Complainant is Belfius Bank S.A. / Belfius Bank N.V., Belgium, internally represented.
Respondent is Contact Privacy Inc. Customer 1246270404, Canada / Belfius Banque, Benin. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 17, 2020. On June 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 18, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on June 22, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 23, 2020. The Registrar also indicated that the language of the Registration Agreement was French. The Center sent an email communication in English and French, to the Parties on June 22, 2020, inviting Complainant to provide sufficient evidence of an agreement between the Parties for English to be the language of the proceeding, a Complaint translated into French, or a request for English to be the language of the proceeding, and inviting Respondent to comment on the language of the proceeding. Complainant filed a request for English to be the language of the proceeding on June 23, 2020. Respondent did not comment on the language of the proceeding. Using its discretion, the Panel has chosen to render its decision in English, since there is no evidence that prejudice to Respondent would result. Respondent neither weighed in on the language issue, nor responded to the allegations in the Complaint. 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 Respondent in English and French of the Complaint, and the proceedings commenced on June 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 23, 2020. The Center appointed Robert A. Badgley as the sole panelist in this matter on August 3, 2020. 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 Complainant is a state-owned bank and financial services firm in Belgium. Complainant holds various registered trademarks for BELFIUS, including European Union Trade Mark Registration No. 010581205, registered on May 24, 2012. Complainant also maintains a robust Internet presence, with its main website located at “www.belfius.be”. According to Complainant, the mark BELFIUS does not correspond to any dictionary term, but instead is made up of a contraction of “Belgium,” “finance,” and “us”. The Domain Name was registered on January 15, 2020. The Domain Name does not resolve to an active website. Respondent’s identity was shielded behind a privacy service. Complainant sent a cease-and-desist letter to the Registrar on January 28, 2020, and the next day the Registrar replied that it could not become involved in a trademark-related dispute between the Parties. Complainant asserts that, after it filed the Complaint in this proceeding, the Registrar informed the Center that Respondent’s name was “Belfius Banque”. According to Complainant, this is a false name. Complainant also asserts that Respondent’s email address “is linked to a website offering financial services located in Paris”. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel concludes that Complainant has rights in the mark BELFIUS through registration and use demonstrated in the record. The Panel also finds that the Domain Name is confusingly similar to the mark. The Domain Name fully incorporates the fanciful BELFIUS mark, and adds the dictionary term “banque” (which is French for “bank”). The mark is clearly recognizable within the Domain Name, and is the dominant element of the Domain Name. Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are making a legitimate noncommercial 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. The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not come forward to explain or justify any bona fides it might have vis-à-vis the Domain Name. Because the mark BELFIUS does not correspond to any dictionary word, and because the Domain Name adds the word “banque” – which reflects Complainant’s core business activity – the Panel concludes that Respondent has targeted Complainant’s trademark. The record reveals no legitimate reason for Respondent to have registered this Domain Name. Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or (ii) that 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 Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel concludes that Respondent registered and used the Domain Name in bad faith. The Panel incorporates its finding in the previous section that Respondent, on this record, was clearly aware of Complainant’s fanciful BELFIUS mark when registering the Domain Name. The Panel concludes that Respondent’s passive holding of the Domain Name, which features a fanciful and established trademark plus a word that describes the services offered by Complainant under that mark, constitutes bad faith use under the Policy. The Panel notes further that Respondent has concealed its identity and/or provided false contact information. Under these circumstances, the Panel is comfortable applying the basic tenets of the decision in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (“Telstra”). In that case, the panel found passive holding to constitute bad faith use under circumstances not dissimilar to those here, such that it was inconceivable that the respondent could have anything other than a bad faith motive vis-à-vis the domain name. Although Telstra involved a trademark probably more famous to the one at issue here, Telstra can be applied in cases such as this one. Here, the mark is fanciful and the descriptive word added to the mark in the Domain Name which makes it clear that Respondent was targeting Complainant and its mark. Complainant has established Policy paragraph 4(a)(iii). 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 Domain Name Robert A. Badgley
Sole Panelist
Date: August 8, 2020
Full & Egal Universal Law Academy