ubs-ltd.com

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

UBS AG v. Updated Business Solutions limited

Case No. D2002-0958

The Complainant is UBS AG of Zurich, Switzerland, represented by Proskauer Rose, LLP of United States of America.

The Respondent is Updated Business Solutions Limited of Gibraltar, United Kingdom of Great Britain and Northern Ireland; Administrative, Technical and Billing Contact: Internet Club of Riga, Latvia.

The disputed domain name ("the domain name") is <ubs-ltd.com>. The domain name is registered with Network Solutions, Inc. ("the Registrar").

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 16, 2002. On October 16, 2002, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name. On October 17, 2002, 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 for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 17, 2002. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 proceeding commenced on October 22, 2002. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2002. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 13, 2002.

The Center appointed Warwick Smith as the sole panelist in this matter, on November 22, 2002. 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.

Paragraph 5(e) of the Rules provides that if a respondent does not submit a response, the Panel shall decide the dispute based upon the Complaint. The following facts are taken from the Complaint, and, in the absence of any response, they are taken as sufficiently proved.

The Complainant is one of the world’s leading providers of private banking services. It is also one of the largest asset managers in the world. It has a presence in all major financial centers worldwide, with 1,500 offices in 50 countries. It employs 69,684 people, and manages over US$1 trillion in invested assets.

The Complainant was founded in 1872 under the name Swiss Bank Corporation. In 1912, as a result of the Corporation’s expansion, the Complainant began operating under the name Union Bank of Switzerland. Over the years since then, Union Bank of Switzerland has come to be widely known by the initials "UBS".

The Complainant is part of an integrated group encompassing a variety of services. UBS Wealth Management & Business Banking is the world’s leading private banking and Swiss retail banking business. UBS Global Asset Management is a leading institutional asset manager and mutual fund provider, and UBS Warburg operates globally as a client-driven securities and investment banking firm. UBS Paine Webber is one of the top United States wealth managers.

The Complainant has produced evidence that it owns a number of registered trademarks around the world incorporating the letters UBS. First, it appears (from a French language document produced by the Complainant) that the Complainant registered the wordmark UBS in Switzerland in March 1995. Secondly, the Complainant is the assignee of a UBS wordmark registered in Class 36 by Union Bank of Switzerland Corporation in the United States on December 26, 1989. The latter registration proceeded on the basis that the mark had first been used in commerce in January 1962.

The Complainant has also produced evidence of the registration of a number of "UBS" marks under the international system of registration established by the Madrid Protocol. These include the registration of the mark UBS in September 1995, in international classes 14, 16, 35, 36, 41 and 42. The Class 36 registration is for "insurance underwriting; financial affairs; monetary affairs; real estate operations; services and consultancy in fiduciary affairs; services and consultancy in fiscal assessment and know-how".

A UBS device mark was registered under the Madrid Protocol system in 1999, also in a number of classes. The Class 36 registration of this mark is for: "insurance, financial, banking and trading affairs, monetary affairs, real estate operations and trust management including brokerage services in the field of the above sectors; fiscal valuations and assessments; financial sponsorship of culture, sport and research".

Similarly, the mark UBS Union Bank of Switzerland has been registered since April 1998, under the Madrid system, in a number of international classes, including Class 36 (in respect of (amongst other things) "financial and monetary affairs, banking …"). Other international registrations held by the Complainant include registrations of the marks UBS MEMBER, UBS PRIVATE, and UBS CAPITAL, all in Class 36, and all registered in 1998.

The Complainant owns the Gibraltar registered Trademark No. 2235229, and the United Kingdom registered Trademark No. 1336655, which incorporate the "UBS" letters. However no details of these registrations have been provided, and these marks may have been registered after the domain name was registered.

The Complainant has invested a substantial amount of money in promoting the UBS family of marks in relation to its financial and other services. The UBS marks are extremely well-known around the world.

The domain name was registered on January 25, 2000.

From a date which is not entirely clear from the Complaint, the Respondent has been offering banking and various other corporate and administrative services in Europe and elsewhere, through a website linked to the domain name ("the Respondent’s website"). The Respondent’s website offers facilities such as arranging offshore banking accounts for clients, including bank accounts in Switzerland, Liechtenstein, and a number of "tax haven" and other countries. The Respondent’s website also offers "professional" assistance in setting up offshore companies and trusts, and administration services associated with such structures. The material from the Respondent’s website which the Complainant produced, generally emphasizes secrecy, anonymity, and keeping the client’s affairs private and beyond the reach of taxation or other authorities in the client’s home country.

