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UBS AG v. has book publishers, Inc. [2001] GENDND 1251 (29 June 2001)

WIPO Arbitration and Mediation Center

The Complainant in these two proceedings is UBS AG, a Swiss corporation of Zurich, Switzerland. The Complainant is represented by Professor Dr. Hanspeter Dietzi, its Deputy Group General Counsel and Ms. Beatrice Renggli, an Associate Director.

The Respondent in both proceedings is has book publishers, Inc., a United States corporation of Killingworth, CT, U.S.A. It is represented by the administrative, technical and billing contact for both names, Mr. Herbert A. Strittmatter.

Because the parties and their contentions are similar in both cases, it is convenient to issue one decision to cover both Complaints.

The domain names at issue are <ubs-privatebanking.com> (D2001-0637) and <marcelospel.com> (D2001-0639).

Both names are registered with Tucows.com Inc of Toronto, Canada ("the Registrar").

Both Complaints were submitted electronically on May 9, 2001, and by hard copy on May 10, 2001, by the Complainant to the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center").

On May 11, 2001, requests for Registrar verification were transmitted by the WIPO Center to the Registrar requesting the Registrar to:

Confirm that a copy of both Complaints had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).

Confirm that the domain names at issue are registered with that Registrar.

Confirm that the person identified as the Respondent is the current registrant of the domain names.

Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar’s WHOIS database for the registrant of the disputed domain names, the technical contact, the administrative contact and the billing contact for the domain names.

Confirm that the Uniform Domain Name Dispute Resolution Policy ("UDRP") was in effect.

Indicate the current status of the relevant domain name.

The Registrar advised WIPO Center as follows:

The Registrar had received a copy of both Complaints from the Complainant.

It is the Registrar of both domain names <ubs-privatebanking.com> and <marcelospel.com>.

The Respondent is the current registrant in each case.

The UDRP applies to each domain name.

The disputed domain names’ registration are currently "on hold" status.

Tucows.com has adopted the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"). As can be deduced from the advice of the Registrar that the domain names in question are "on hold", the Respondent has not requested that the domain names at issue be deleted from the domain name database, nor sought to terminate the agreement with the Registrar. Accordingly, the Respondent is bound by the provisions of the Uniform Domain Name Dispute Resolution Policy, i.e. the ICANN Policy. The Panel notes the Respondent’s assertion in each case that it does not agree to abide by and be bound by the Policy or WIPO Rules. However, the standard registration agreement between the Respondent and the Registrar indicates otherwise.

Having verified that both Complaints satisfied the formal requirements of the Policy and the Rules, the WIPO Center on May 16, 2001, transmitted by courier, email and facsimile notifications of Complaint and Commencement of Administrative Proceeding to the Respondent in both cases. A copy of the notifications of Complaint and Commencement of Administrative Proceeding was also emailed to the Registrar and ICANN.

The Respondent was advised that a Response to the Complaints was required within 20 calendar days. It was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. The Respondent filed Responses to both Complaints by email on May 31, 2001, and by hard copy on June 6, 2001. WIPO Center issued a Response deficiency notification. The deficiencies have been rectified.

The Complainant elected to have both Complaints resolved by a single Panelist: it has paid the requisite amount to WIPO Center.

On June 14, 2001, WIPO Center invited the Honourable Sir Ian Barker QC of Auckland, New Zealand, to be sole Panelist in both cases. It requested to the Panelist a statement of acceptance and declaration of impartiality and independence. The Panelist duly advised his acceptance and forwarded the statements of impartiality and independence.

On June 19, 2001, WIPO Center forwarded to the Panelist by courier the relevant submissions and the record. These were duly received by him. The Panel is required to forward its decision by July 2, 2001.

The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaints meet the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and WIPO’s Supplemental Rules ("the Supplemental Rules").

The language of the administrative proceeding is English, being the language of the registration agreement.

Complainant owns the trademark / service mark "UBS" and "UBS" (device), which have been registered in several countries for a variety of goods and services. It is a globally active institution offering financial and banking services using the said marks. Marcel Ospel is the President and former CEO of UBS AG and is well known in Switzerland and internationally. The Complainant is Switzerland’s largest bank and one of the largest in Europe, according to The Economist of March 11, 2000.

The Respondent has set up websites that can be accessed under both disputed names.

On these websites, it has published material making grave allegations against the Complainant, including money laundering and forgery. The website also advertises books written by Mr. Strittmatter on the alleged iniquities of the Complainant.

The domain name, <ubs-privatebanking.com>, is confusingly similar to its mark "UBS": The Complainant is a globally active financial institution, the main services of which, offered under the mark UBS and UBS (device) are financial and banking services, among which private banking plays an essential part.

UBS AG also owns the domain names <ubs.com> and <ubs.net>, as well as <ubsprivatebanking.com> and <ubs-private-banking.com>.

The Respondent has no rights or legitimate interests in respect of this domain name, because it has no activities in the fields of private banking. Further, there is no reason why it should use the acronym "UBS" to identify its products or its firm to the public.

The domain name should be considered as having been registered and used in bad faith, because in accordance with paragraph 4(b)(iii) of the Policy, the Respondent has registered the domain name for the purpose of disrupting the business of the Complainant. This contention is provided by the content of the website, set up under both disputed domain names. In terms of paragraph 4(b)(iv) of the Policy, the Respondent uses the domain name intentionally to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark. On the websites, it advertises books written by Herbert A Strittmatter (who has been identified as the administrative contact for the domain name), with which it tries to disrupt the business of the Complainant.

Similar considerations apply to the domain name that uses the name of Marcel Ospel, UBS AG’s President and former CEO.

