The Complainant is Belfius Bank S.A. / Belfius Bank N.V., Belgium, internally-represented.
The Respondent is Not disclosed Not disclosed, Belgium. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2020. On December 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 4, 2020, 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. 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 December 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2021. The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on January 11, 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, Belfius Banque S.A. / Belfius Bank NV, is a Belgian bank and financial services provider operating mainly in Belgium. The Complainant is wholly owned by the Belgian state. The Complainant has over 650 agencies in Belgium with more than 5,000 employees and is well-known for providing a wide range of banking, insurance, and financial services. According to the Complainant, its activities are focused on the Belgian territory, nevertheless, its trademark is also shown outside Belgium as it sponsors several national sports teams and sports events. The Complainant is the owner of the trademark BELFIUS across various jurisdictions. These registrations include: - European Union Trade Mark BELFIUS with registration No. 010581205, registered on May 24, 2012, in International classes 9, 16, 35, 36, 41, and 45; - Benelux trademark BELFIUS with registration No. 914650, registered on May 10, 2012, in International classes 9, 16, 35, 36, 41, and 45; - Benelux trademark BELFIUS with registration No. 915963, registered on June 11, 2012, in International classes 9, 16, 35, 36, 41, and 45; - Benelux trademark BELFIUS with registration No. 915962, registered on June 11, 2012, in International classes 9, 16, 35, 36, 41, and 45. Additionally, the Complainant is also the registrant of the domain names The Complainant is also the registrant of the domain name The disputed domain name A cease and desist letter was sent to the Respondent by email on October 30, 2020, to request the transfer of the disputed domain name to the Complainant. It remained unanswered. 5. Parties’ Contentions A. Complainant The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows: (a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant contends that the generic Top-Level Domain (“gTLD”) “.com” may be disregarded for the purpose of determining whether the disputed domain name is identical or confusingly similar to the Complainant’s BELFIUS trademark. Relying on Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505, the Complainant further argues that by incorporating the Complainant’s BELFIUS trademark in its entirety, the disputed domain name is confusingly similar to the Complainant’s trademark. The Complainant further argues that the incorporation of a well-known trademark into a domain name is sufficient ground for finding a likelihood of confusion (Yellow Corporation v. MIC,WIPO Case No. D2003-0748; Playboy Entreprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561). Additionally, the Complainant claims that the mere adjunction of the generic Dutch term “diensten” does not negate the confusingly similarity between the disputed domain name and the Complainant’s trademark. Taken in combination with the Complainant’s trademark, the term “diensten”, which translates as “services”, strengthens the association with the Complainant as it suggests the possibility to sign in for services offered by the Complainant. (b) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant further submits that the Respondent registered the disputed domain name on August 20, 2020, which is after the Complainant’s registration of its BELFIUS trademark. The Complainant also states that it has never licensed or otherwise permitted the Respondent to use the Complainant’s trademark or to register any domain name including the Complainant’s trademark. There is no relationship with the Complainant, nor has the Respondent trademark rights in the term “belfius”. Furthermore, the Respondent does not appear to have used the disputed domain name for any legitimate noncommercial purpose. Nor are there any indications of demonstrable preparation to use the disputed domain name, accordingly, it is being passively held. The Complainant alleges that such passive holding is evidence of a lack of rights and legitimate interests in the disputed domain name (see American Home Products Corporation v. Ben Malgioglio,WIPO Case No. D2000-1602; Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci,WIPO Case No. D2000-1244; Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209). (c) The disputed domain name was registered and is being used in bad faith. The Complainant submits that the Respondent registered the disputed domain name on August 22, 2020, which is after the Complainant filed for registration of its BELFIUS trademark in 2012. The Complainant also notes that it has established a substantial presence on the Internet and that the Respondent would have been aware of the Complainant by virtue of a good faith search. The Complainant therefore contends that, at the time of registration of the disputed domain name, the Respondent knew or should have been aware of the existence of the Complainant’s trademarks. Such awareness of the Complainant’s trademark suggests bad faith (see LEGO Juris A/S v. Domains by Proxy, Inc., DomainsByProxy.com / DBA David Inc.,WIPO Case No. D2011-1839; Georgia-Pacific Consumer Products LP v. Whois Privacy Services Pty Ltd. / Conquistador Sat,WIPO Case No. D2013-1458). The Complainant further contends that the disputed domain name has been registered and is being used in bad faith for the following reason: the term “belfius” is a coined term and the mere coincidence of an identical (fictional) name in the disputed domain name cannot be accepted. The