The Respondent’s website specifically offers services in Switzerland, where the Complainant is based.

On the Respondent’s website there is an apparent link to a Russian language portion of the website, but the link is inactive. Only the English-language portion of the site is accessible. All prices on the site at the domain name are quoted in United States Dollars.

The Complainant has conducted web searches for "Updated Business Solutions Limited", but these searches have yielded only four positive results, all either linking to the Respondent’s website or consisting of links to the Respondent’s website in a business directory. The Complainant’s search for the term "Updated Business Solutions" in Worldwide News databases dating back several years (including business press releases and news sources from the Baltic region where the administrative, technical, and billing contact for the domain name is domiciled), failed to produce any references to the Respondent. Although the Respondent’s website claims that the Respondent has clients throughout the Baltic States, the Complainant says that there is no evidence that the Respondent carries on any business activities in Latvia or any other Eastern European State. The Respondent’s website, however, contains a statement, in bold type, that "Since 1992 UBSL has been the leading provider of offshore services in the Baltic States".

In early August 2002, the Complainant’s counsel delivered a cease and desist letter to a representative of the Respondent. The letter requested the transfer of the domain name to the Complainant, and the cessation of any and all use of names such as UBS or UBSL, or any other name confusingly similar to the Complainant’s name. There was no reply to this letter.

1. The domain name is virtually identical to, and confusingly similar in its substantive part to, the Complainant’s internationally renowned UBS mark. The addition of the generic expression "LTD" does not lessen the likelihood of confusion among the public, which is aware that the Complainant has a large network of similarly named branch offices and affiliated companies that use the UBS mark.

2. The Complainant has never authorized the Respondent to own or use the UBS mark.

3. There is no evidence that the Respondent has been commonly known by the name "Updated Business Solutions" for any significant period of time anywhere in the world.

4. The Respondent’s sole purpose in choosing the domain name was to misleadingly divert consumers searching for the Complainant’s website, thereby exploiting consumer confusion to profit from the UBS mark. The Respondent is therefore not making a legitimate, non-commercial or fair use of the UBS mark (citing Nora Baumberger v SAND Web Names-For Sale, WIPO Case No D2001-0502 (June 7, 2001)).

5. Given the number of the Complainant’s enterprises providing financial services worldwide, no provider of financial services in Europe could be unaware of the UBS mark. The Respondent must have been aware of the UBS mark at the time it registered the domain name.

6. The Respondent’s website offers a number of financial services that tarnish the goodwill of the UBS mark, and damage the Complainant’s impeccable reputation as a world-renowned financial services company. The Respondent is in the business of providing clients with numerous means to hide assets in order to evade court judgments, taxes, legal authorities, investigators, and other legitimate financial inquiries. The Respondent offers anonymous and untraceable credit cards, anonymous offshore bank accounts, offshore shell corporations and anonymous mail drops, and other services which at best operate in the shadow of the law and at worse facilitate outright criminal activity. Citing the Nora Baumberger case, the Complainant should not be forced to be associated with the offering of goods which [it] considers to be improper. Such use tarnishes the Complainant’s mark and thus disrupts its business.

7. The Respondent deliberately chose the domain name to attract, for commercial gain, Internet users looking for the Complainant’s legitimate and reputable services by creating a likelihood of confusion with the Complainant’s mark as to the source and affiliation of the Respondent’s website and the services provided by it. The Respondent has acted to mislead and confuse consumers into believing that the Complainant endorses or is affiliated with the Respondent’s website. The Respondent is therefore in violation of paragraph 4(b)(iv) of the Policy.

The Respondent has not made any submissions.

The Panel is satisfied that the Complaint was properly notified to the Respondent in accordance with paragraph 2(a) of the Rules. The Complaint was sent to all postal-mail and facsimile addresses shown in the Registrar’s Whois Database for the registrant and for the administrative and technical contacts for the domain name. It was also sent to the billing contact’s address as provided by the Registrar. The courier tracking records show that the hard copies of the Complaint were delivered to the Respondent at the Gibraltar address on October 24, 2002, and to the administrative, technical, and billing contact in Latvia, on the same date.

