The Complainant is UBS AG, Zurich, Switzerland, represented by Peter Widmer, Bern, Switzerland.
The Respondent is G.A.S. Ltd., of Meggen, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <ubs-switzerland.com>
(the “Domain Name”) is registered with Network Solutions LLC (the
“Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by e-mail on September 13, 2006, and in hardcopy on September 14, 2006. On September 15, 2006, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On September 15, 2006, the Registrar transmitted by e-mail 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. The Center verified that 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 proceedings commenced on September 19, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 9, 2006. The Respondent submitted an e-mail to the Center on September 26, 2006. Subsequently, the Center invited the Respondent by e-mail on September 26, 2006 to submit a full Response to the Center. The Respondent did not submit a Response. Accordingly, the Center notified the Respondent’s default on October 11, 2006.
On October 27, 2006, the Center appointed Dr. Bernhard
F. Meyer-Hauser as the Sole Panelist in this matter. 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 UBS AG, a world leading wealth management company, headquartered in Switzerland, with physical presences in all major financial centers of the world.
The Complainant is the owner of several and various trademarks containing the word “UBS”. These trademarks are protected worldwide for a large variety of goods and services, especially for financial and banking services. The Complainant submitted evidence of valid trademark registrations.
The Complainant already owns the domain name <ubs.com>.
The Respondent claims to be a legal entity domiciled in Switzerland. Its company name, however, could not be found in the Swiss company register.
The Domain Name was registered by the Respondent on
August 13, 1999.
5. Parties’ Contentions
A. Complainant
The Complainant objects to the use of the Domain Name by the Respondent and bases its Complaint on the following grounds:
1. The Domain Name is identical and confusingly similar in their substantive part to the trademark in which the Complainant has rights. The suffix “switzerland” is not sufficient to distinguish the Respondent’s domain name from the Complainant’s mark.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name:
a) The Respondent has not been commonly known by the Domain Name.
b) The Respondent has never been authorized by the Complainant to use the UBS trademark.
c) The Respondent is not making a legitimate non-commercial or fair use of the Domain Name. The Respondent is not using the disputed Domain Name in connection with any bona fide offering of goods or services.
3. The Domain Name was registered and is being used in bad faith:
a) The Complainant is a renowned Swiss bank. It can reasonably be assumed that the Respondent, who claims to be domiciled in Switzerland, had knowledge of the Complainant’s trade name and trademarks at the time of registration of the Domain Name.
b) There are no circumstances that suggest that the Respondent had any other intent than to trade on the Complainant’s goodwill and reputation.
c) The Respondent indicated false contact information when registering the Domain Name, which is a further indication of bad faith. The Respondent is not registered in the Swiss company register. Therefore, no such legal entity exists. Further the indicated fax number is false.
The Complainant requests the Panel to order a transfer of the Domain Name from the Respondent to the Complainant.
B. Respondent
The Respondent was duly notified of the administrative
proceedings as stipulated under paragraph 2(a) of the Rules, but did not reply
to the Complainant’s allegations. The Panel, nevertheless, will take into
consideration the Respondent’s e-mail dated September 26, 2006 for its
finding. The Respondent claimed in its e-mail to the Center that the Domain
Name did not represent the Complainant in any way as the term “ubs”
of the Domain Name would stand for “Universal Banking Services”.
Furthermore, the Respondent pointed out that the Complainant did not own the
three letters “ubs”.
6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Domain Name <ubs-switzerland.com> combines the undisputed trademark UBS in its entirety with the suffix “switzerland”. The suffix “switzerland” does not render the Domain Name significantly different from the Complainant’s UBS trademark.
The trademark UBS is well-known, not only in Switzerland, but around the world.
The Domain Name, particularly in combination with UBS’s main location
in Switzerland, is most likely to be associated with the Complainant’s
wealth management services. As set forth in America Online, Inc.,v.
Yeteck Communication, Inc., WIPO Case
No. D2001-0055, the mere addition of a word or suffix (i.e. the geographical
designation “switzerland”) to a well-known trademark does not prevent
a confusing similarity between the domain name and the trademark.
The Panel finds that the Complainant, therefore, has fulfilled the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, the following circumstances can demonstrate rights to and legitimate interests of a respondent in a domain name:
(i) before any notice was given to the respondent of the dispute, the Respondent used, or demonstrably made 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) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even though it has not acquired any trademark or service mark rights; or
(iii) the Respondent is making a legitimate non-commercial 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.
The Complainant asserts that the Respondent was never authorized to register the UBS trademark or any combinations thereof.
There is no material before the Panel to indicate that the Respondent is making a legitimate non-commercial or fair use of the Domain Name. The website at the disputed domain name has no apparent purpose and appears to be inactive, the Respondent has not provided the Panel with any evidence suggesting a bona fide offering of goods or services, or a non-commercial or other fair use of the Domain Name. The Respondent has likewise failed to show to the Panel that it has been previously known under the Domain Name.
For the reasons set forth above, the Panel finds that the Respondent has no legitimate interest in respect of the Domain Name in the sense of paragraph 4(c) of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the Domain Name has been used and
registered in bad faith if:
(i) circumstances indicating that respondent has registered and has 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 respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) 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 respondent has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract,
for commercial gain, Internet users to its 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 Respondent’s website
or location or of a product or service on its website or location.
The Respondent registered a domain name reflecting a well-known trademark (UBS) without itself having any apparent right to use such trademark. The Panel is confident that the Respondent, at the time of the Domain Name’s registration - August 13, 1999 – was in all likelihood well aware of the trademark UBS: The level of recognition of the UBS trademark by the general public - particularly at the Respondent’s alleged domicile (Switzerland) - is extremely high.
Considering the Respondent’s lack of rights or legitimate interests in the disputed domain name, and having regard to the fame of the UBS marks and lack of any conceivable good faith use of the disputed domain name by the Respondent, the Panel concludes that the Respondent’s probable sole intention was to passively hold the Domain Name and thereby prevent the Complainant from reflecting its mark in a corresponding domain name under the generic top level domain “.com”. Such behaviour indicates bad faith.
To summarize, the Panel finds Respondent has registered and is holding the
Domain Name in bad faith in accordance with paragraph 4(b)(iv) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <ubs-switzerland.com> shall be transferred to the Complainant.
Dr. Bernhard F. Meyer-Hauser
Sole Panelist
Dated: November 10, 2006
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