WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
UBS PaineWebber Inc. v. email@example.com 9876543210
Case No. D2003-0349
1. The Parties
The Complainant is UBS PaineWebber Inc., of New York, United States of America, represented by Proskauer Rose, LLP, of Washington, DC, United States of America.
The Respondent is firstname.lastname@example.org 9876543210, of Virgin Islands, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <usbpainewebber.com> is registered with OnlineNic, Inc. dba China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 7, 2003. On May 8, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On May 9, 2003, 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.
Paragraph 3(b)(xiii) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") requires the Complaint to:
"State that the Complainant shall submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to the jurisdiction of the courts in at least one specified Mutual Jurisdiction."
"Mutual Jurisdiction" is defined in Rule 1 as:
"a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain name holder’s address as shown for the registration of the domain name in Registrar’s Whois database at the time the Complaint is submitted to the Provider."
In the Complaint, the Complainant chose option (a), agreeing to submit to the jurisdiction of the courts of Alameda County of California located in Oakland, California, United States, as
"the courts having jurisdiction over the principal office of the Registrar, to which the Respondent in its Registration Agreement has submitted…"
A copy of the Registration Agreement was annexed to the Complaint. It contained a provision (in block capitals):
"For the adjudication of disputes concerning or arising from…the use of any TLD name(s), you agree to submit…to the jurisdiction of the courts (I) of your domicile, and (II) of California, USA, or the U.S. County Court for Alameda County of California located in Oakland, California."
The Registrar informed the Center that the registrant had not submitted to the jurisdiction at the location of the principal office of the Registrar. The Center informed the Complainant of this and said:
"OnlineNIC has its registered address at California U.S.A. but the principal office of OnlineNIC is in China."
The Center required the Complaint to be amended so as to accord with option (b) by expressly submitting to the jurisdiction of the courts at the location of the domain-holder’s address as shown for the registration of the domain name in Registrar’s Whois database at the time the Complaint was submitted to the Center.
In response to this notification by the Center that the Complaint was administratively deficient, the Complainant sought reconsideration of the decision to require amendment and subsequently filed an Amended Complaint on May 15, 2003, to ensure that it was timely in the event that the Center rejected the request for reconsideration. The Amended Complaint contained a submission to the jurisdiction of the courts of "‘Yemen Yemen’, British Virgin Islands, being the courts having jurisdiction over the location of the domain name holder’s address as listed in the Registrar’s Whois database at the time the Complaint was submitted."
The Center decided to proceed with the case and to send the Complainant’s comments and views on the issue for consideration by the Administrative Panel on appointment. It is convenient to consider this issue now.
In seeking reconsideration of the Center’s requirement that the Complaint be amended, the Complainant noted that the registrant had submitted in the Registration Agreement to the jurisdiction of the courts of an office of the Registrar and that the question was whether the California office was "a ‘principal office’" within the meaning of the Rules. The Complainant submitted that the term "principal office" is not defined in the Rules and that the ICANN list of accredited registrars states that OnlineNIC is located in the United States. Similarly, ICANN’s Internic website provides contact information for OnlineNIC in San Francisco. There is no indication anywhere that the San Francisco office is not the principal office.
However, Complainant’s counsel rightly drew to the attention of the Center that he had elicited from OnlineNIC that: "It’s fact that our principal office is at China."
The Complainant argued that:
"Allowing a registrar to privately maintain a ‘hidden’ principal office, not revealed or described anywhere on the Internet, is unfair to Complainants in the UDRP process, who will have no way of knowing in advance whether part (a) of the definition of ‘Mutual Jurisdiction’ is satisfied. Instead, Complainants must either forego using part (a) altogether, or gamble and see if their Complaint is accepted for filing. Indeed, even having previously filed (and amended) a Complaint involving the registrar will not answer the question, because nothing would prevent the registrar from changing its ‘principal office’ on a moment’s whim, producing needless expense and inconvenience for Complainants.
It is the registrars, not Complainants, that have better access to the information indicating the location of their principal office, and therefore it is registrars, and not Complainants, that in the interest of justice should bear the burden of ensuring that the contact information provided to ICANN is correct. We therefore respectfully request that WIPO consider OnlineNIC’s registered address to be its ‘principal office’ for purposes of Section 3(b)(xiii) of the Rules."
It appears to the Panel on the material before it that the difficulty experienced by the Complainant arose not necessarily because of inaccurate information provided by the Registrar to ICANN (for indeed the Registrar does have an office in California) but from the possible lack of a requirement by ICANN that registrars publicly identify their principal office for the purposes of Rule 3(b)(xiii). This would enable Complainants to make an informed choice when submitting to a Mutual Jurisdiction. The Panel notes that this is an issue for the attention of ICANN.
Even if the Panel would have the power to override the Center’s decision to require the amendment to the Complaint, it would not be appropriate to exercise it in this case because the Registrar itself has stated that its principal office is "at China." For the Panel or the Center to proceed on the basis that the California office is "the" or "a" principal office for the purposes of Rule 3(b)(xiii) would be to raise the prospect of possible enforcement issues for want of proper submission by the Complainant to a Mutual Jurisdiction. In any event, the Complainant has now filed an Amended Complaint submitting to the jurisdiction of the courts of the Respondent’s address. All jurisdictional uncertainty will be removed by proceeding to determine this case on the basis of the Amended Complaint.
Further procedural history
The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "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 Amended Complaint, and the proceedings commenced on May 20, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2003.
