WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Bitpanda GmbH v. Gela

Case No. D2021-4346

1. The Parties

The Complainant is Bitpanda GmbH, Austria, represented by Schönherr Rechtsanwälte GmbH, Austria.

The Respondent is Gela, Switzerland.

2. The Domain Name and Registrar

The disputed domain name <bitpanda.live> is registered with Hostinger, UAB (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2021. On December 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 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 Complainant on December 23, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 28, 2021.

The Center verified that the Complaint together with the amended 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 January 6, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 27, 2022.

The Center appointed Christian Schalk as the sole panelist in this matter on February 10, 2022. 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.

The Panel has reviewed the record and confirms the Complaint’s compliance with the formal requirements. The Complaint was properly notified to the Respondent in accordance with paragraph 2(a) and (b) of the Rules. The language of the proceeding is English.

4. Factual Background

The Complainant is a registered digital assets service provider with the competent Austrian and French Financial Market Authorities. The Complainant was founded in 2014 and was rebranded to “BITPANDA” in June 2016. The Complainant describes itself as a fast growing European fintech with extensive activities in the cryptocurrency trading sector. The Complainant has offices in many European cities with strong financial industry presence, such as Vienna, London, Milan, and Paris. The Complainant has received several industry awards since 2016, including the Ernst & Young (EY) Entrepreneur of the Year Award in 2019, and the Austria’s Best Startup Award in 2021, and has received broad media coverage in various European countries.

The Complainant is, inter alia, owner of the following trademarks which all cover goods and services in International Classes 9, 36, and 42:

- European Union Trade Mark No. 017496894 for the word mark BITPANDA, with registration date March 12, 2018;
- European Union Trade Mark No. 017496928 for the design mark BITPANDA, with registration date March 12, 2018;
- International Trademark Registration No. 1383484 for the word mark BITPANDA, with registration date November 21, 2017, which protection extends to Switzerland and to numerous countries in Eastern Europe, Asia, and to the United States of America (“U.S.”); and
- U.S. Trademark Registration No. 5658447 for the word mark BITPANDA, with registration date January 22, 2019.

The Complainant operates its principle website at “www.bitpanda.com”. It contains the Complainant’s trading platform as well as activities and background information about the Complainant’s services. The Complainant holds more than 280 domain names containing its trademark BITPANDA, among them <bitpanda.hr>, <bitpanda.it>, <bitpanda.nl>, and <bitpanda.ng>.

The disputed domain name was registered on January 26, 2021. The disputed domain name does not resolve to any website.

The Respondent has been using the disputed domain name as part of the email address “[…]@bitpanda.live”. In such emails, the Respondent pretends to be the Complainant. In the Respondent’s messages to users of the Complainant’s services, it states that a payout of the credit from the Complainant’s customer account is only possible after a further deposit of money.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name integrates the Complainant’s famous BITPANDA mark in its entirety which constitutes also its distinctive element.

The Complainant states further that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues that the Respondent does not have any authorization on behalf of the Complainant which would entitle the Respondent to use the Complainant’s BITPANDA trademark as a domain name. The Complainant is also convinced that using the disputed domain name for apparently illegal activities, i.e. sending fraudulent emails, cannot be the basis of rights or legitimate interests in such a domain name. The Complainant cites in this context Haas Food Equipment GmbH v. Usman ABD, Usmandel, WIPO Case No. D2015-0285.

The Complainant alleges also that the disputed domain name was registered and is being used in bad faith. The Complainant believes that by registering the disputed domain name, which is identical to the Complainant’s BITPANDA mark, the Respondent aimed at the Complainant in order to illegitimately draw commercial gain from it hoping of capitalization on the reputation of the Complainant or to prevent the Complainant from using the disputed domain name. The Complainant explains in this context that this can be inferred from the fact that the Respondent – according to the WhoIs data - is located in Switzerland where the Complainant’s trademarks are registered. In addition, the Complainant states that the term “bitpanda” is unique fictional and thus extremely distinctive.

