The Complainant is Belfius Bank S.A., Belgium, and Belfius Bank N.V., Belgium, represented internally.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama, / donnie AGGIE, Netherlands. 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 11, 2020. On December 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 14, 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 the Complainant on December 15, 2020, 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 18, 2020. 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 December 21, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 10, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 11, 2021. The Center appointed Jon Lang as the sole panelist in this matter on January 20, 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 Domain Name The Respondent used a privacy protection service and its true identity was only disclosed after the commencement of these UDRP proceedings. The Complaint is a Belgian bank and financial services provider with over 5,000 employees. The Complainant’s group is the owner of numerous trademarks incorporating iterations of “BELFIUS”, an invented word composed of “Bel” (as in Belgium), “fi” (as in finance) and the English word “us”. These include Community trademark (registration no. 010581205) “BELFIUS”, filed on January 23, 2012, and registered on May 24, 2012, and Benelux trademark (registration no. 914650) also for “BELFIUS”, filed on January 23, 2012, and registered on May 10, 2012 – collectively the “BELFIUS Mark”. Whilst the Complainant’s activities are focused on the Belgian territory, its BELFIUS Mark is also used outside of Belgium, in particular in the course of sponsorship of several national sports teams and sports events. The Complainant is also the owner of several domain names and trade/company names which include the BELFIUS Mark e.g., Cease and desist letters sent to the Respondent remain unanswered. 5. Parties’ Contentions A. Complainant The following is a brief summary of the Complainant’s main assertions. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights The Domain Name comprises the BELFIUS Mark with the addition of the descriptive, non-distinctive generic term (separated by a hypen), “info”, and the generic Top Level Domain (“gTLD”) “.org”. The gTLD is a standard registration requirement and as such is to be disregarded for the purposes of determining whether a domain name is identical or confusingly similar to a trademark. Where a domain name incorporates the entirety of a trademark, or a dominant feature of the mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. When a domain name, comprising a well-known trademark, is registered in combination with another word, the nature of that other word will largely determine confusing similarity. The addition of the word “info” does not lessen the inevitable confusion of the Domain Name with the Complainant’s BELFIUS Mark, but rather strengthens the association with the Complainant and its mark given the obvious reference to the activities of the Complainant. The Domain Name is likely to cause Internet users to believe that the website to which the Domain Name resolves offers services supplied by the Complainant (which of course is not the case). The Respondent has no rights or legitimate interests in respect of the Domain Name The Complainant’s trademark registrations for BELFIUS predate registration of the Domain Name. The Respondent is in no way associated with the Complainant. The Complainant has not licensed, approved or consented to the Respondent’s registration and use of the trademark in the Domain Name. The Respondent does not seem to carry out any activity and thus there is no reason why it should use the BELFIUS Mark in a domain name. In appropriate circumstances, a passive holding of a domain names can be evidence of a lack of rights or legitimate interests. The Domain Name was registered and is being used in bad faith Registration The Community trademark of the Complainant was registered in 2012. The Domain Name was registered on August 12, 2020. The Respondent either knows or should have known of the Complainant’s trademark or exercised wilful blindness in respect thereof. If the Respondent had conducted some good faith searches before registering the Domain Name, it would have readily found reference to the Complainant and appreciated the likelihood of confusion between Domain Name and the Complainant. The Complainant has established a substantial presence on the Internet, registering more than 200 gTLDs and country code Top-Level Domains (“ccTLDs”) worldwide incorporating the BELFIUS Mark, including belfius.com and belfius.be, and thus it is clear that the Respondent had or should have had knowledge of the Complainant’s trademark when it registered the Domain Name. It cannot be a mere coincidence that a coined name (BELFIUS) was used in the Domain Name, and the addition of the word “info” further indicates that the Respondent was aware of the Complainant. It is inconceivable that the Domain Name has been registered without the Complainant and its products in mind. Use The Respondent appears to have done nothing lawful with the website to which the Domain Name resolves, the security warning displayed giving the impression of illicit activities. There is no evidence indicating that the Domain Name is used for any type of legitimate business (or that demonstrable preparations have been made for such use), or that the Respondent has ever been commonly known by the Domain Name. Given that the Respondent has no rights or legitimate interest in the Domain Name, it could not suggest a good faith use. Accordingly, it cannot be said that there is any bona fide offering of goods or services or legitimate noncommercial or fair use. A passive holding of a domain name may amount to bad faith when it is difficult to imagine any plausible future active use that would be legitimate and not infringe a complainant’s rights. Concealment of the Respondent’s identity (by use of a privacy protection service) is an indication of bad faith, as this was not driven by a legitimate need to protect the Respondent’s identity but to make it difficult for the Complainant to protect its trademark rights. The Complainant was forced to initiate UDRP proceedings in order to obtain the identity and contact details of the Respondent. The Respondent did not reply to cease and desist letters, supporting an inference of bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed. A. Identical or Confusingly Similar The Complainant clearly has rights in the BELFIUS Mark. Ignoring the gTLD “.org” (as the Panel may do for comparison purposes), the Domain Name comprises the BELFIUS Mark followed by a hyphen and then the word “info”. As the BELFIUS Mark and Domain Name are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity