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UBS AG v. has book publishers, Inc.

WIPO Case No. D2001-0639

Outcome
Complaint denied
Domain names
marcelospel.com, ubs-privatebanking.com
Complainant
UBS AG
Respondent
has book publishers, Inc.
Panelist
Ian Barker
Registrar
Tucows.com Inc of Toronto, Canada ("the Registrar")
Decided
09 Jul 2001
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0639.html

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

UBS AG v.

has book publishers, Inc.

Cases No.

D2001-0637 and D2001-0639

1. The Parties

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.

2. The Domain Names

and Registrar

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").

3. Procedural History

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.

4. Factual Background

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.

5. Parties’ Contentions

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.

Respondent

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.

6. Discussion and Findings

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.

7. Decision

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

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