WIPO Domain Name Decision D2021-4221 for bit-panda.com, bitpada.com, bitpand.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Bitpanda GmbH v. Daniel Hall Case No. D2021-4221 1. The Parties

The Complainant is Bitpanda GmbH, Austria, represented by Schonherr Rechtsanwalte GmbH, Austria.

The Respondent is Daniel Hall, United Kingdom.

2. The Domain Names and Registrar

The disputed domain names , and are registered with

PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2021. On December 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 28, 2022, 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 30, 2022.

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 4, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 24, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 31, 2022.

The Center appointed Luca Barbero as the sole panelist in this matter on February 11, 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.

4. Factual Background

The Complainant is a digital assets service provider registered with the Austrian Financial Market Authority (FMA) under FM-GwG and with the French Autorité des marchés financiers (AMF) under PACTE law. Since 2019, the Complainant’s subsidiary Bitpanda Payments GmbH holds a PSD2 license and another subsidiary has a MiFID II license since 2021.

The Complainant operates the website “www.bitpanda.com”, a trading platform for digital assets such as cryptocurrencies, precious metals, equities and ETFs, serving both private and business customers.

The Complainant was founded under the name Coinimal GmbH in 2014 and was rebranded to BITPANDA in June 2016. The Complainant counts more than 600 team members and 3 million users and currently has offices in Vienna, Barcelona, Berlin, Krakow, London, Madrid, Milan and Paris. The Complainant has received many industry and media awards since 2016.

The Complainant is the owner of several trademark registrations for BITPANDA, including the following, as per trademark certificates submitted as Annexes K to P to the Complaint:

- European Union trademark registration No. 017496894 for BITPANDA (word mark), filed on November 17, 2017 and registered on March 12, 2018, in international classes 9, 36 and 42;

- United Kingdom trademark registration No. UK00917496894 for BITPANDA (word mark), filed on November 17, 2017 and registered on March 12, 2018, in international classes 9, 36 and 42;

- European Union trademark registration No. 017496928 for BITPANDA (figurative mark), filed on November 17, 2017 and registered on March 12, 2018, in international classes 9, 36 and 42;

- United Kingdom trademark registration No. UK00917496928 for BITPANDA figurative mark, filed on November 17, 2017 and registered on March 12, 2018, in international classes 9, 36 and 42;

- United Kingdom trademark registration No. UK00915560006 for BITPANDA (word mark), filed on June 20, 2016 and registered on October 14, 2016, in international classes 35 and 36;

- United Kingdom trademark registration No. UK00915560022 for BITPANDA (figurative mark), filed on June 20, 2016 and registered on October 14, 2016, in international classes 35 and 36.

The Complainant is also the owner, amongst others, of the domain name , which was registered on June 5, 2014 and is used by the Complainant to promote its services under the trademark BITPANDA.

The disputed domain names and were all registered on January 16, 2017. The disputed domain name does not currently resolve to an active website, whilst the disputed domain names and are pointed to the website “https://advcash.com/en”, a platform providing payment tools and enabling transactions in various currencies, including cryptocurrencies.

5. Parties’ Contentions A. Complainant

The Complainant contends that the disputed domain names are confusingly similar to the trademark BITPANDA in which the Complainant has rights as they reproduce the trademark in its entirety with the mere addition of a hyphen between the words “bit” and “panda” in the case of the disputed domain name , with the deletion of the letter “a” in the case of the disputed domain name and of the letter “n” in the case of the disputed domain name .

With reference to rights or legitimate interests in respect of the disputed domain names, the Complainant states that the Respondent is not commonly known by the disputed domain names, does not own any trademark rights for BITPANDA and has in no way been authorized by the Complainant to use the Complainant’s trademark BITPANDA in a domain name. The Complainant further states that, in light of the current use of the disputed domain names, the Respondent has no legitimate interests in them.

With reference to circumstances evidencing bad faith, the Complainant indicates that the Respondent deliberately registered the disputed domain names, incorporating the trademark BITPANDA or a misspelling thereof, with the intention of diverting the Complainant’s potential customers for commercial gain, thus capitalizing on the Complainant’s reputation whilst preventing the Complainant to reflect its trademark in corresponding domain names.

The Complainant emphasizes that, since the Respondent is located in the United Kingdom, where the Complainant’s trademarks are registered, and considering that BITPANDA is a unique fictional name, the Respondent must have been well aware of the Complainant at the time or registering the three disputed domain names, especially considering that, whilst the disputed domain name is currently being passively held, the other two disputed domain names and were redirected to the website of a competitor of the Complainant where identical services (namely the exchange of digital assets) were promoted, thus causing direct economic harm to the Complainant and capitalizing on the Complainant’s goodwill and world renown.

The Complainant underlines that it is not the first time that the Respondent engages in a pattern similar or almost identical of conduct, as he registered another domain name incorporating the Complainant’s trademark, , which was subject to a dispute proceeding ended in favor of the Complainant (DRS Case D00023655).

B. Respondent

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

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain names registered by the Respondent are 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 disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights over the trademark BITPANDA based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as Annexes K to P to the Complaint.

