,WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Entreprises, WIPO Case No. D2007-1629). Such happens to be the case here.
This is all the more true when the inserted trademark, a well-known one, is the dominant part of the disputed domain name, and that the added elements are merely descriptive.
Such happens to be the case here. The applicable generic Top-Level Domain (“gTLD”), in the present case “.com”, is usually disregarded under the confusing similarity test and the addition of a descriptive term such as “services” does not reduce the likelihood of confusion (see, among others: Playboy Entreprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768; Inter-IKEA Systems B.V. v. Evezon Co. Ltd.,WIPO Case No. D2000-0437; Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life,WIPO Case No. D2002-0363).
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied. B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624, demonstrating that a respondent has no rights or legitimate interests in the domain name “would require complainant to prove a negative, a difficult, if not impossible, task”. Thus, in that decision, the panel opined that “[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion”. Following that decision, subsequent UDRP panels developed a consensus view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent’s burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, e.g., paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
In the present case, the Complainant is the owner of numerous UBS trademarks. The Complainant has no business or other relationship with the Respondent. The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
Absent any Response, there is no doubt in the Panel’s opinion that the Respondent is neither commonly known by the disputed domain name, nor has made a legitimate noncommercial or fair use of the disputed domain name.
Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled. C. Registered and Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith registration typically requires the Respondent to be aware of the Complainant’s trademarks at the time of registration. In the present case, the Complainant is the owner of numerous UBS trademarks, which enjoy, and have enjoyed for many years, a worldwide reputation. Considering the reputation of the Complainant’s trademarks, the Respondent was obviously aware of the Complainant’s trademarks at the time he registered the disputed domain name. As a result, the Panel holds that the disputed domain name was registered in bad faith.
Furthermore, the Respondent’s registration of a well-known trademark such as UBS may, in itself, be sufficient to consider that the disputed domain name is being used in bad faith (Comerica Inc. v. Horoshiy, Inc.,WIPO Case No. D2004-0615).
Based upon the overall circumstances of the case, the Panel has no doubt that the disputed domain name was registered by the Respondent to exploit the Complainant’s goodwill and attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark. This is further evidenced by the fact that the disputed domain name was used for sponsored links on a pay-per-click basis, that several of these links redirect Internet users to websites of direct competitors, that the disputed domain name is offered for sale and that the Respondent has engaged in a pattern of registering domain names identical or similar to well-known trademarks, using them for pay-per-click parking sites and offering them for sale.
Consequently, the Panel is of the opinion that the disputed domain name has been registered and is being used in bad faith under the paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Philippe Gilliéron
Sole Panelist
Date: April 7, 2015
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