WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BAWAG P.S.K. Bank für Arbeit und Wirtschaft und Österreichische Postsparkasse Aktiengesellschaft v. katie Mary Ozhuwan
Case No. D2021-0153
1. The Parties
The Complainant is BAWAG P.S.K. Bank für Arbeit und Wirtschaft und Österreichische Postsparkasse Aktiengesellschaft, Austria, represented by Binder Grösswang Rechtsanwälte GmbH, Austria.
The Respondent is katie Mary Ozhuwan, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <bawagcapital.com> (the “Domain Name”) is registered with Hosting Concepts B.V. d/b/a Registrar.eu (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2021. On January 20, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 21, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 21, 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 January 21, 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 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 24, 2021.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on March 8, 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 Complainant is an Austrian bank with approximately 2,4 million customers. The Complainant holds the rights to following trademarks.
- International trademark registration No. 821331 for, registered on December 15, 2003, designated for CZ, HU, SI and SK;
- Austrian trademark registration No. 242018 for , registered on November 20, 2007;
- Austrian trademark registration No. 243790 for BAWAG, registered on March 5, 2008;
- European Union Trade Mark registration No. 010511798 for , registered on May 2, 2012; and
- European Union Trade Mark registration No. 010511889 for BAWAG P.S.K., registered on May 2, 2012.
The Domain Name was registered on July 22, 2020.
5. Parties’ Contentions
The Complainant alleges the following:
The Domain Name and the Complainant’s trademarks are confusingly similar as the domain name <bawagcapital.com> contains the element BAWAG, which constitutes or forms the dominant part of the trademarks, while the addition of the term “capital” is descriptive. The additional term is not sufficient to avoid confusion. Further, the Domain Name fully incorporates the main component of the Complainants business name, which is the word BAWAG.
The Complainant is in not associated with the Respondent and the Complainant has never granted any license or other right to the Respondent to use any of the Complainant’s trademarks or to register any domain name incorporating BAWAG. The Respondent is trying to take a freeride on the Complainant’s reputation and goodwill, which is a result of the Complainant’s long and hard efforts and investments of millions of euros by using its trademarks. The content of the website, to which the Domain Name resolves, focuses on financial activities, which shows that the Respondent was well aware of the Complainant’s activities and trademarks. It can therefore be excluded beyond any doubt that the similarity between Complainant’s trademarks and the Domain Name is a coincidence. Further, the Respondent is using the Domain Name in a fraudulent way. The operator of the Domain Name website is indicated as the BawagCapital Pte. Ltd. from Singapore with the registration number 201209545R. On its website it appears that the BawagCapital Pte. Ltd is a cryptocurrency company for trading bitcoins all over the world. However, there is no local registration of the company “BawagCapital Pte. Ltd” in the online commercial register of Singapore. The registration number 201209545R leads to another company, namely "Luno Pte. Ld.”, which is also an online cryptocurrency company.
The Domain Name was registered and is being used in bad faith. The Respondent is deliberately creating the false and misleading impression that she is affiliated with the Complainant by using the Complainant’s trademarks and its company name. Further, the content of the Domain Name website shows that the Respondent is using the Domain Name in an attempt to attract, for commercial gain, Internet users to the Domain Name website by creating a likelihood of confusion with the Complainant’s trademarks. The fact that the Respondent is using black lettering and dark red/burgundy for graphic elements of the Domain Name website reinforces the assumption that the Respondent’s goal by registering the Domain Name and designing the Domain Name website was to create the impression that she is in collaboration with the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) 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;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has clearly established that it is the proprietor of several trademark registrations for BAWAG, which are registered prior to the registration of the Domain Name.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s BAWAG trademarks. The Domain Name incorporates BAWAG in its entirety while adding the term “capital”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Further, it is well established that “.com”, as a generic Top-Level Domain suffix, is disregarded in the assessment of the similarity between the Domain Name and the Complainant’s mark (see section 1.11.1 of the WIPO Overview 3.0).
Accordingly, the Panel finds that that the Domain Name is confusingly similar to trademarks in which the Complainant has rights.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant must first make out a prima facie case showing that the respondent lacks rights or legitimate interests in respect of a disputed domain name and then the burden of production, in effect, shifts to the respondent to come forward with evidence of its rights or legitimate interests (see section 2.1 of the WIPO Overview 3.0).
The Panel acknowledges that the Complainant has made a prima facie case showing that the Respondent lacks rights or legitimate interests in respect of the Domain Name. In this regard, the Panel notes that there is no indication that the Respondent has acquired trademark or license rights to the Domain Name.
Further, the composition of the Domain Name, the use of BAWAG in the Domain Name website, the similarities between the layout of the Domain Name website and the Complaint’s website <bawagpsk.com> clearly indicates that the Domain Name has been registered having the Complainant and its BAWAG trademarks in mind. The Panel considers this as evidence that the Respondent has attempted, for commercial gain, to attract Internet users to the Domain Name website by creating a likelihood of confusion with the Complainant’s trademarks. This, together with the indications that the information provided in the Domain Name website regarding its holder is false as indicated by the Complainant, strengthens the notion that the Respondent lacks rights or legitimate interest in respect of the Domain Name.
Accordingly, the Panel finds that that the Respondent does not have rights of legitimate interest in respect of the Domain Name.
C. Registered and Used in Bad Faith
Considering what has been stated above regarding the composition of the Domain Name and the contents of the Domain Name website the Panel finds that the Respondent has registered and is using the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <bawagcapital.com> be transferred to the Complainant.
Date: March 22, 2021