The Center appointed Alan L. Limbury as the Sole Panelist in this matter on June 23, 2003. 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 (uncontested facts)
On November 3, 2000, UBS AG of Switzerland, one of the world’s leading private banks (founded in 1872), merged with Paine Webber Inc. of the U.S.A., also one of the world’s leading financial service providers, whereupon the Complainant became a wholly-owned subsidiary of UBS AG. Complainant operates as the wealth management arm of UBS AG, with 365 offices in the U.S.A. and 1.8 million clients. It provides its services under the trademark UBS PAINEWEBBER and conducts much business online through its website "www.ubspainewebber.com."
The Respondent registered the disputed domain name on November 27, 2002. It connects to a website offering links to other sites, some of which offer services of the kind provided by the Complainant, including services of competitors of the Complainant.
5. Parties’ Contentions
The UBS PAINEWEBBER mark has become distinctive of the services of the Complainant. The disputed domain name is virtually identical and is confusingly similar to that mark. The Respondent has no rights or legitimate interests in respect of the disputed domain name, which was registered and is being used in bad faith.
The Respondent did not respond to the Complainant’s contentions.
6. Discussion and Findings
Failure to file a Response
A Respondent is not obliged to participate in a proceeding under the Policy but if it fails to do so, asserted facts may be taken as true and reasonable inferences may be drawn from the information provided by the Complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Microsoft Corporation v. Freak Films Oy, WIPO Case No. D2003-0109; SSL International plc v. Mark Freeman, WIPO Case No. D2000-1080 and Alta Vista Company v. Grandtotal Finances Limited et al., WIPO Case No. D2000-0848.
To qualify for cancellation or transfer, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Rights in a trademark
To succeed in relation to an unregistered mark, the Complainant must prove that, prior to filing the Complaint, it has provided goods or services under that mark and thereby acquired a reputation such that members of the public would associate those goods or services with the Complainant and not with others not authorized by the Complainant to use the mark: British Heart Foundation v. Harold A Meyer III, (eResolution Case No. AF0957).
The Complainant has provided sufficient evidence to establish that, prior to filing the Complaint, it had acquired, through use, common law rights in the mark UBS PAINEWEBBER. The Panel also finds that each of the marks UBS and PAINE WEBBER was very well known prior to the merger.
B. Identical or Confusingly Similar
Many cases have established that "essential" or "virtual" identity is sufficient for the purposes of the Policy: The Stanley Works and Stanley Logistics Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113, Nokia Corporation v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102, and America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004; Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489; Komatsu Ltd. and Komatsu America International Company v. RKWeb Ltd., WIPO Case No. D2000-0995; America Online, Inc. v. Andy Hind, WIPO Case No. D2001-0642; The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571.
Likewise, many cases have established that the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors, such as the "Sleekcraft factors" – AMF Inc. v. Sleekcraft Boats, 599 F.2d 341,346 (9th Cir. 1979), usually considered in trademark infringement or unfair competition cases. See BWT Brands, Inc. and British American Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662; Koninklijke Philips Electronics N.V. v. In Seo Kim, WIPO Case No. D2001-1195; Energy Source Inc. v. Your Energy Source, NAF Case No. FA 96364; Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, Inc., WIPO Case No.D2001-1121, and the cases there cited. See also the similar approach adopted by the U.S. Federal court in Northern Light Tech., Inc. v. N. Lights Club 2000 U.S. Dist. LEXIS 4732 (D. Mass. March 31, 2000).
The Panel finds the disputed domain name to be virtually identical and confusingly similar to the Complainant’s unregistered mark UBS PAINEWEBBER.
The Complainant has established this element of its case.
C. Rights or Legitimate Interests
The Panel is satisfied that the Complainant’s common law trademark rights in the name UBS PAINEWEBBER had been established not merely prior to the filing of the Complaint but prior to registration by the Respondent of the disputed domain name.
The Respondent is not licensed or otherwise authorized by the Complainant to use its UBS PAINEWEBBER mark nor to register the disputed domain name. Given the very slight misspelling in the disputed domain name of the very well known UBS part of the Complainant’s mark; the inclusion in the disputed domain name of the entirety of the very well known PAINE WEBBER part of the Complainant’s mark and the evidence before the Panel that the mark UBS PAINEWEBBER as a whole was widely known and recognized, the Panel infers that the Respondent was fully aware of the Complainant’s mark when it registered the disputed domain name. These circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web (WIPO Case No. D2000-0624) and the cases there cited. The Respondent has made no such showing.
The Panel accordingly concludes that the Respondent has no rights or legitimate interest in respect of the disputed domain name. The Complainant has established this element of its case.
D. Registered and Used in Bad Faith
The circumstances specified in paragraph 4(b) of the Policy are not exhaustive. Bad faith registration and use within paragraph 4(a)(iii) may be found in other circumstances.
In SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport (NAF Case No. FA94956) a finding of bad faith was made where the Respondent "knew or should have known" of the registration and use of the trademark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot (NAF Case No. FA94737); Canada Inc. v. Sandro Ursino (eResolution Case No. AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (NAF Case No. FA95037).
Here the Panel has found the Respondent knew of the Complainant’s mark before registering the disputed domain name, which, but for the minor misspelling, wholly incorporates that mark. For this reason the Panel finds the disputed domain name was registered in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.
The Panel finds that, by using the disputed domain name to lead to a website promoting, for commercial gain, services associated with the Complainant, the Respondent has intentionally sought to confuse Internet visitors as to the source, sponsorship, affiliation or endorsement of the Respondent's website. This is evidence of both bad faith registration and bad faith use within paragraph 4(b)(iv) of the Policy.
The Complainant has established this element of its case.
For all the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and Paragraph 15 of the Rules, the Panel directs that the domain name <usbpainewebber.com> be transferred to the Complainant.
Alan L. Limbury
Date: July 1, 2003