The Panel is also satisfied that the Center complied with its obligations under paragraph 2(a)(ii) of the Rules, to provide electronic copies of the Complaint to the email addresses referred to in that part of the Rules. In the circumstances just described, the Panel is satisfied that the Center has discharged its responsibility to employ reasonably available means calculated to achieve actual notice to the Respondent.

Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:

(i) That the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) That the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) That the domain name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:

(i) circumstances indicating that [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.

Paragraph 4(c) of the Policy sets out a number of circumstances, again without limitation, which may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, the disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Paragraph 15(a) of the Rules requires the 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".

The Panel is satisfied that the Complainant has proved this part of the Complaint.

The Complainant is the owner of numerous trademarks which either consist of the letters UBS or contain those letters as the most dominant and distinctive parts of the marks. To take one example, the Complainant has proved that it is the owner of the wordmark UBS, as registered in Class 36 in the United States in 1989, for "banking, investment banking, and securities brokerage services". It is also the owner of that wordmark under the Madrid system for the international registration of trademarks, in Classes 14, 16, 35, 36, 41, and 42. The wordmark has been registered under the Madrid Protocol since 1995, and the description of the Class 36 services in this registration includes: "financial affairs; monetary affairs; … consultancy and fiscal assessment and know-how".

The domain name consists only of the letters "UBS" combined with a hyphen, the generic expression "Ltd", and the generic suffix ".com". In the Panel’s view those generic additions do nothing to eliminate likely confusion with the Complainant’s well-known UBS marks, particularly as both Complainant and Respondent have been providing services in Europe in the financial or banking sectors.

The Panel is therefore satisfied that the domain name is confusingly similar to the Complainant’s registered UBS wordmarks, and also to the Complainant’s UBS device marks and its "UBS Union Bank of Switzerland" mark. In view of the generic nature of the words "Member", "Private", and "Capital", the Panel also finds that the domain name is confusingly similar to the Complainant’s UBS MEMBER, UBS PRIVATE, and UBS CAPITAL marks which were registered in 1998 under the Madrid Protocol.

The Complainant has not authorized the Respondent to use the domain name. It is therefore necessary to consider whether any of the circumstances described in paragraph 4(c) of the Policy might be applicable, or whether the Respondent might have a right or legitimate interest in the domain name on some other basis.

Looking first at paragraph 4(c)(i) of the Policy, it is clear that the Respondent has been using the domain name in connection with the offering of its services, from a date before it had any notice of the present dispute. The question under paragraph 4(c)(i) of the Policy is whether that offering of services has been bona fide. If the domain name was chosen with a view to misleadingly diverting Internet users to the Respondent’s website, for commercial gain, the "offering" would not be bona fide. Nor would such a use of the domain name be a "fair" use under paragraph 4(c)(iii) of the Policy.

Given the fame of the Complainant and its UBS marks, particularly in Europe where the Respondent operates, and given the nature of the Respondent’s business as it appears from the Respondent’s website, the Panel finds it inconceivable that the Respondent could have been unaware of the Complainant and its UBS marks relating to banking and financial services, at the time it registered the domain name in January 2000. The Respondent’s website is intimately concerned with services such as offshore banking and the formation of offshore companies and trusts throughout Europe and in other parts of the world, and on the Respondent’s website the Respondent claims detailed knowledge of banking in Switzerland, where the Complainant is based.

The Panel finds it equally inconceivable that the Respondent could have failed to appreciate the close similarity between the domain name and the Complainant’s UBS family of service marks.

The Complainant contends that the domain name was chosen for the purpose of attracting to the Respondent’s website, for commercial gain, Internet users looking for the Complainant’s services. Given the similarity of the domain name and the Complainant’s UBS marks, the fame of these marks and the fact that both parties are operating in the banking/financial services sector in Europe, the Complainant’s assertion clearly called for some explanation from the Respondent. None has been provided, and the Panel is prepared in those circumstances to infer that the Respondent did choose the domain name for the purpose alleged by the Complainant. It follows that the Respondent’s use of the domain name has not been in connection with a bona fide offering of its services within paragraph 4(c)(i) of the Policy, and that its use of the domain name has not been such as to create a right or legitimate interest under paragraph 4(c)(iii) of the Policy.

