WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bitpanda GmbH v. Privacy service provided by Withheld for Privacy ehf / Johan George
Case No. D2021-1889
1. The Parties
The Complainant is Bitpanda GmbH, Austria, represented by Plasseraud IP, France.
The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Johan George, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <bitpandainvestment.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 June 16, 2021. On June 16, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 16, 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 18, 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 23, 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 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2021.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on July 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 Complainant is an Austrian Fintech company established on September 12, 2014. Since its incorporation it has been running an online platform enabling its users to buy and sell digital assets like Bitcoin or Ethereum and commodities such as gold. Details are set out in Annex 6 to the Complaint.
The platform was initially named COINIMAL but in June 2016 it was rebranded as BITPANDA, its current trading name.
The platform is accessible through the domain name <bitpanda.com>. Investors, in many countries from Europe and Middle East, can use it as is shown by Annexes 8 and 9 to the Complaint. With over 400 employees and more than 2.5 million clients as can be seen from Annex 9 it is a leader in the trade of cryptocurrencies.
Evidence of its success is demonstrated by the fact that a fundraising of USD170 million reached a valuation of USD1.2 billion. For the first few months of 2021 it expects to achieve revenue of over USD100 million. This can be seen by Annexes 10 and 11 to the Complaint.
At Annex 12 to the Complaint are samples of awards achieved by the Complainant including the Global CFO Excellence Award-Finance leader of the year for2020. These awards help establish the commercial success of the Complainant and the fact that it is well-known within the relevant market sector, the field of financial technology.
The Complainant points out that its website “www.bitpanda.com” generates much more traffic than the websites of its competitors. According to the “www.alexa.com”, website it is ranked in 4938th position among the most visited websites in the world.
The Complainant refers to press articles in many different countries that relate to it and its trade mark BITPANDA. This can be seen from Annexes 7, 10 and 16 to the Complaint. The Complainant also advertises extensively including on billboards in cities such as London.
In summary the Complainant submits that whilst using the mark BITPANDA it has become a well-known and leading online platform in the field of trading cryptocurrencies and commodities, and that further to the considerable time, effort and money spent in advertising, promoting, and technology developments, it benefits from a considerable goodwill in the mark.
The Complainant exhibits at Annex 24 to the Complainant evidence of trade mark registrations for BITPANDA. These include:
EU registration No.15500006 dated June 20, 2016 in classes 35 and 36 BITPANDA;
UK registration No.UK00915500006 dated June 20, 2016 in classes 35 and 36 BITPANDA;
EU registration No.015560022 dated June 20, 2016 in classes 35 and 36 BITPANDA plus device;
EU registration No.17496894 dated November 17, 2017 in classes 9, 36 and 42 BITPANDA;
International registration No.1383484 dated November 21, 2017 in classes 9, 36 and 42 BITPANDA;
International registration No.1386095 dated November 23, 2017 in classes 9,32 and 42 BITPANDA plus device.
All of these registrations precede the date of registration of the disputed domain name on January 16, 2021.
The Respondent is an individual, Johan George, with an address given in Nigeria. No Response has been filed by the Respondent.
Having considered the above evidence adduced by the Complainant and in the absence of a Response the Panel finds it to be true and determines the Complaint accordingly.
5. Parties’ Contentions
The Complainant submits:
i. On the evidence the disputed domain name is confusingly similar to the trade mark BITPANDA in which it owns registered rights;
ii. On the evidence the Respondent has no rights or legitimate interests in respect of the disputed domain name;
iii. On the evidence the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
On the basis of the evidence of the trade mark registrations for the mark BITPANDA set out in section 4 above the Panel has found that the Complainant owns registered rights in many countries of the world. As a result of its use of the mark it has also established goodwill in the mark.
The Complainant submits that the disputed domain <bitpandainvestment.com> consists of an exact reproduction of the trade mark “BITPANDA” followed by the descriptive term “investment” and the generic Top-Level Domain (“gTLD”), “.com”.
