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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BDSwiss Holding Ltd and BDS Markets v. WhoisGuard Protected, WhoisGuard, Inc. / Awverosuo Propser

Case No. D2021-0498

1. The Parties

The Complainants are BDSwiss Holding Ltd, Cyprus, and BDS Markets, Mauritius, internally represented.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Awverosuo Propser, Uganda.

2. The Domain Name and Registrar

The disputed domain name <bd-swiss.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2021. On February 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 18, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on March 3, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on March 4, 2021.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 23, 2021.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on April 30, 2021. 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 Complainants, BDSwiss Holding Ltd and BDS Markets, are two financial institutions, belonging to the BDSwiss AG group established in Switzerland, and offering respectively their services through “eu.bdswiss.com” and “www.bdswiss.com”. The Complainant BDSwiss Holding Ltd has changed to its current name from “Keplero Holdings Limited” since May 2014, and it has rights in the European Union trademark registration No. 012708749 for the word mark BDSWISS, filed on March 19, 2014 and registered on July 21, 2014, in international class 36 (Annex 1 to the Complaint). The Complainant BDS Markets is the owner of the domain name <bdswiss.com>. The Complainants have granted each other to use its respective trademark and domain name through a license. The Complainants are hereinafter referred to as “the Complainant”.

The disputed domain name was registered on October 19, 2020 and is presently used in connection with a webpage offering investments in bitcoins and other financial products and services.

5. Parties’ Contentions

A. Complainant

Under the Complainant’s view, the disputed domain name <bd-swiss.com> is confusingly similar to the Complainant’s BDSWISS trademark, corporate name and prior domain name <bdswiss.com>; and the hyphen included in the disputed domain name is not capable of adding any distinctiveness thereto. In addition to that, the Complainant further contends that the webpage that resolves from the disputed domain name offers products and services identical to those offered by the Complainant (namely derivative investment products, foreign exchange (“forex”), indices and cryptocurrencies), reproducing what appears to be a false certificate of registration with the United Kingdom authorities.

Regarding the absence of the Respondent’s rights or legitimate interests, the Complainant argues that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, rather showing a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers by an illegal offer of financial products.

As to the registration and use of the disputed domain name in bad faith, the Complainant argues that the Respondent could not be in good faith by ignoring the Complainant in view of its influence in the financial brokerage sector. It is evident that the purpose of the Respondent’s registration of the disputed domain name is to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s registered trademark as to the source, sponsorship, affiliation, or endorsement of its website. A further indication of the Respondent’s bad faith is the reproduction of a false document on the website that resolves from the disputed domain name as to the identity of the Respondent (Annex 5 to the Complaint). Lastly, the absence of a reply to the warning letter sent by the Complainant to contact the Respondent (Annex 6 to the Complaint) prior to this procedure is a further indication of bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:

(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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain name.

In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

A. Identical or Confusingly Similar

The Complainant has established rights over the BDSWISS trademark.

The disputed domain name <bd-swiss.com> reproduces the Complainant’s BDSWISS trademark in its entirety. The additional hyphen included in the disputed domain name is not capable of preventing a finding of confusing similarity. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:

(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed 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 disputed domain name, in spite of not having acquired trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainant to make at least a prima facie case against the Respondent under the second UDRP element.

In that sense, and according to the evidence submitted, the Complainant has made a prime facie case against the Respondent which does not hold any trademark rights over the term “Bd-swiss”. Further, there is no evidence on record showing that the Respondent is commonly known by the disputed domain name.

Also according to the evidence submitted by the Complainant, the use made of the disputed domain name being almost identical to the Complainant’s BDSWISS trademark in connection with a webpage offering investments in bitcoins and other financial products and services that are identical to those of the Complainant suggests at least an affiliation with the Complainant which in fact does not exist. Such use does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name in these circumstances.

The Panel also notes that the website that resolves from the disputed domain name appears to reproduce a false “Business License” certificate of registration with the United Kingdom authorities which is a further indication of the lack of the Respondent’s rights or legitimate interests.

Moreover, the nature of the disputed domain name carries a risk of implied affiliation with the Complainant (see WIPO Overview 3.0, section 2.5.1).

Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

In this case, both the registration and use of the disputed domain name in bad faith can be found pursuant to Policy, paragraph 4(b)(iv) in view of the reproduction of the Complainant’s prior registered BDSWISS trademark in its entirety in the disputed domain name, the disputed domain name being almost identical to the Complainant’s domain name <bdswiss.com>, as well as the use of the disputed domain name in connection with a webpage offering investments in bitcoins and other financial products and services, which are of the same nature as those of the Complainant, which creates a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement thereof.

Moreover, the lack of the Respondent’s reply to the warning letter sent by the Complainant prior to this procedure and the apparently false contact details provided in WhoIs information relating to the disputed domain name, which did not allow the delivery of the Written Notice by courier to the underlying registrant are further indications of the Respondent’s bad faith.

For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain name.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <bd-swiss.com> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: May 14, 2021

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