The Complainant is Belfius Bank S.A. / Belfius Bank N.V., Belgium, represented internally.
The Respondent is john fred, Nigeria. 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 15, 2021. On June 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 16, 2021, 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 June 22, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 13, 2021. The Center appointed Jeremy Speres as the sole panelist in this matter on July 28, 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 uncontested facts are as follows. The Complainant is a bank and financial services provider focusing on the Belgian market and is wholly owned by the Belgium government with over 5,000 employees and 650 branches in Belgium. The Complainant has, since 2012, traded under the BELFIUS mark, which is an invented term formed as a portmanteau of “Belgium”, “finance” and “us”. The Complainant owns various trade mark registrations for the BELFIUS mark in the European Union Trade Mark and Benelux registries, notably European Union Trade Mark registration number 010581205 for the BELFIUS word mark in classes 9, 16, 35, 36, 41 and 45 registered on May 24, 2012. The Domain Name was registered on February 16, 2021 and, as at the filing of the Complaint and the drafting of this decision, did not resolve to a website. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is confusingly similar to its mark, that the Respondent has no rights or legitimate interests in it, and it was registered and used in bad faith and stands to be transferred to the Complainant under the Policy in terms of the doctrine of passive holding. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Where the trade mark is recognisable in the domain name, the addition of other terms does not prevent a finding of confusing similarity (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.8). The Complainant’s registered BELFIUS trade mark is the first and most prominent element of the Domain Name and the remainder, apart from the generic Top-Level Domain, consists of the term “eu” preceded by a hyphen, which does not render the Complainant’s mark unrecognisable. The Complainant has satisfied the standing requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests and the burden of production thus shifts to the Respondent (WIPO Overview 3.0 at section 2.1). The Complainant’s mark was registered and well-known long prior to registration of the Domain Name, as confirmed in numerous UDRP cases independently researched by the Panel (e.g. Belfius Banque S.A./ Belfius Bank NV v. Contact Privacy Inc. Customer 1242626048 / Maarten Bekkers,WIPO Case No. D2018-1802). UDRP panels may undertake limited factual research into matters of public record (WIPO Overview 3.0 at section 4.8). The Domain Name is confusingly similar to the Complainant’s invented mark and the Complainant has certified that the Domain Name is unauthorised by it. There is no evidence in the record that the Domain Name has been used or that any of the circumstances set out in paragraph 4(c) of the Policy pertain and the Panel therefore assumes there are none or else the Respondent would have put those forward. The Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant’s mark is an invented term with no ordinary meaning and highly specific to the Complainant. This clearly indicates that the Respondent had the Complainant’s mark in mind when registering the Domain Name (Bayer Aktiengesellschaft v. H. Monssen,WIPO Case No. D2003-0275). The addition of a term to the Complainant’s mark corresponding to the Complainant’s home territory only strengthens this conclusion (WIPO Overview 3.0 at section 3.2.1). Although the Domain Name has not been used, under the doctrine of passive holding non-use does not prevent a finding of bad faith (Section 3.3 the WIPO Overview 3.0). The relevant factors are (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response, (iii) the respondent’s concealing its identity, and (iv) the implausibility of any good faith use to which the domain name may be put. All of these factors apart from (iii) point to the appropriateness of the doctrine’s application here. Moreover, the Panel has independently established, through publically accessible reverse WhoIs databases, that the Respondent has registered numerous domain names consisting of well-known trade marks and geographic terms separated by a hyphen. The domain names all use the country code Top-Level Domain used by the owner of the well-known trade mark for its own, genuine domain within the second level of the targeted domain. For example, the Respondent registered The Complainant has satisfied 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 Domain Name Jeremy Speres
Sole Panelist
Date: August 6, 2021
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