The Respondent might yet have a defence under paragraph 4(c)(ii) of the Policy. The Respondent has not made any claim that it is commonly known by the domain name, but the onus of proof remains on the Complainant. The point is put in issue by the fact that the distinctive part of the domain name is made up of the first letters of the Respondent’s name, and by the use of certain abbreviations of that name on the Respondent’s website.

The welcome page at the Respondent’s website describes "UBSL" as a professional consulting company, which specializes in tax planning, commercial law and corporate services in all major offshore jurisdictions. It asserts that "UBSL" has clients from Estonia, Ukraine, Finland, Lithuania, Russia, Sweden, Belorussia, Denmark, Germany, the United States and other countries. The welcome page claims that "UBSL" has established over 5,000 companies in different jurisdictions, and that, since 1992 [my emphasis], "UBSL" has been the leading provider of offshore services in the Baltic States. The welcome page refers to the Respondent’s team of experts, backed by "many years of experience".

The focus of the Respondent’s website does appear to be on Eastern European clients (eg "we are accessible to our clients during East European business hours …").

Looking through the other pages from the Respondent’s website which the Complainant produced, in one section the Respondent refers to "UBS Limited" as the provider of the advertised services (in the section of the website headed "Netherlands Offshore Company Formation"). In the rest of the website the abbreviation "UBSL" is used, and many of the web pages of the Respondent’s website include notations in which "UBSL" asserts a 2000 copyright in the web pages.

The Google searches produced by the Complainant also refer to the Respondent as "UBSL".

Under paragraph 14(b) of the Rules, in the absence of exceptional circumstances the Panel is entitled to draw such inferences from a party’s failure to comply with the Rules as the Panel considers appropriate. The matter of whether the Respondent has been commonly known by the domain name is a matter which the Respondent could quite easily have put before the Panel if that were in fact the case. It has failed to comply with the Rules by filing a response, and having regard to the other circumstances of the case, the Panel thinks it appropriate to draw the inference that the Respondent cannot claim any legitimate interest in respect of the domain name under paragraph (4)(c)(ii) of the Policy. The Panel has come to that view for the following reasons.

(i) In AST Sportsware Inc v. Steven R Hyken,WIPO Case No. D2001-1324 (March 26, 2002), the Panelist summarized his approach to the "commonly known by the domain name" defence, in the following terms:

"Given that a showing of a "legitimate interest" can defeat a charge of cybersquatting under the Policy, a Panel must be careful to ensure that a Respondent’s claim that he or she has "been commonly known by the domain name" is legitimate. See Penguin Books Ltd. v. Katz, WIPO Case No. D2000-0204 (May 20, 2000) (finding legitimate interest where Respondent produced evidence that he "has for many years been known by the nickname ‘Penguin’"). Mere casual nicknames or other unsubstantiated assertions of past use are insufficient. See, e.g., DIMC, Inc. v. Phan, WIPO Case No D2000-1519 (February 20, 2001) (rejecting claim that Respondent was known by nickname "Krylon" given absence of evidence of when alleged nickname was adopted and how it was used); Red Bull GmbH v. Gutch, WIPO Case No. D2000-0766 (September 21, 2000) (rejecting claim that Respondent was known by nickname "Red Bull" since childhood because Respondent did not provide any evidence to support contention); Gambro AB v. Family Health & Wellness Center, WIPO Case No. D2001-0447 (May 25, 2001) (Respondent did not submit any evidence to support suggestion that its employee was known by nickname "Gambro"); see also Sumner v. Urvan, WIPO Case No. D2000-0596 (July 24, 2000) (Respondent’s evidence that his nickname is "Sting" is "at the weaker end of the spectrum of such evidence" and thus did "not establish that he has been ‘commonly known’ by the domain name as contemplated by" the Policy). Rather, particularly when there are not insubstantial allegations of bad faith, a Panel should require a persuasive showing of a bona fide use of the name."

This Panelist respectfully agrees with the conclusion that, when there are not insubstantial allegations of bad faith (as the Panel believes to be the case in this proceeding), a Panel should require a persuasive showing of bona fide use of the name. Far from providing a "persuasive showing" of bona fide use, the Respondent in this case has elected to remain silent.

(ii) The Panel noted only one part of the Respondent’s website where the expression "UBS Limited" was used (the part headed Netherlands Offshore Company Formation). Those very limited references posted on the website two years and nine months after the domain name was registered, are not sufficient to establish that the Respondent has been commonly known as "UBS Limited".