As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity 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 the case at hand, the Complainant’s trademark BITPANDA is entirely reproduced in the disputed domain name with the mere addition of a hyphen between the words “bit” and “panda”, whilst the disputed domain names and include obvious misspellings consisting of a deletion of a letter from the Complainant’s trademark, specifically the letter “a” in the case of the disputed domain name and the letter “n” in the case of the disputed domain name . All three disputed domain names are registered in the Top-Level Domain “.com”, which is commonly disregarded under the first element confusing similarity test (section 1.11 of the WIPO Overview 3.0).

The Panel finds that the mere addition of a hyphen between the words “bit” and “panda” and the deletion of the letters “a” and “n” from the trademark BITPANDA do not prevent the confusing similarity. Indeed, as stated in Section 1.9 of the WIPO Overview of WIPO Overview 3.0, “a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”.

Therefore, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent may establish a right or legitimate interest in the disputed domain names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names.

The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks or to register the disputed domain names.

Moreover, there is no element from which the Panel could infer a Respondent’s right over the disputed domain names, or that the Respondent, whose name disclosed in the Registrar’s WhoIs records for the disputed domain name is Daniel Hall, might be commonly known by the disputed domain names.

As mentioned above, the disputed domain names and are currently redirecting to a platform providing payment tools for online transactions, thus competing with the services provided by the Complainant under the trademark BITPANDA at the almost identical domain name . The Panel finds that such use does not amount to a bona fide offering of goods or services or a legitimate non-commercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.

The Panel also notes that the disputed domain name , is passively held. In view of the Respondent’s default, the Panel shares the view held in Teachers Insurance and Annuity Association of America v. Wreaks Communications Group,WIPO Case No. D2006-0483, where the Panel found that “Absent some contrary evidence from the Respondent, passive holding of a Domain Name does not constitute “legitimate non-commercial or fair use”

Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain names according to paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain names were registered and are being used by the Respondent in bad faith.

As to bad faith at the time of the registration, the Panel notes that, in light of the prior registration and use of the trademark BITPANDA, used by the Complainant to identify its services in the trade of digital assets via the website “www.bitpanda.com”, the Respondent was or could have been aware of the Complainant’s trademark when it registered the disputed domain names.

Furthermore, in light of the fact that the disputed domain names differ from the Complainant’s domain name for only one character, namely the addition of a hyphen and the deletion of one letter, as detailed above, and considering that two of the disputed domain names have been redirected to a website of a Complainant’s competitor, the Panel finds that the Respondent indeed registered the disputed domain names to target the Complainant and its trademark.

As to bad faith use, the Panel finds that, by pointing the disputed domain names and to a website providing payment tools for online transactions, thus competing with the services provided by the Complainant under the trademark BITPANDA, the Respondent has intentionally attempted to attract, likely for commercial gain, Internet users to the website to which the disputed domain names resolve, by causing a likelihood of confusion with the trademark BITPANDA as to the source, sponsorship, affiliation or endorsement of such website and the services promoted therein, according to paragraph 4(b)(iv) of the Policy.

The Panel also finds that the above-described use of the disputed domain names and is apt to disrupt the Complainant’s business. The disputed domain name is currently not pointed to an active website and is thus passively held. As also established in a number of prior cases, the concept of “bad faith use” in paragraph 4(b) of the Policy includes not only positive action but also passive holding; see the landmark case Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.

In the case at hand, in view of i) the distinctiveness and reputation of the Complainant’s trademark BITPANDA; ii) the Respondent’s registration of a domain name substantially identical to the Complainant’s prior trademark; iii) the absence of any documented rights or legitimate interests of the Respondent in the disputed domain name; iv) the Respondent’s failure to respond to the Complaint; and v) the implausibility of any good faith use to which the disputed domain name may be put, the Panel finds that even the current passive holding of the disputed domain name by the Respondent does not prevent a finding of bad faith registration and use. See Section 3.3 of WIPO Overview 3.0.

In addition, the Panel holds paragraph 4(b)(ii) of the Policy applicable in this case as the Respondent has registered the disputed domain names in order to prevent the Complainant from reflecting its trademark in corresponding domain names and has engaged in a pattern of such conduct since he registered at least four domain names identical or confusingly similar to the Complainant’s trademark (the fourth being , subject of the DRS Case D00023655). See Section 3.1.2 of the WIPO Overview 3.0: “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”.

Furthermore, the Panel notes that typosquatting constitutes an additional evidence of bad faith (see Barry D. Sears, Ph.D. v. YY / Yi Yanlin,WIPO Case No. D2007-0286, National Association of Professional Baseball Leagues v. Zuccarini,WIPO Case No. D2002-1011; and Bell Gardens Bicycle Club dba The Bicycle Casino (“TBC”) v. Craig Miller,WIPO Case No. D2006-0536 (stating that “in the present case, in the absence of any Response, the Panel is satisfied that the Respondent has engaged in flagrant typosquatting which is exactly the sort of abusive conduct to which the Policy is directed”).

Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and is using the disputed domain names in bad faith according to paragraph 4(a)(iii) 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 names, , and be transferred to the Complainant.

Luca Barbero
Sole Panelist
Date: February 28, 2022

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