It is well-established, for example by WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7,that where a domain name incorporates the entirety of a trade mark or where at least a dominant feature of the relevant mark is recognizable in the domain name it will normally be considered as confusingly similar to that mark. In the Panel’s view that is the position here. The mark BITPANDA is incorporated in the disputed domain name in its entirety.
The use of the descriptive term “investment” in the Panel’s view does not detract from a finding of confusing similarity since, as put by the Complainant, it is a mere dictionary word. This view is supported by three earlier Panel decisions cited by the Complainant in which the disputed domain name incorporated the term “investment”.
It is also well-established that the gTLD, in this case “.com”, is a standard registration requirement and should be disregarded in considering confusing similarity.
It follows and the Panel finds that the disputed domain name is confusingly similar to the trade mark BITPANDA in which the Complainant has registered rights within paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant submits that it has never authorized the Respondent to register and /or use, including as a domain name, the mark BITPANDA.
None of the conditions which might evidence rights or legitimate interest within paragraph 4 (c) of the Policy have been established by the Respondent. In particular:
i. The disputed domain name has not been used in connection with a bona fide offering of goods or services. To the contrary the Respondent, on the evidence adduced by the Complainant, has been using it to fraudulently impersonate the Complainant.
This is evidenced at Annexes19 and 20 to the Complaint from which it can be seen that the Respondent’s website is entitled BITAPANDA and utilizes the get-up and typeface used by the Complainant to depict its trade mark. The website is dedicated to the same business activity as that of the Complainant i.e. investing and trading cryptocurrencies. Reference is made to the trading history of the Complainant. It refers to the names and identities of the co-founders of the Complainant and mentions the genuine address of the Complainant.
ii. There is no evidence that the Respondent is commonly known by the disputed domain name. Rather the Respondent is an individual, Mr. Johan George, with the address in Nigeria. A search conducted by the Complainant shows no evidence that he owns any trade mark.
It is well-established, for example by WIPO Overview 3.0, section 2.13 that the use of a domain name for illegal activity such as fraud, identity theft and impersonation can never confer rights or legitimate interest on a Respondent.
In the Panel’s view that is the position here based on the above evidence. In the absence of a Response and evidence to the contrary the Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name within paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
To support its submission that the disputed domain name was registered in bad faith the Complainant relies upon the following evidence:
i. The Complainant’s use of BITPANDA predates the registration of the disputed domain name by several years;
ii. The mark BITPANDA is well-known with a substantial international reputation and goodwill;
iii. The mark BITPANDA is highly distinctive so that its use on the Respondent’s website cannot be due to a mere coincidence i.e. that its registration was intentional;
iv. The use of BITPANDA in combination with “investment” is a clear and direct reference to the Complainant and its activities;
v. The content of the Respondent’s website as shown by Annexes 19 and 20 as set out in section 6B above clearly impersonates the Complainant;
vi. The Respondent’s contact details are inaccurate with no exact postal address. The reference to 28 Hilton on Google Maps refers to a hotel. The phone number given relates to that of an escort girl.
In the Panel’s view the above evidence is sufficient to establish that the Respondent registered the disputed domain name in bad faith having been fully aware of the Complainant’s prior rights and having provided false contact information.
The Complainant submits that, on the evidence of the Respondent’s website and use of the disputed domain name as set out in section 6B above, he is using the domain name to resolve to a website that fraudulently imitates the Complainant’s BITPANDA website. As can be seen at Annexes 19 and 20 it reproduces the Complainant’s trade mark, contact details, history and reproduces pictures of its senior management. This gives, contrary to the fact, the false impression that it is operated by the Complainant or an affiliate.
The evidence of the Respondent’s use of the disputed domain name to access its website is flagrant so that the Registrar and/or search engines and/or web browsers display a warning message from Firefox to Internet users wishing to visit the website. This is shown by annex 22 to the Complaint.
In the Panel’s view there is ample evidence to show that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website, within paragraph 4(b)(iv) of the Policy.
Taking into account the absence of a Response the Panel finds that the disputed domain name was registered and being used in bad faith within paragraph 4(a)(iii) 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, <bitpandainvestment.com> be transferred to the Complainant.
Clive Duncan Thorne
Date: August 12, 2021