(iii) In Rothschild Bank AG et al. v. Rothchild Corporation et al.,WIPO Case No. D2001-1112 (January 15, 2002)(relating to the domain <rothchild.com> and other "rothchild" domain names), the Panel held that, for paragraph 4(c)(ii) of the Policy to apply, the respondent must have been "commonly known by the domain name" as at the date of registration of the domain name.

In this case, both the Respondent’s website and the Google searches show that the Respondent refers to itself as "UBSL". However it is not clear if the Respondent was using that abbreviation before it registered the domain name in January 2000. The only evidence is in the form of pages from the Respondent’s website which were downloaded by the Complainant two years and nine months later (in October 2002). An Internet search of business releases and news sources (including from the Baltic States) did not turn up any references to the Respondent at all – a surprising result if the Respondent had indeed been the leading provider of "offshore services" in the Baltic States since 1992. It also seems unlikely that the Complainant would not have come across the Respondent much earlier if the Respondent had been as active in its field as the Respondent’s website claims it has been.

Taking these factors into account, the Panel thinks it appropriate to treat the claims on the Respondent’s website as "unsubstantiated assertions of part use", of the kind described in the AST Sportswear and DIMC Inc., cases referred to above.

(iv) Even if the Respondent had been commonly known as "UBSL" from a date some time before January 2000, in the Panel’s view "UBSL" is not the same as the domain name. "UBS" is a simple mark, consisting of only three letters, and the addition of a hyphen and the generic expression "Ltd" (denoting a registered corporation in many English-language jurisdictions) does nothing to detract from the significance of "UBS" as the distinctive part of the domain name. "UBSL" is different. When one is considering a very simple mark consisting of only three letters, the addition of a fourth letter can make a substantial difference to the ‘impression’ created by the name. The focus of "UBSL" is not so clearly on the name or mark "UBS" as is the case in "UBS–Ltd".

(v) The Panel has considered the decision in International Youth Hostel Federation v. Ivor Yevgeni Haya-Filkov, WIPO Case No. D2002-0720 (September 18, 2002), which was concerned with the domain <iyhf.com>. The Respondent in that case relied on paragraph 4(c)(ii) of the Policy, claiming that the initials of his name spelled the domain name. The Complainant replied that the Respondent had never been known by the name "iyhf", and, probably does not exist. The Complainant’s argument was upheld by the Panelist, who noted: "Initials, in and of themselves, are not sufficient to satisfy this paragraph. People are not generally known by their initials". However the Panel in that case held that a person’s initials may nevertheless provide a sufficient basis for claiming a legitimate interest in a domain name comprised of those initials, notwithstanding that the person may not have been "commonly known" by the initials. Paragraph 4(c) of the Policy is not an exclusive list of circumstances which may constitute a "legitimate interest" in a domain name for the purposes of paragraph 4(a)(ii).

In this Panelists’s view, the iyhf decision should be approached with some caution. If the evidence shows that the registrant’s purpose in choosing a domain name consisting substantially of another party’s famous trademark, was to misleadingly direct Internet traffic to the registrant’s own website, the fact that the domain was identical to the registrant’s initials (by which the registrant was not commonly known) would not in this Panelist’s view be sufficient to create a legitimate interest. The specific qualifications contained in paragraph 4(c)(iii) of the Policy would have to be kept in mind.

(vi) In this case, the Respondent has elected not to oppose the Complaint, and, in the Panel’s view, the weight of the evidence favours the inference that the Respondent did register the domain name with a view to directing to the Respondent’s website Internet users looking for sites associated with the Complainant.

The Complainant has sufficiently proved that the Respondent does not have any right or legitimate interest in the domain name under any of the circumstances specifically described in paragraph 4(c) of the Policy. No other possible basis for a right or legitimate interest in the domain name having been advanced, the Panel finds this part of the Complaint proved.

This part of the Complaint can be dealt with shortly. For the reasons set out in the Panel’s findings relating to Paragraph 4(a)(ii) of the Policy, the Panel is satisfied that the domain name has been registered and is being used in bad faith. Specifically, the Respondent has intentionally used the domain name, for commercial gain, to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s UBS marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website (the example of bad faith registration and use provided at Paragraph 4(b)(iv) of the Policy).

For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the domain name <ubs-ltd.com> be transferred to the Complainant.