ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Belfius Bank S.A. / Belfius Bank N.V. v. Barklays Mian, Host Master, 1337 Services LLC, John Doei, Hans Theo, na, Oasis Rouge, and Pakov Ali Case No. D2022-4004 1. The Parties The Complainant is Belfius Bank S.A. / Belfius Bank N.V., Belgium, internally represented. The Respondents are Barklays Mian Côte d'Ivoire, Host Master, 1337 Services LLC, Saint Kitts and Nevis, John Doei, Belgium, Hans Theo, na, Belgium, Oasis Rouge, Belgium, and Pakov Ali, Belgium. 2. The Domain Names and Registrars The disputed domain name is registered with GoDaddy.com, LLC. The disputed domain name is registered with TLD Registrar Solutions Ltd. The disputed domain names , and are registered with GoDaddy Online Services Cayman Islands Ltd. The disputed domain name is registered with Tucows Inc. The disputed domain names , , and are registered with NameCheap, Inc. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 26, 2022. On October 26, 2022, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On October 26, 2022, October 27, 2022, and November 8, 2022, the Registrars transmitted by email to the Center their verification responses disclosing registrants and contact information for the disputed domain names which differed from the named Respondents (Registration Private, Domains by Proxy LLC and Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant November 9, 2022 providing the registrants and contact information disclosed by the Registrar, and requesting the Complainant to: (i) amend the Complaint adding the Registrar-disclosed registrants as formal Respondents and provide relevant arguments or evidence demonstrating that all named Respondents are, in page 2 fact, the same entity and/or that all disputed domain names are under common control; and/or (ii) file a separate complaint for any disputed domain names for which it is not possible to demonstrate that all named Respondents are in fact the same entity and/or that all disputed domain names are under common control and indicate (by short amendment or reply email) which disputed domain names will no longer be included in the current Complaint. The Complainant filed an amended Complaint on November 21, 2022. 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 Respondents of the Complaint, and the proceedings commenced on November 24, 2022. In accordance with the Rules, paragraph 5, the due date for Response was December 14, 2022. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on December 16, 2022. The Center appointed Luca Barbero as the sole panelist in this matter on January 6, 2023. 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 is a renowned Belgian bank and financial services provider with more than 5,000 employees and over 650 agencies, as well as 100 percent government ownership. The activities of the Complainant are focused in Belgium. Nevertheless, the trademark BELFIUS is also shown outside Belgium as the Complainant sponsors several national sports teams and sports events. The Complainant is the owner of several trademark registrations for BELFIUS, including the following: - European Union Trade Mark No. 010581205 for BELFIUS (word mark), filed on January 23, 2012 and registered on May 24, 2012, in classes 9, 16, 35, 36, 41, and 45; - Benelux trademark registration no. 914650 for BELFIUS (word mark), filed on January 23, 2012 and registered on May 10, 2012 in classes 9, 16, 35, 36, 41, and 45; - Benelux trademark registration no. 915962 for BELFIUS (figurative mark), filed on March 2, 2012 and registered on June 11, 2012 in classes 9, 16, 35, 36, 41, and 45; - Benelux trademark registration no. 915963 for BELFIUS (figurative mark), filed on March 2, 2012 and registered on June 11, 2012 in classes 9, 16, 35, 36, 41, and 45. The Complainant is also the owner, amongst others, of the domain names , registered on January 20, 2012, and , registered on January 23, 2012. Both domain names are pointed to a website where the Complainant promotes and directly offers its banking and insurance services under the trademark BELFIUS. The disputed domain names were registered between July 13 and August 30, 2022: - the disputed domain names , and were registered on August 22, 2022 in the name of John Doei, located in Belgium; page 3 - the disputed domain name was registered on July 13, 2022 in the name of Barklays Mian, located in Côte d'Ivoire; - the disputed domain names and were registered on July 23, 2022 in the name of Pakov Ali, located in France; - the disputed domain name was registered on August 1, 2022 in the name of Host Master, 1337 Services LLC, located in Saint Kitts and Nevis; - the disputed domain name was registered on August 9, 2022 in the name of Oasis Rouge, located in Belgium; - the disputed domain name was registered on August 30, 2022 in the name of Hans Theo, located in Belgium. The disputed domain names are all currently not pointed to active websites. According to the screenshots submitted by the Complainant - which have not been contested by the Respondents - the disputed domain names previously pointed to error pages, parking pages, or websites subject to an Internet browser safety warning, but for , which led to a default page showing sponsored links concerning borrowing money quickly, and , which redirected to a website displaying an article about financial literacy. 