The Complainant is Belfius Banque S.A. / Belfius Bank N.V. of Brussels, Belgium, represented by Kirkpatrick S.A., Belgium.
The Respondent is linyanxiao of Guangzhou, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with 22net, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 19, 2016. On May 20, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 23, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On May 24, 2016, the Center sent an email communication to the parties in both Chinese and English. On May 25, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
The Center verified that the 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 in both Chinese and English of the Complaint, and the proceeding commenced on May 30, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 19, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 20, 2016.
The Center appointed Matthew Kennedy as the sole panelist in this matter on June 24, 2016. 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 Belgian bank. The Complainant changed its name from Dexia to its current name in March 2012. "Belfius" is an invented word composed of "Bel" as in Belgium, "fi" as in finance and the English word "us". The Complainant owns several BELFIUS trademark registrations, including Community registration no. 010581205 and Benelux registration no. 914650, both registered in 2012 in respect of goods and services in multiple classes, including banking business services in class 36. The Complainant is the registrant of the domain name that resolves to its official website where it offers banking and insurance services. The Complainant is also the registrant of many other domain names that include the word "belfius" and redirect to its official website.
The Respondent is the registrant of the disputed domain name, which was registered on August 3, 2014. According to the WhoIs database, the Respondent has registered 626 other domain names with the same contact email address as the disputed domain name, while the Respondent's name is associated with 1,074 other domain names with a different contact email address. The disputed domain name resolves to a website that indicates that the disputed domain name is for sale and that contains a hyperlink to another website where it is possible to buy the disputed domain name after making an offer. Due to the fact that the Respondent's address in the Registrar's WhoIs is incomplete, the Written Notice of the Complaint could not be delivered by courier. 5. Parties' Contentions A. Complainant
The Complainant submits that the disputed domain name is identical to the Complainant's company name in Dutch and confusingly similar to its BELFIUS trademarks. The generic word "bank" refers to the Complainant's main activity and therefore does not alter the distinctive character of the disputed domain name. On the contrary, it reinforces the likelihood of confusion and misleads the consumer to believe that there is a link between the disputed domain name and the Complainant.
The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant's BELFIUS trademark registrations predate the registration of the disputed domain name. The Respondent is in no way associated with the Complainant. The Complainant has not licensed, approved or in any way consented to the Respondent's registration and use of the trademark in the disputed domain name. The Respondent does not seem to carry out any banking activity. The disputed domain name resolves to a website that offers the disputed domain name for sale.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Respondent must have had prior knowledge of the Complainant's trademark rights at the time it registered the disputed domain name because the disputed domain name combines the Complainant's trademark and main activity. The Respondent only uses the disputed domain name in connection with a website offering it for sale. The Respondent has a very large number of domain name registrations in its name and has been condemned several times under the UDRP for bad faith use and registration of domain names. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
Paragraph 11(a) of the Rules provides that "unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding." The Registrar confirmed that the Registration Agreement for the disputed domain name is in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain name resolves to a website in English and Chinese, that the website is linked to another website where the disputed domain name can be purchased that is also in English, that the Respondent understands English and that the translation of documents into Chinese would create undue delay and substantial expense. The Respondent did not comment on the language request.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293.
The Panel observes that the Complaint in this proceeding was filed in English. The website to which the disputed domain name resolves is in both English and Chinese, from which it is reasonable to conclude that the Respondent understands both languages. Further, the Respondent has not expressed any wish to respond to the Complaint or otherwise participate in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. 6.2 Analysis and Findings
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(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. A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Complainant has rights in registered trademarks consisting of the word BELFIUS.
The disputed domain name incorporates the Complainant's BELFIUS trademark in its entirety and two additional elements. One additional element is the word "bank" but that is merely a dictionary word. A dictionary word is not sufficient to dispel the confusing similarity of the disputed domain name to the Complainant's trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110. The other additional element is ".com" but that is merely a generic Top-Level Domain ("gTLD"). A gTLD suffix generally has no capacity to distinguish a domain name from a trademark. See Lego Juris A/S v. Chen Yong,WIPO Case No. D2009-1611; Dr. Ing. H.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080. Consequently, the Complainant's BELFIUS trademark is the dominant and only distinctive element of the disputed domain name.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the Respondent has] acquired no trademark or service mark rights; or
(iii) [the Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel has already found that the disputed domain name is confusingly similar to the Complainant's BELFIUS trademark. The Complainant submits that it has not licensed, approved or in any way consented to the Respondent's registration and use of the trademark in the disputed domain name.
As regards the first and third circumstances set out above, the disputed domain name resolves to a website that does not offer anything for sale besides the disputed domain name itself. That is not a use of the disputed domain name in connection with an offering of goods or services, nor is it a use without intent for commercial gain. It also implies that there have been no preparations to use the disputed domain name in either of those ways. Therefore, the Panel does not consider that the facts of this dispute fall within the first or third circumstances of paragraph 4(c) of the Policy.
As regards the second circumstance, the Respondent's name is "linyanxiao" not "belfiusbank" or even "belfius". There is no evidence indicating that the Respondent has been commonly known by the disputed domain name as envisaged by the second circumstance of paragraph 4(c) of the Policy.
In summary, the Panel considers that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent now has to show that it does have rights or legitimate interests but the Respondent did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. The second of these is as follows:
"(ii) [the Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct."
With respect to registration, the Panel observes that the Respondent registered a domain name that entirely incorporates the Complainant's BELFIUS trademark, which is an invented word. The disputed domain name includes an additional element "bank" that specifically describes the Complainant's business. The disputed domain name minus the gTLD is identical to the Complainant's business name in Dutch. The disputed domain name registration postdates the Complainant's trademark registrations. The Respondent was not authorized by the Complainant to register the disputed domain name. In view of these circumstances, the Panel finds that the Respondent's choice to register a domain name confusingly similar to the Complainant's trademark was deliberate.
With respect to use, the Respondent makes no use of the disputed domain name besides offering it for sale. The Respondent has previously registered and used other domain names in bad faith, notably ten domain names in the ".com" gTLD that combined misspellings of the trademark SALLIE MAE and the word "bank". See Sallie Mae, Inc. v. Whois Agent/ Linyanxiao,WIPO Case No. D2013-1170. See also CVS Pharmacy, Inc. v. Linyanxiao,WIPO Case No. D2015-1839. Given these circumstances, the Panel finds that the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting its mark in a corresponding domain name and that the Respondent has engaged in a pattern of such conduct, as described in paragraph 4(b)(ii) of the Policy.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: July 6, 2016
Full & Egal Universal Law Academy