WIPO Domain Name Decision D2023-0049 for belfius.host

ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Belfius Bank S.A. / Belfius Bank N.V. v. Blef Goozy Case No. D2023-0049 1. The Parties The Complainant is Belfius Bank S.A. / Belfius Bank N.V., Belgium, represented by Marieke Roseeuw, Belgium. The Respondent is Blef Goozy, Netherlands. 2. The Domain Name and Registrar The disputed domain name is registered with Hostinger, UAB (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 4, 2023. On January 5, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 6, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 12, 2023, 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 January 16, 2023. 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 January 18, 2023. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 8, 2023. The Center appointed Federica Togo as the sole panelist in this matter on February 21, 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. page 2 4. Factual Background The Complainant is a bank and financial services provider. It is the registered owner of several trademarks for BELFIUS, e.g. European Union trademark registration No. 010581205, registered on May 24, 2012, for goods and services in classes 9, 16, 35, 36, 41, and 45. The disputed domain name was registered on April 21, 2022, and resolves to an inactive webpage. Finally, the Complainant sent a cease and desist letter to the Respondent on May 5 and 12, 2022, and on January 16, 2023. The Respondent did not reply to the letters. 5. Parties' Contentions A. Complainant It results from the Complainant's allegations that the Complainant is a Belgian bank and financial services provider with more than 5,000 employees and over 650 agencies. Its activities are focused on the Belgian territory. Nevertheless, the trademark BELFIUS is also shown outside Belgium as the Complainant sponsors several national sports teams and sports events. In addition, the Complainant registered on January 23, 2012, the domain name , that resolves to its official website where it offers banking and insurance services. It also uses many other domain names that include the term "belfius" and redirect to its official website (for instance "www.belfius.com"). The Complainant contends that its trademark BELFIUS, which is an invented word composed of "Bel" as in Belgium, "fi" as in finance, and the English word "us", is distinctive and well-known. The Complainant further contends that the disputed domain name is confusingly similar to the Complainant's trademark BELFIUS, as the domain name incorporates the entirety of the trademark BELFIUS along with the generic Top-Level Domain ("gTLD") ".host", which is disregarded for purposes of confusing similarity and identity either. The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, the Respondent is in no way associated with the Complainant, which has not licensed, approved or in any way consented to the Respondent's registration and use of the trademark in the disputed domain name. Moreover, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. In fact, the Respondent is not making any use of the disputed domain name in connection with an active website or even indicating demonstrable preparations to use the disputed domain name. Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. According to the Complainant, the Respondent either knows or should have known of the Complainant's trademark and business. Since the disputed domain name incorporates the trademark BELFIUS in its entirety, mere coincidence of an identical (fictional) name cannot be accepted and the choice of these words further indicates that the Respondent was aware of the Complainant. B. Respondent The Respondent did not reply to the Complainant's contentions. page 3 6. Discussion and Findings Paragraph 15(a) of the Rules instructs this Panel to "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 requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. It results from the evidence provided that the Complainant is the registered owner of several trademark registrations for the term "Belfius". Reference is made in particular to European Union trademark registration No. 010581205, registered on May 24, 2012, for goods and services in classes 9, 16, 35, 36, 41, and 45. Prior UDRP panels have found that a disputed domain name is confusingly similar to a complainant's trademark where the disputed domain name incorporates the complainant's trademark in its entirety (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") at section 1.7). This Panel shares this view and notes that the Complainant's registered trademark BELFIUS is fully included in the disputed domain name. Finally, the gTLD ".host" of the disputed domain name has to be disregarded under the first element confusing similarity test, since it is a standard registration requirement. The practice of disregarding the gTLD in determining identity or confusing similarity is applied irrespective of the particular gTLD (including with regard to "new gTLDs"), see WIPO Overview 3.0 at section 1.11. In the light of the above, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent's rights or legitimate interests to the disputed domain name. In the Panel's view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights to or legitimate interests in the disputed domain name. page 4 According to the Complaint, which has remained unchallenged, the Complainant has no relationship in any way with the Respondent and did, in particular, not authorize the Respondent's use of the trademark BELFIUS, e.g., by registering the disputed domain name comprising the said trademark entirely. Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy. Moreover, the Panel notes that the nature of the disputed domain name carries a high risk of implied affiliation, since the disputed domain name is identical to the Complainant's trademark BELFIUS and that the trademark BELFIUS is not a trademark that one would legitimately adopt as a domain name unless to suggest an affiliation with the Complainant. Generally speaking, previous UDRP panels have found that domain names identical to a complainant's trademark carry a high risk of implied affiliation, see WIPO Overview 3.0, at section 2.5.1. It is acknowledged that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, "in particular but without limitation", be evidence of the disputed domain name's registration and use in bad faith. Based on the evidence submitted by the Complainant, this Panel has no doubt that the Respondent positively knew or should have known that the disputed domain name consisted of the Complainant's trademark when it registered the disputed domain name. This is underlined by the fact that the disputed domain name is clearly constituted by the Complainant's registered trademark BELFIUS and the Complainant's trademarks have existed for many years. Panels have consistently found that the mere registration of a domain name that is identical to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. WIPO Overview 3.0, section 3.1.4. The disputed domain name does not resolve to an active website. In this regard, the Panel notes that the current passive holding does not preclude a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). In fact, the totality of the circumstances support a finding of bad faith: (1) the Respondent failed to submit a formal response or to provide any evidence of actual or contemplated good-faith use, nor did reply to the cease and desist notices sent by the Complainant; (2) the Respondent provided false contact information upon registering the disputed domain name given the courier's inability to deliver the Center's written communication; and (3) the implausibility of any good faith use to which the disputed domain name may be put (see WIPO Overview 3.0 at section 3.3). In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy. page 5 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, be transferred to the Complainant. /Federica Togo/ Federica Togo Sole Panelist Date: March 7, 2023


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