5. Parties' Contentions A. Complainant As an initial matter, the Complainant requests consolidation of the disputes against several named registrants due to alleged common control of the disputed domain names, as well as noting that consolidation would be fair, equitable, and procedurally efficient. The Complainant contends that the disputed domain names are confusingly similar to the trademark BELFIUS in which the Complainant has rights as they all reproduce the trademark in its entirety or with a slight misspelling, with the mere addition of one or more descriptive terms such as: "www", "be", "corporate", "banking", "lnc", or "retail" - in some cases separated by a hyphen - and the generic Top-Level Domains ("gTLDs") ".com", ".fyi", ".wiki", ".live" and ".quest". With reference to rights or legitimate interests in respect of the disputed domain names, the Complainant states that its trademark registrations for BELFIUS predate the Respondents' registration of the disputed domain names and submits that the Respondents are in no way associated with the Complainant. Moreover, the Complainant contends that it has in no way licensed, approved or in any way consented to the Respondents' registration and use of the trademark BELFIUS in the disputed domain names and that the Respondents are not commonly known by the disputed domain names as they have no trademark rights on BELFIUS and do not seem to carry out any legitimate activity. The Complainant also highlights that the Respondents are not making a legitimate noncommercial or fair use of the disputed domain names, since none of the disputed domain names resolve to an active website. With reference to the circumstances evidencing bad faith, the Complainant indicates that, considering all disputed domain names encompass the Complainant's registered trademark BELFIUS, whether spelled correctly or with a slight misspelling, and that the Complainant has been active since long before the registration of the disputed domain names, the Respondents could have in no way been unaware of the Complainant at the time of registering the disputed domain names. page 4 The Complainant emphasizes that, had the Respondents conducted some good faith searches online before registering the disputed domain names, they would have readily found reference to the Complainant and appreciated the likelihood of confusion between the disputed domain names and the Complainant. The Complainant underlines that, at the time of the filing of the Complaint, the Respondents clearly did not use or did not seem to have the intention of using the disputed domain names for purposes of bona fide offering of goods and services over the Internet. Furthermore, the Complainant contends that, considering the Respondents i) deliberately concealed their identity with the purpose of making it difficult for the Complainant to protect its trademark rights, ii) provided incomplete contact details, and iii) failed to respond to the cease and desist notices sent by the Complainant, it is impossible to conceive any plausible actual or contemplated active use of the disputed domain names by the Respondents that would be in good faith. B. Respondents The Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1. Consolidation of multiple Respondents Paragraph 10(e) of the Rules provides that a panel shall decide a request by a party to consolidate multiple domain name disputes in accordance with the Policy and the Rules. As stated in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), "Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants' identity(ies) including pseudonyms, (ii) the registrants' contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., or ), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s)." The Complainant asserted that the disputed domain names, although registered in the name of different registrants, are under common control since: i) All disputed domain names were created around the same time (between July 13 and August 30, 2022) of which and , as well as and , were on the exact same date, respectively July 23 and August 22, 2022; ii) All disputed domain names incorporate the Complainant's trademark BELFIUS in its entirety, with a slight misspelling in case of , and , which is clearly a form of typosquatting; page 5 iii) All disputed domain names refer directly to BELFIUS, alone or in combination with terms directly related to services performed by financial institutions ("corporate", "banking"), descriptive terms ("retail"), or terms referring to a location ("be", "www"); iii) All the disputed domain names use a privacy protection service or incomplete registrant data, which points to a concealment of identity; iv) The registrant physical and email addresses for "belfus.live", "belfus.wiki" and "belfus.quest" are identical; vi) The Registrars are identical for , , , and , and identical for , , and ; vii) None of the disputed domain names resolved to an active webpage at the time of the filing of the Complaint. Based on the elements highlighted by the Complainant and referenced above, specifically the commonalities in the composition of the disputed domain names and their use, as well as their registration information - including the registrant contact details, which appear to be incomplete or inaccurate - and considering that none of the Respondents, despite having been duly notified of the Complaint by the Center, has filed a Response, this Panel concludes that the consolidation of the multiple domain names is appropriate in this case and is consistent with the Policy and Rules as well as with prior relevant UDRP decisions in this area (see, amongst others, Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281). Therefore, the Panel will now proceed to a decision on the merits of the case. 6. Discussion and Findings According to paragraph 15(a) of the Rules: "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain names registered by the Respondents are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and (iii) that the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar The Complainant has provided evidence of ownership of numerous trademark registrations for BELFIUS in several countries, as mentioned under Section 4 above. It is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant's trademark and the disputed domain names to assess whether the trademark is recognizable within the disputed domain name (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). page 6 Moreover, where the relevant trademark is recognizable within the disputed domain names, the addition of terms, or letters or numbers, does not prevent a finding of confusing similarity