The Complainant states further that it is inconceivable that the Respondent, under the given circumstances, registered the disputed domain name without being aware of its confusing similarity to the Complainant’s trademarks. A simple search in the Google search engine for the term “bitpanda” shows only search results related to the Complainant. This would easily allow the Respondent as holder of the disputed domain name to profit from traffic produced by users accidentally misspelling the Complainant’s disputed domain name. The Complainant is therefore convinced that there is no plausible legitimate reason for the Respondent to have registered the disputed domain name without any association with or authorization from the Complainant. The Complainant cites in this context Volkswagen AG v. Jan-Iver Levsen, WIPO Case No. D2015-0069 in order to support its arguments.

The Complainant argues further, that the fact that the disputed domain name currently does not resolve to a website does not prevent the finding of bad faith as it has been held by UDRP panels, for instance in Bruichladdich Distillery Company Limited v. Johannes Iga Schneemann, WIPO Case No. D2014-0168; Ladbroke Group PLC v. Sonoma International LDC, WIPO Case No. D2002-0131; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Complainant states in addition that the contact information regarding the Respondent as registrant seems to be incorrect since the disclosed postal code does not belong to the disclosed city of Zurich which is also not located in the Swiss province of Zug. The Complainant believes that the use of false contact details constitutes bad faith registration according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.2.1.

Other indications of bad faith are according to the Complainant, that the Complainant has a strong reputation, which makes out a prima facie case that the Respondent does not have any rights or legitimate interests in the disputed domain name. Therefore, the Complainant concludes that there is no use which can be considered as legitimate and for this reason, it is obvious that the passive holding of the disputed domain name by the Respondent amounts to use in bad faith.

The Complainant then states further that the Respondent has used the disputed domain name to pretend to be the Complainant and in particular to create false emails pretending that they are genuine emails coming from the Complainant. Therefore, the Complainant argues that the Respondent, by having registered the disputed domain name, has been using it to perpetrate a fraud and cites in this context Graybar Services Inc. v. Graybar Elec, Grayberinc Lawrenge, WIPO Case No. D2009-1017 to support this argument.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established trademark rights in the trademark BITPANDA. The disputed domain name is identical to the Complainant’s trademark BITPANDA.

It is the consensus view of UDRP panels that the first element functions primarily as a standing requirement (see section 1.7 of the WIPO Overview 3.0). The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant’s trademark and the disputed domain name to ascertain confusing similarity (see, e.g., Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227; Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647). As far as the trademark BITPANDA is concerned, the distinctive element is the term “bitpanda” which is featured in its entirety in the disputed domain name.

Furthermore, the generic Top-Level Domain (“gTLD”) “.live” in the disputed domain name does not affect the determination that the disputed domain name is identical or confusingly similar to the Complainant’s trademark BITPANDA in which the Complainant has rights (see also Compagnie Générale des Etablissements Michelin v. Trendimg, WIPO Case No. D2010-0484; Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936; and Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan, WIPO Case No. D2001-0615 and cases cited therein). It is well-established that gTLDs such as “.live” are generally disregarded when determining if there is identity or confusing similarity. Where a domain name (substantially) incorporates a complainant’s mark, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy (seeSportsdirect.com Retail Limited v. Nicole Missell and Dreamless Brand, WIPO Case No. D2015-1946; and Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105).

For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Based on the submissions and materials filed in this case, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

It is the consensus view of UDRP panels that once the complainant has made out a prima facie showing on this element, the burden of production shifts to the respondent (see section 2.1 of the WIPO Overview 3.0; and Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; and Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415).

The Respondent has not provided any evidence of circumstances specified in paragraph 4(c) of the Policy or of any other circumstances giving rise to a right to or legitimate interest in the disputed domain name. Specifically, the Panel finds no evidence that the Respondent has been or is commonly known by the disputed domain name. The Respondent is neither affiliated with the Complainant nor has a license to use its trademark. The Respondent has also not rebutted the Complainant’s allegations and has not provided the Panel with any explanations as to the Respondent’s rights or legitimate interests.

