The Complainant is Belfius Bank S.A. / Belfius Bank N.V., Belgium, represented internally.
The Respondent is Name Redacted. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2019. On September 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 24, 2019, 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 October 1, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. 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 of the Complaint, and the proceedings commenced on October 16, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 5, 2019. The Respondent did not submit a formal response. The Center notified the commencement of the panel appointment process on November 6, 2019. The Center appointed Peter Burgstaller as the sole panelist in this matter on November 15, 2019. 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. On October 23, 2019, the Center received a communication from the individual indicated to be the registrant of the disputed domain name, informing the Center that he is not the owner of the disputed domain name and that he had filed a criminal claim for identity theft. This individual declared and confirmed not being involved in the present domain name registration at all; rather he himself is victim of the identity theft and he therefore filed a criminal claim to the French police department in Metz under a specified case-number. The Panel is satisfied that the individual indicated to be the registrant was not party to the registration of the disputed domain name and therefore decided to redact the name of the named Respondent, adopting the criterion of the panel in Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted,WIPO Case No. D2009-1788. The Panel has, however, attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this decision shall not be published. 4. Factual Background The Complainant is a major bank as well as a financial services provider and well known in Belgium under its tradename and trademark BELFIUS. The Complainant has registered various trademarks containing the mark BELFIUS including the European Union trademark (word) BELFIUS (Registration No. 010581205) registered on May 24,2012 and the Benelux trademark (word) BELFIUS (Registration No. 914650) registered on January 23, 2012 (Annexes 9 and 10 of the Complaint). Additionally, the Complainant is the registrant of several domain names including (entirely) the trademark BELFIUS, including The disputed domain name was registered by the Respondent on July 22, 2019 (Annex 2 of the Complaint) and is inactive. 5. Parties’ Contentions A. Complainant The Complainant is a renowned Belgian bank and financial services provider with more than 5,000 employees and over 650 agencies. The activities of the Complainant are focused on the Belgian territory. The Complainant’s tradename is BELFIUS which is composed of “BEL” as in Belgium, “FI” as in finance and the English word “US”. The tradename BELFIUS is protected in favor of the Complainant by several registered trademarks, all of them incorporating iterations of the mark BELFIUS. The Complainant moreover is the registrant of the domain name The disputed domain name is at least confusingly similar to the Complainant’s trademark since it entirely incorporates the Complainant’s trademarks BELFIUS; the descriptive and generic word “finance” as well as the generic Top-Level Domain (gTLD), “.com”, cannot negate the confusing similarity. The Respondent has no rights or legitimate interests in respect of the disputed domain name; it is not affiliated with the Complainant in any way and has not been authorized by the Complainant to use or register the disputed domain name The Respondent has registered the disputed domain name in bad faith since at the time of registration of the disputed domain name, the Respondent was clearly aware of the Complainant and its trademarks. Although the Respondent did not use the disputed domain name, passive holding is within the concept of bad faith use since there is no plausible reason for authorized future active usage. B. Respondent On October 23, 2019, the Center received a communication from the individual indicated to be the registrant of the disputed domain name, informing the Center that he neither is the owner nor was party of the registration of the disputed domain name and that he had filed a criminal claim for identity theft. No other person claiming to be the registrant of the disputed domain name filed a response to the Complaint. 6. Discussion and Findings According to paragraph 4(a) of the Policy, the Complainant must prove 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 with respect to 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 The disputed domain name is confusingly similar to the Complainant’s registered wordmark BELFIUS since it entirely contains this trademark. It has long been established under UDRP decisions that where the relevant trademark is recognizable within the disputed domain name the mere addition of other terms whether descriptive, geographical, pejorative, meaningless, or otherwise will not prevent a finding of confusing similarity under the first element of the Policy (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Finally, it has also long been held that suffixes such as a country-code or gTLD cannot typically negate confusing similarity where it otherwise exists, as it does in the present case. The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0). In the present case on October 23, 2019, the Center received a communication from the individual indicated to be the registrant of the disputed domain name, informing the Center that he is not the owner of the disputed domain name and that he had filed a criminal claim for identity theft; no other person claiming to be the registrant of the disputed domain name filed a response to the Complaint. Panels have categorically held that the use of a domain name for illegal activity (e.g. identity theft and other types of fraud) can never confer rights or legitimate interests on a respondent (section 2.13 of the WIPO Overview 3.0). Moreover, considering all of the evidence in the Complaint (especially with regard to the Annexes presented by the Complainant) and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademark BELFIUS in a domain name or in any other manner lead the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant. C. Registered and Used in Bad Faith Panels have held that the use of a domain name for purposes other than to host a website may also constitute bad faith; such purposes include especially identity theft (section 3.4 of the WIPO Overview 3.0). Following the communication from the individual indicated to be the registrant of the disputed domain name, received by the Center on October 23, 2019, informing the Center that he neither is the owner nor was party of the registration of the disputed domain name and that he had filed a criminal claim for identity theft and moreover that no other person claiming to be the registrant of the disputed domain name filed a response to the Complaint lead this Panel to the conclusion that the present case constitutes bad faith registration especially because of identity theft. Besides that, this Panel is convinced that it is inconceivable that the Respondent has registered the disputed domain name without knowledge of the Complainant’s rights; this is especially supported by the fact that the Respondent used a suffix to the Complainant’s trademark which refers to the Complainant’s main business (“finance”). The usage of the suffix “finance” in connection with the mark BELFIUS rather strengthen the impression that the disputed domain name is in some way connected to the Complainant or at least “free ride” on the reputation of the Complainant’s name and trademark BELFIUS, since it refers to the Complainant’s main business. Although the disputed domain name currently did not resolve to an active website and is not being actively used, previous panels have found that bad faith use under paragraph 4(a)(iii) does not necessarily require a positive act on the part of the respondent - inaction is within the concept or paragraph 4(a)(iii) (see especially Telstra Corp. v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Ladbroke Group Plc v Sonoma International LDC,WIPO Case No. D2002-0131; Philip Morris USA Inc. v Domain Admin,WIPO Case No. D2017-2452), especially when putting emphasis on the following facts: - the communication received on October 23, 2019 from the individual indicated to be the registrant of the disputed domain name, informing the Center that he neither is the owner nor was party of the registration of the disputed domain name and that he had filed a criminal claim for identity theft; - no other person claiming to be the registrant of the disputed domain name showed any evidence of any good faith use with regard to the disputed domain name; - the disputed domain name incorporates the Complainant’s trademark BELFIUS, and is thus suited to divert or mislead potential web users from the website they are actually trying to visit (Complainant’s site); and - there is no plausible reason for authorized future active usage. Taking all these facts and evidence into consideration this Panel finds that the disputed domain name has been registered and is being used in bad faith under 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 name Peter Burgstaller
Sole Panelist
Date November 29, 2019
Full & Egal Universal Law Academy