under the first element (sections 1.8 and 1.9 of the WIPO Overview 3.0). Furthermore, as stated in section 1.9 of the WIPO Overview 3.0, "a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element". In the case at hand, the disputed domain names are confusingly similar to the trademark BELFIUS in which the Complainant has rights as they all reproduce the trademark, in its entirety or with a slight misspelling - the omission of the letter "i" of the trademark - with the mere addition in some instances of one or more of the descriptive terms such as "www", "be", "corporate", "banking", "lnc", or "retail" - in some cases separated by a hyphen - and the gTLDs ".com", ".fyi", ".wiki", ".live" and ".quest". Therefore, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant must show that the Respondents have no rights or legitimate interests in respect of the disputed domain names. The Respondents may establish a right or legitimate interest in the disputed domain names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following: "(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." The Panel finds that the Complainant has made a prima facie case and that the Respondents, by not having submitted a Response, have failed to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy for the following reasons. Moreover, it has been repeatedly stated that when a respondent does not avail himself of its right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269). The Panel notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondents and the Complainant. The Respondents are not a licensee of the Complainant, nor have the Respondents otherwise obtained an authorization to use the Complainant's trademarks. Moreover, there is no element from which the Panel could infer a Respondent's right over the disputed domain names, or that the Respondents might be commonly known by the disputed domain names. As highlighted above, the disputed domain names are currently not pointed to any active webpage and, based on the screenshots provided by the Complainant - which have not been challenged by the Respondents - they were previously parked or pointed to error pages or websites subject to an Internet browser safety warning. Only the disputed domain names and were pointed to a pay-per-click page with sponsored links concerning borrowing money quickly and to a webpage displaying an article about financial literacy, respectively. page 7 The Panel finds that the Respondents' use of the disputed domain names, confusingly similar to the trademark BELFIUS used by the Complainant to identify banking and financial products and services, does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names without intention to misleadingly divert the consumers or to tarnish the Complainant's trademark. Moreover, in view of the Respondents' default, the Panel shares the view held in Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483, where the Panel found that "Absent some contrary evidence from Respondent, passive holding of a Domain Name does not constitute 'legitimate non-commercial or fair use'". In addition to the above, the Panel finds that the nature of the disputed domain names is clearly intended to, and does, play on the Complainant's trademarks. Therefore, the Panel finds that the Complainant has proven that the Respondents have no rights or legitimate interests in the disputed domain names according to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain names were registered and are being used by the Respondents in bad faith. As to bad faith at the time of the registration, the Panel finds that, in light of i) the widely known character of the trademark BELFIUS, used by the Complainant since over a decade in the banking and financial sector and promoted online via the Complainant's websites "www.belfius.com" and "www.belfius.be", and ii) the clear confusing similarity of the disputed domain names with the Complainant's trademark, the Respondent likely registered the disputed domain names having the Complainant's trademark in mind. As to the use of the disputed domain names, the Panel notes that they currently do not resolve to any active websites. As stated in several prior decisions, the passive holding of a domain name does not prevent a finding of bad faith use under certain circumstances as decided, i.a., in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. As stated in section 3.3 of the WIPO Overview 3.0, "From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or "coming soon" page) would not prevent a finding of bad faith under the doctrine of passive holding. 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". In the case at hand, in view of i) the confusing similarity of the disputed domain names with the Complainant's trademark BELFIUS; ii) the absence of any documented rights or legitimate interests of the Respondents in the disputed domain names, also in view of the prior use of the same in connection with mere parking pages, websites subject to safety warnings, or webpages displaying links or information related to the financial sector; iii) the Respondents' failure to respond to the Complaint; iv) the Respondents' provision of apparently inaccurate contact details in the WhoIs records; and, v) the implausibility of any good faith use to which the disputed domain names may be put, considering the trademark BELFIUS is used for banking and financial services and the likelihood of confusion caused by its use by unauthorized third parties, the Panel finds that the circumstances of this case point to bad faith. Therefore, the Panel finds that the Complainant has also proven that the Respondents registered and have been using the disputed domain names in bad faith according to paragraph 4(a)(iii) of the Policy. page 8 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 names, , , , , , , , , and , be transferred to the Complainant. /Luca Barbero/ Luca Barbero Sole Panelist Date: January 20, 2023
Full & Egal Universal Law Academy