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UBS AG v. Rudolf Gautschi [2005] GENDND 1963 (8 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

UBS AG v. Rudolf Gautschi

Case No. D2005-0993

1. The Parties

The Complainant is UBS AG, Zurich, Switzerland, represented by Philipp E. Probst, Zurich, Switzerland.

The Respondent is Rudolf Gautschi, St. Gallen, Switzerland.

2. The Domain Names and Registrar

The disputed domain names <ubsbank.net> and <ubsbank.org> (the “Domain Names”) are registered with CORE Internet Council of Registrars (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 16, 2005. On September 16, 2005, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 19, 2005, 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. 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 27, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 17, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2005.

The Center appointed Tobias Zuberbühler as the sole panelist in this matter on October 27, 2005. 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 with a physical presence in all major financial centers of the world.

The Complainant is the owner of various trademarks containing the name “UBS”, including UBS WEALTH MANAGEMENT and UBS INVESTMENT BANK. The Complainant submitted evidence of valid trademark registrations.

The Complainant already owns the domain names <ubsbank.com> and <ubsbank.ch> which differ from the Domain Names only with respect to the generic top-level domains.

The Respondent is an individual domiciled in Switzerland.

The Domain Names were registered by the Respondent on June 23, 2003. The websites associated to the Domain Names are inactive.

5. Parties’ Contentions

A. Complainant

The Complainant objects to the use of the Domain Names by the Respondent and bases its Complaint on the following grounds:

1. The Domain Names are identical and confusingly similar in their substantive part to the trademark in which the Complainant has rights. The suffix “bank” does not lessen the likelihood of confusion among the public.

2. The Respondent has no rights or legitimate interests in respect of the Domain Names:

a) The Respondent has never been authorized by the Complainant to use the UBS trademark.

b) The Respondent has not been commonly known by the Domain Names.

c) The Respondent is not making a legitimate non-commercial or fair use of the Domain Names. The Respondent was not using the disputed Domain Names in connection with any bona fide offering of goods or services, nor had it made preparations to do so.

3. The Domain Names were registered and are being used in bad faith:

a) The Respondent must have been fully aware of the internationally well-known mark UBS owned by the Complainant when registering the Domain Names, which constitutes per se bad faith. By adding the term “bank”, the Respondent intended in bad faith to leverage off the strong reputation of the UBS mark.

b) The Respondent does not operate a website under the disputed Domain Names.

c) The Complainant already owns a various number of domain names containing the mark UBS and the suffix “bank”. The Respondent showed by registering the Domain Names a systematic pattern of registering the remaining vacant “ubsbank” domain names.

The Complainant requests the Panel to order a transfer of the Domain Names 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 contentions.

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 Names <ubsbank.org> and <ubsbank.net> combine the undisputed trademark UBS in its entirety with the suffix “bank”. The suffix “bank” does not render the disputed Domain Names significantly different from the Complainant’s UBS trademark.

The mark UBS is well-known around the world. The disputed Domain Names are most likely to be associated with the Complainant’s wealth management services. As set forth in WIPO Case No. D2001-0055 (Yeteck Communication, Inc. v America Online, Inc.), the mere addition of a word or suffix (i.e. the word “bank”) to a well-known trademark does not prevent a confusing similarity between the domain name and the trademark. The addition of the word “bank” to the Complainant’s trademark UBS does even increase the likelihood of confusion among the public as the Complainant is actually providing banking services.

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 has never been authorized to register the UBS trademark or any combinations thereof.

The Respondent is not making a legitimate non-commercial or fair use of the Domain Names. The websites associated to the Domain Names show no content. The Respondent has not provided the Panel with any information that would suggest his use of the Domain Names, or demonstrable preparations to use, in connection with a bona fide offering of goods or services, or a non-commercial or fair use of the Domain Names.

The Respondent has not been previously known under the disputed Domain Names.

For the reasons set forth above, the Respondent has no legitimate interest in respect of the Domain Names 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 has registered a domain name reflecting a well-known trademark (UBS). The Respondent has no rights to this trademark. The Panel is confident that the Respondent, at the time of the Domain Names’ registration on June 23, 2003, was well aware of the trademark UBS: The level of recognition of the UBS trademark by the general public - particularly at Respondent’s domicile (Switzerland) - is very high. The registration of two domain names incorporating the world-wide known trademark UBS and the suffix “bank” (which relates to the field of business in which the Complainant is active) as such indicates that the Respondent knew of the Complainant's trademark.

As there is no content shown on the websites associated to the Domain Names, the Panel concludes that Respondent’s sole intention was to passively hold the Domain Names and thereby prevent the Complainant from reflecting its mark in a corresponding domain under the generic top level domains “.net” and “.org”. This clearly indicates bad faith.

To summarise, the Respondent has registered and is using the Domain Names in bad faith in accordance with paragraph 4(b)(iv) of the Policy.

7. Decision

In consideration of the above, the Panel holds that the Domain Names are confusingly similar to the registered trademark of the Complainant, that the Respondent has no rights or legitimate interests in respect of the Domain Names, and that the Domain Names have been registered and are being used in bad faith.

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 Names <ubsbank.org> and <ubsbank.net> shall be transferred to the Complainant.

Tobias Zuberbühler
Sole Panelist

Date: November 8, 2005