The Responses that are essentially identical in respect of each Complaint, allege many illegal dealings by the Complainant. These include a number of statements from a variety of persons referring to the alleged misdeeds of the Complainant and to certain Court proceedings. The statements include one about the dealings of Mr. Strittmatter and his late father with UBS AG.

Based on these allegations, the Respondent claims that UBS should stand for "Underground Banking Systems".

The Respondent acknowledges that the domain name <ubs-privatebanking.com> is confusingly similar to the Complainant’s mark and that the domain name <marcelospel.com> is identical to the name of the President of the Complainant. The Respondent refers to a domain name <marcel-ospel> owned by a French registrant, where the relevant website contains material critical of the Complainant and/or Mr. Ospel.

It is of international interest to publish details of the "fraudulent conduct" of the Complainant and Mr. Ospel is responsible for its conduct.

The names are not being used in bad faith because they are publishing the truth, which is a constitutional right in a democratic country.

The websites are not being used for commercial gain. The books promoted on it, written by Mr. Strittmatter, viz "Clean, Dirty Swiss Banking" and "Gentlemen Crimes in Switzerland", are of interest to a wide variety of persons involved in investing finance and banking.

Paragraph 15(a) of the Rules instructs 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 burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

- That the Respondent has no rights or legitimate interests in respect of the domain name; and

- The domain name has been registered and used in bad faith.

In the opinion of the Panel, the domain name <ubs-privatebanking.com> registered by the Respondent is confusingly similar to the Complainant’s marks. The Panel comes to this view because of the fame of the mark "UBS" in a banking context. The added words emphasise the banking context. There is also the Respondent’s acknowledgement of confusing similarity referred to earlier.

In the opinion of the Panel, the domain name <marcelospel.com> is identical to the name of the Complainant’s well-known President. The Respondent acknowledges this. Material attached to the Complaints indicates that Mr. Ospel is very well-known in international banking and financing circles.

Complaints about misuse of a famous name in a domain name should be made by the person whose name is being so used. However, Mr. Ospel is not the Complainant in D2001-0639. There have been complaints in other cases from famous persons who have alleged that a domain name is identical or confusingly similar to their own name. The Policy requires the domain name to be identical or confusingly similar to a mark in which the Complainant has rights. Normally this requirement refers to a registered trade or service mark where the Complainant is registrant or licensee. The situation is more difficult where there is reliance by a Complainant upon an unregistered or ‘common law’ mark.

The Complainant in D2001-0639 makes no reference to any assignment by Mr. Ospel of any rights over his personal ‘mark’ which relates to his personal reputation and fame as distinct from the Complainant’s. Because he was the CEO and now President of the Complainant, it might be argued in terms of paragraph 4(a)(i) of the Policy that the Complainant has rights in the common law mark created by Mr. Ospel’s international reputation. However, in the Panel’s view, so to argue would be stretching the words of the Policy.

The fact that someone else has registered a similar domain name (i.e. <marcel-ospel>) without challenge from the Complainant or Mr. Ospel is immaterial in this present context. The Panel is confined to the facts of the present case.

There is nothing to stop Mr. Ospel in his own name making a Complaint against the present Respondent which would have to be dealt with on the evidence. Consequently the Panel cannot find that in respect of the domain name <marcelospel.com>, the first criterion has been proved.

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the dispute domain name. The Respondent does not assume the burden of proof, but may establish a right or legitimate interest in a disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

(i) Respondent has 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 prior to the dispute;

(ii) Respondent is commonly known by the domain name, even if Respondent has not acquired any trademark rights; or

(iii) Respondent intends to make 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.

The Complainant has not given the Respondent any rights in respect of either name. In the Panel’s view, the Respondent cannot show any of the circumstances in paragraph 4(c) of the Policy, quoted above.

Arguments based on freedom of speech laws – found in many countries – must be subservient to the terms of the Policy. Also, it is no concern of the Panel whether allegations published on a website are true or false and defamatory.

However, statements on the website derogatory of the Complainant and Mr. Ospel clearly tarnish the Complainant’s mark.

Although Mr. Strittmatter holds strong views about the Complainant, the fact remains that his books are sold through the websites. That fact constitutes a use of the domain name for commercial gain, which tarnishes the marks. Hence there is no defence available to the Respondent under paragraph 4(c)(iii). The other parts of the paragraph do not apply.

Paragraph 4(b) of the ICANN Policy states:

"For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances including that you have registered or you have 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 your documented out-of-pocket costs related to the domain name;

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location."

It should be noted that the circumstances of bad faith are not limited to the above.

The Panel considers that the Respondent has registered and used the domain names in "bad faith" under (iii) above.

There could clearly be confusion on the part of Internet users who would naturally think that the name was being promoted by the Complainant. Users would expect to find on the websites information about it. They would not expect to find material highly critical of the Complainant along with allegations of serious criminal conduct by it. Internet users searching the site would assume that the Complainant had at least given some endorsement, sponsorship or affiliation to the site.

For the foregoing reasons, the Panel decides:

(a) That the domain name <ubs-privatebanking.com> registered by the Respondent is confusingly similar to the marks to which the Complainant has rights;

(b) That the Respondent has no rights or legitimate interests in respect of the said domain name; and

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

(d) That no order of transfer or cancellation be made in respect of the domain name <marcelospel.com>. This ruling is without prejudice to the right of Mr. Ospel himself to bring a Complaint in his own name against the Respondent.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <ubs-privatebanking.com> be transferred to the Complainant.

Hon. Sir Ian Barker
Sole Panelist

Dated: June 29, 2001