adjunction of the term “dienst” proves that the Respondent was aware of the Complainant. As for the use of the disputed domain name, the evidence shows that the Respondent clearly does not use or does not seem to have the intention to use the disputed domain name for purposes of bona fide offering of goods and services over the Internet. The security warning displayed by the Internet browser seems to indicate illicit activities, no other content is displayed on the website. In addition, the Complainant refers to a previously rendered UDRP decisions (see, Inter-IKEA v. Polanski,WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh,WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003) which found that the passive holding of a domain name may amount to bad faith when it is difficult to imagine any plausible future active use of the domain name by the respondent that would be legitimate. Furthermore, the Complainant states that the concealment of the Respondent’s identity is an indication of bad faith as it is inspired solely to make it difficult for the Complainant to protect its trademark rights. The Complainant also argues that the Respondent has ignored the Complainant’s attempt to resolve this dispute outside of this administrative proceeding. Relying on Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/ka Country Walk a/k/a Cupcake Party,WIPO Case No. D2000-0330, the Complainant asserts that failure to respond to a cease-and-desist letter may be considered as a factor in finding bad faith registration and use of a domain name. Finally, the Complainant also argues that the mere passive holding of the disputed domain name, in combination with the concealment of the Respondent identity may be considered bad faith use of the disputed domain name (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s). First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights in BELFIUS. Secondly, this Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.info” to the disputed domain name is viewed as a standard registration requirement and as such is to be disregarded. Thirdly, the disputed domain name fully incorporates the Complainant’s BELFIUS trademark in which the Complainant has exclusive rights. Fourthly, this Panel finds that the addition of a hyphen and the term “diensten” does not constitute an element so as to avoid confusing similarity for purposes of the Policy. See in this regard section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), stating that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity. On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s BELFIUS trademark. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads: “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (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 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.” This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name. It is a well-established view of UDRP panels, with which this Panel agrees, that a prima facie case advanced by the complainant is generally sufficient for the complainant to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that the respondent does not submit any evidence to the contrary (AGUAS DE CABREIROA, S.A.U. v. Hello Domain,WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp.,WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson,WIPO Case No. D2016-1338). In the present case, taking into consideration the Respondent’s default, this Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, in view of the circumstances of this case, including the following factors: - there is no evidence that the Respondent has been licensed or authorized to use the disputed domain name by the Complainant; - there is no evidence that the Respondent has been commonly known by the disputed domain name; - there is no evidence that legitimate noncommercial or fair use of the disputed domain name has taken place. For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads: “For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith”. With regard to the Respondent’s registration of the disputed domain name, this Panel believes bad faith may be found where the Respondent knew or should have known of the registration and use of the BELFIUS trademark prior to registering the disputed domain name. Such is true in the present case in which the Respondent registered the disputed domain name after the Complainant obtained its trademark registrations for the BELFIUS trademark. The Complainant’s presence on the Internet makes it disingenuous for the Respondent to claim that he was unaware that the registration of the disputed domain name would violate the Complainant’s rights. Additionally, since that the Complainant’s trademark is an invented word with no meaning in any language apart from in relation to the Complainant’s service and that the Complainant is well-known for its financial services, it cannot be a mere coincidence that the Respondent has chosen the disputed domain name. As to the current use of the disputed domain name, it does not resolve to an active website at the time of the Complaint and the Decision. However, passive holding of a domain name can, in certain circumstances, constitute a domain name being used in bad faith. Considering the failure of the Respondent to submit a response, the Respondent’s concealing its identity and the implausibility of any good faith use to which the disputed domain name may be put, the Panel concludes that the Complainant has proven bad faith under the passive holding doctrine (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). In light of the foregoing, this Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith under 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 Benoit Van Asbroeck
Sole Panelist
Date: January 25, 2021
Full & Egal Universal Law Academy