Searches for the term “bitpanda” in a search engine such as Google revealed only the Complainant’s business on the first two pages. The Panel is therefore convinced that the Respondent was aware of the Complainant when it registered the disputed domain name and that the “BITPANDA” brand has been chosen by the Respondent in order to create an impression of an association with the Complainant (see also: Telstra Corporation Limited v. Nuclear Marshmallows, supra).

According to the material brought before the Panel, the Respondent has used the disputed domain name in an email address. The Respondent used then this email address to send emails to customers of the Complainant. Therein, the Respondent pretended to be the Complainant and asked such the Complainant’s customers to make certain financial dispositions in order to benefit from further services of the Complainant.

Therefore, the only reason for the Respondent to register the disputed domain name appears, on balance, to capitalize on the Complainant’s goodwill and apparently abuse it in order to deceive the Complainant’s customers. Such behaviour cannot constitute a bona fide, or legitimate use of the disputed domain name.

For all these reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and therefore, the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which evidence bad faith registration and use of a domain name:

(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or

(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding disputed domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

It is a principle considered under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; and Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022) and under the Policy (see paragraph 2), that a domain name registrant represents and warrants to the concerned registrar that to its knowledge, the registration of the domain name will not infringe the rights of any third party.

The Panel finds that the Respondent must have been aware of the Complainant’s trademark and its products when it registered the disputed domain name for the following reasons: a simple search in a search engine such as Google or Bing reveals many references to the Complainant already on the first two pages of such a search list and would have made the Respondent immediately aware of the Complainant. Furthermore, the Respondent has used the disputed domain name as part of an email address where the Respondent referred to the Complainant and its financial services.

The Panel finds further that the Respondent is also using the disputed domain name in bad faith.

The Respondent has used the disputed domain name as part of an email address from which it has sent emails to customers of the Complainant. Therein the Respondent pretended to be the Complainant and asked such customers to make certain financial dispositions. Such behavior does not only deceive the Complainant customers who believe that they are dealing with the Complainant but could lead also to actions of fraud to the detriment of them.

Furthermore, such communication could seriously harm the Complainant’s reputation since customers who have received such emails could lose trust in the Complainant and in the seriousness of its services. This can be life threatening for a company like the Complainant. Companies active in the field of innovative digital financial services such as the cryptocurrency trading sector are often regarded as pioneers in this field and thus cannot necessarily benefit already from the reputation and goodwill of well-established service providers such as big banks with a global presence or insurance companies which exist often for several decades if not for more than a century. Therefore, apart from their technological leadership and power of innovation, the most important asset for companies like the Complainant is trust.

Another indicator of bad faith use of the disputed domain name is that it did not resolve to an active website at the time of filing of the Complaint. It is the consensus view amongst UDRP panelists that “the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith”. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith (see “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246; and Telstra Corporation Limited v. Nuclear Marshmallows, supra).

Examples of what may be cumulative circumstances found to be indicative of bad faith include, for instance, the complainant having a well known trademark and no response to the complaint having been filed (see section 3.3 of the WIPO Overview 3.0). In this case, the Panel is convinced that the overall circumstances of this case strongly suggest that the Respondent’s non-use of the disputed domain name is in bad faith. Such circumstances include the strength and renown of the Complainant’s BITPANDA trademark in its field of business and the Respondent’s failure to take part in the present proceedings.

Furthermore, the Respondent has apparently also provided inaccurate contact details when it registered the disputed domain name or failed at least to correct such false contact details. The Center has used the contact details given in the WhoIs record for the disputed domain name and those provided by the Registrar when it tried to send communications to the Respondent. The delivery of the Center’s written notice failed because neither the fax number nor the physical address was accurate.

Therefore, the Panel notes that the Respondent may have given incorrect contact details to frustrate or at least to delay this proceeding (see Telstra Corporation Limited v. Nuclear Marshmallows, supra).

Therefore, the disputed domain name was not only registered in bad faith for which the Respondent is responsible for but is also being used in bad faith as set out in paragraph 4(b)(iv) of the Policy.

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, <bitpanda.live>, be transferred to the Complainant.

Christian Schalk
Sole Panelist
Date: February 28, 2022