typically involves a comparison, on a visual or aural level, between the trademark and the domain name. To satisfy the test, the trademark to which the domain name is said to be confusingly similar, would generally need to be recognizable as such within the domain name. The addition of common, dictionary, descriptive or negative terms does not usually prevent a finding of confusing similarity. The BELFIUS Mark is clearly recognizable within the Domain Name. The only real issue therefore is whether the word “info” which follows it (separated by a hyphen), renders the Domain Name something other than confusingly similar (to the BELFIUS Mark). In the Panel’s view, it does not. (See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). Accordingly, the Panel finds that the Domain Name is confusingly similar to the BELFIUS Mark for the purposes of the Policy and thus paragraph 4(a)(i) thereof has been established. B. Rights or Legitimate Interests By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding. A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is 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. Here, however, the Respondent is not known by the Domain Name. Nor can it be said that there is legitimate noncommercial or fair use. There appears to be no active use at all, the Domain Name resolving to a webpage containing a security warning and blocking access to “the site ahead”. Moreover, given that any noncommercial or fair use must be without intent to mislead, even if the Respondent could point to some use, it is unlikely it would be regarded as legitimate or fair, given that the Domain Name is confusingly similar to the Complainant’s BELFIUS Mark and likely to create a false impression of association with the Complainant. A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. Whilst it appears that no use is being made of the Domain Name at present, given the likelihood of a false impression being created if it were to be used, it is unlikely that any offering of goods or services in the future would be treated as bona fide. There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The Respondent has not come forward with a Response and it can only be assumed that there is nothing it could say that might support an assertion that it does in fact have rights or legitimate interests in the Domain Name. Indeed, whilst the provenance of the security warning (and blocked access to any further webpage) is unknown, it far from supports any suggestion that the Respondent could demonstrate rights or legitimate interests in the Domain Name. The contentions of the Complainant, by which it has made out a prima facie case that the Respondent has no rights or legitimate interests, have not been contradicted or challenged, or cast into doubt by the brief analysis set out above. Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides a number of non-exclusive scenarios which may evidence a respondent’s bad faith. They include, for instance, a respondent registering a domain name in order to prevent an owner of the trademark or service mark to which it is said to be confusingly similar or identical, from reflecting the mark in question in a corresponding domain name (provided that the respondent has engaged in a pattern of such conduct). A respondent registering a domain name primarily for the purposes of disrupting the business of a competitor is another scenario, as is a respondent intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. Sometimes, particularly in cases where nothing at all is done with a domain name, it is not possible for a complainant to demonstrate a precise literal application of one of the paragraph 4(b) scenarios. However, given that such scenarios are non-exclusive and simply illustrative, this matters not as long as there is evidence (notably in the act of registering a confusingly similar domain name) demonstrating that a respondent seeks to take unfair advantage of, or to abuse a complainant’s trademark. Such behaviour would satisfy the general principle underlying the bad faith requirement of the Policy. It is not clear whether the Respondent, in registering the Doman Name, had in mind preventing the Complainant from itself registering the Domain Name or whether there was a primary intention to disrupt the Complainant’s business. Moreover, given that no use is being made of the Domain Name (whether as a matter of choice on the part of the Respondent or, as the security warning suggests, prohibition), it cannot be said with any certainty that the Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion. However, given the composition of the Domain Name it is extremely unlikely that the Respondent would not have known of the Complainant and its BELFIUS Mark at the time of registration of the Domain Name. The Domain Name incorporates entirely the BELFIUS Mark (a coined name) and any use of it would likely create a risk of misleading Internet users into believing that the Domain Name or any website to which it resolved, was associated with or emanated from the Complainant. The addition of “-info” immediately following the BELFIUS Mark would hardly ameliorate the risk of Internet users being misled and indeed may well increase such risk. The Domain Name has the hallmarks of bad faith registration and use. It is inherently misleading and it is difficult to contemplate any legitimate use without permission of the Complainant. It cries out for explanation, but none has been provided. The fact that no use is being made of the Domain Name at present (and hence can be treated as being passively held), does not prevent a finding of bad faith registration and use. Indeed, a passive holding of a domain name can support a finding of bad faith. UDRP Panels must examine all the circumstances of the case. Section 3.3 of the WIPO Overview 3.0, provides; “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”. The Domain Name incorporates the distinctive BELFIUS Mark. No Response was filed or evidence of actual or contemplated good faith use provided (and none would seem plausible). Whilst there are of course recognized legitimate uses of privacy and proxy registration services (Section 3.6 of the WIPO Overview 3.0), in the circumstances of this case, the Panel finds that the Respondent’s use of a privacy protection service additionally supports an inference of bad faith. Finally, any good faith use of the confusingly similar Domain Name seems highly implausible. The passive holding of the Domain Name in the circumstances of this Complaint, supports a finding of bad faith. In all the circumstances, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith. 7. Decision For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name Jon Lang
Sole Panelist
Date: February 3, 2021
Full & Egal Universal Law Academy