ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Belfius Bank SA / Belfius Bank NV v. Thomas Verean Case No. D2024-3168 1. The Parties The Complainant is Belfius Bank SA / Belfius Bank NV, Belgium, internally represented. The Respondent is Thomas Verean, Canada. 2. The Domain Names and Registrar The disputed domain names and are registered with Hosting Concepts B.V. d/b/a Registrar.eu. (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 1, 2024. On August 2, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 2, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (redacted for privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 6, 2024, 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 August 6, 2024. 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 August 8, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 28, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 29, 2024. Following the notification of the Complaint, on August 12, 2024, the Complainant asked the Center whether it could add another domain name to the Complaint. The Center responded on August 14, 2024 that this would be addressed by the Panel on appointment.
page 2 The Center appointed Karen Fong as the sole panelist in this matter on September 6, 2024. 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 government owned bank in Belgium providing financial services. It has more than 5000 employees and over 60 agencies. The Complainant provides its services through the trade marks BELFIUS and BELFIUS DIRECT. The Complainant’s official website is connected to the domain name . It also owns the domain name , which resolves to a website intended for institutional partners and journalists. The Complainant has various trade mark registrations for BELFIUS and BELFIUS DIRECT including the following: - European Union Trade Mark Registration No. 010581205 for BELFIUS, registered on May 24, 2012; - Benelux Trade Mark Registration No. 914650 for BELFIUS, registered on May 10, 2012; and - European Union Trade Mark Registration No. 018939941 for BELFIUS DIRECT, registered on March 13, 2024. (together, individually and collectively referred to as the “Trade Mark”). The Respondent appears to be based in Canada. The disputed domain names were both registered on June 2, 2024. The disputed domain names do not resolve to any website. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names. Notably, the Complainant contends that the disputed domain names are identical and/or confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the disputed domain names and that the disputed domain names were registered and are being used in bad faith. The Complainant requests transfer of the disputed domain names. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Addition of Domain Name The Panel notes that the Complainant made a request to ask whether it could add the domain name to the Complaint after the commencement of the proceeding. No information other than the domain name was provided. The Panel notes from conducting a WhoIs search that the domain name was registered on July 6, 2024, through a different registrar to the Registrar. This pre-dates the filing of the Complaint. No evidence has been provided that the Respondent is the registrant of this domain name and why this domain name was not included in the original Complaint or the Amended Complaint.
page 3 As stated in section 4.12.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) in relation to the addition of domain names following complaint notification: “Except in limited cases where there is clear evidence of respondent gaming/attempts to frustrate the proceedings (e.g., by the respondent’s registration of additional domain names subsequent to complaint notification), panels are generally reluctant to accept such requests because the addition of further domain names would delay the proceedings (which are expected to take place with due expedition). Moreover, a panel declining such request would not prevent the filing of a separate complaint where such additional domain names may be addressed. In those cases where panels would grant such a request, the complainant would need to hold relevant trademark rights and the proposed additional domain names would need to be prima facie registered by the same or related respondent. Moreover, in the event a panel would grant such a request, it may also order partial or full re-notification of the proceeding (which may impact case timelines).” This is not a case where the Panel is able to grant such a request as no evidence has been provided that the Respondent is connected to the domain name or that the Respondent gaming or attempting to frustrate the proceedings. The Complainant is free to file a separate complaint in relation to this domain name. B. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for identity or confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s Trade Mark and the disputed domain names. WIPO Overview 3.0, section 1.7. Based on the available record, the Panel finds the Complainant has shown rights in respect of a trade mark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the entirety of the Trade Mark is reproduced within the disputed domain names. Accordingly, the disputed domain names are identical or confusingly similar to the Trade Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. In the case of the comparison of the Trade Mark – BELFIUS and the disputed domain names, while the addition of the other terms “www” and “direct” and the hyphen symbol may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the Trade Mark for the purposes of the Policy as is the case of the addition of the term “www” and hyphen in the comparison with the Trade Mark – BELFIUS DIRECT. WIPO Overview 3.0, sections 1.8. Based on the available record, the Panel finds the first element of the Policy has been established. C. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.
page 4 Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise. Moreover, the nature of the disputed domain names is inherently misleading as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. WIPO Overview 3.0, section 2.5.1. Based on the available record, the Panel finds the second element of the Policy has been established. D. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In the present case, the Panel notes that the disputed domain names fully incorporate the Trade Mark which pre date the registration of the disputed domain names. The Trade Mark is an invented word with no ordinary dictionary meaning. The Panel also notes that the disputed domain names are inactive. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the disputed domain names do not prevent a finding of bad faith in the circumstances of this proceeding. Although 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. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness and reputation of the Trade Mark, the fact that the Trade Mark comprises an invented word, the composition of the disputed domain names, the incomplete or false address provided by the Respondent when registering the disputed domain names (the Written Notice was not able to be delivered by the courier service as further information was required), and lack of a response from the Respondent, and finds that in the circumstances of this case the passive holding of the disputed domain names does not prevent a finding of 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 names and be transferred to the Complainant. /Karen Fong/ Karen Fong Sole Panelist Date: September 20, 2024
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