WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
BAWAG P.S.K. v. Katie Mary Ozhuwan, Bawagcapital Group Ltd
Case No. D2021-1717
1. The Parties
The Complainant is BAWAG P.S.K., Austria, represented by Binder Grösswang Rechtsanwälte GmbH, Austria.
The Respondent is Katie Mary Ozhuwan, Bawagcapital Group Ltd, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <bawagcapitalltd.com> (hereafter referred to as the “Disputed 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 June 1, 2021. On June 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 3, 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 June 3, 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 June 4, 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 June 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 30, 2021.
On July 8, 2021, two third parties contacted the Center after receiving a communication apparently sent by the Center notifying them about the commencement of a proceeding against them. After performing due actions, on July 16, 2021, the Center verified that these third parties were not related to this proceeding.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on August 10, 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. It was created by merger agreement of August 1, 2005 with a simultaneous change of name to BAWAG P.S.K. through the merger of Bank für Arbeit und Wirtschaft (BAWAG) with Österreichische Postsparkasse (P.S.K.).
The Complainant owns various trademark registrations corresponding to or including the term BAWAG, such as the following:
- the below International figurative mark No. 821331 registered on December 15, 2003 in class 36:
- BAWAG, Austrian word mark No. 243790, registered on March 5, 2008 in class 36;
- BAWAG P.S.K., EU word mark No. 010511889 registered on May 2, 2012 in class 36.
The Complainant’s official website is linked to the domain name <bawagpsk.com>.
The Disputed Domain Name was registered on May 5, 2021. According to evidence provided by the Complainant, the Disputed Domain Name resolved to a website offering cryptocurrency services.
5. Parties’ Contentions
The Complainant considers the Disputed Domain Name to be confusingly similar to a trademark in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. According to the Complainant, the Respondent used the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are administrative, the standard of proof is the balance of probabilities.
Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(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 Panel will therefore deal with each of these requirements.
A. Identical or Confusingly Similar
To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are trademarks in which it has rights. The Complainant’s trademarks correspond to or include the term BAWAG and have been registered in various countries in connection to the Complainant’s financial services.
The Disputed Domain Name incorporates the Complainant’s BAWAG word mark in its entirety, simply adding the terms “capital” and “ltd”. BAWAG is also the dominant element of other trademarks of the Complainant. 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 (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Additionally, it is well established that the generic Top-Level Domain (“gTLD”), here “.com”, may be disregarded when considering whether the Disputed Domain Name is confusingly similar to a trademark in which the Complainant has rights.
In light of the above, the Panel considers the Disputed Domain Name to be confusingly similar to the Complainant’s trademarks.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
As established by previous UDRP panels, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see section 2.1 of the WIPO Overview 3.0).
According to the information provided by the Registrar, the Respondent is “Katie Mary Ozhuwan, Bawagcapital Group Ltd”. However, there is no evidence that the Respondent has been commonly known by the Disputed Domain Name nor that the Respondent has acquired trademark or service mark rights. The Respondent’s use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent exists or existed.
Where a domain name consists of a trademark plus additional terms, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner (see section 2.5.1 of the WIPO Overview 3.0). The Disputed Domain Name incorporates the Complainant’s BAWAG trademark and adds the words “capital” and “ltd”. The word “capital” is commonly linked to financial services and the abbreviation “ltd” could be considered to refer to a company linked to the Complainant. Therefore, the Panel finds that the Disputed Domain Name carries a risk of implied affiliation with the Complainant and cannot constitute fair use.
Beyond looking at the domain name and the nature of any additional terms appended to it, UDRP panels assess whether the overall facts and circumstances of the case, such as the content of the website linked to the disputed domain name and the absence of a response, support a fair use or not (see sections 2.5.2 and 2.5.3 of the WIPO Overview 3.0).
Based on the evidence provided by the Complainant, the Panel observes that the website linked to the Disputed Domain Name seemed to offer cryptocurrency services, which could be related to the Complainant’s financial services. Moreover, this website uses design elements which are confusingly similar to the Complainant’s corporate image, such as the specific dark red/burgundy color used on the Complainant’s website. Finally, according to the Complainant’s evidence, the company information mentioned on the website linked to Disputed Domain Name appears to be false.
In the Panel’s view, this does not amount to a legitimate noncommercial or fair use of the Disputed Domain Name.
The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.
Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see section 4.2 of the WIPO Overview 3.0 and, for example, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a 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 the website or location or of a product or service on the website or location.
In the present case, the Panel finds that it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name.
The Complainant provides evidence of various trademarks registered years before the registration of the Disputed Domain Name, including in the United Kingdom where the Respondent seems to be located.
The Disputed Domain Name and related website includes the Complainant’s distinctive BAWAG trademark in its entirety. The website linked to the Disputed Domain Name also uses the dark red/burgundy color, which is part of the Complainant’s corporate image. As a result, the Panel finds that it is apparent that the Respondent had the Complainant in mind when registering the Disputed Domain Name.
In the Panel’s view, the Respondent’s awareness of the Complainant’s trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of a telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks).
As mentioned above, the website linked to the Disputed Domain Name offers financial services and its layout suggests a link with the Complainant. In the Panel’s view, this indicates that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark.
Moreover, the Panel observes that the Respondent’s bad faith conduct was confirmed in a previous UDRP case involving the Complainant and related to the domain name <bawagcapital.com> (see BAWAG P.S.K. Bank für Arbeit und Wirtschaft und Österreichische Postsparkasse Aktiengesellschaft v. katie Mary Ozhuwan, WIPO Case No. D2021-0153). UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. This may include a scenario where a respondent, on separate occasions, has registered trademark-abusive domain names, even where directed at the same brand owner (see section 3.1.2 of the WIPO Overview 3.0).
By failing to respond to the Complaint, the Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.
Therefore, the Panel finds that, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element of the Policy.
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 <bawagcapitalltd.com> be transferred to the Complainant.
Flip Jan Claude Petillion
Date: August 24, 2021