WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Beobank NV/SA v. WhoisGuard, Inc. / Willem Been / Teleev Finos
Case No. D2019-1297
1. The Parties
The Complainant is Beobank NV/SA, Belgium, represented by MEYER & Partenaires, France.
The Respondent is WhoisGuard, Inc., Panama / Willem Been, Moldova / Teleev Finos, the Netherlands.
2. The Domain Names and Registrar
The disputed domain names <beobanking.online> and <beobank.online> (the “Domain Names”) are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 6, 2019. On June 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 6, 2019, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on July 12, 2019 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 June 21, 2019.
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 June 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 15, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 22, 2019.
The Center appointed Marina Perraki as the sole panelist in this matter on July 24, 2019. 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. Procedural issue: Complaint filed against Multiple Respondents / Consolidation
The Panel has considered the possible consolidation of the Complaint for the Domain Names at issue. According to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, “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”.
The Panel notes the following features of the Domain Names and arguments submitted by the Complainant in favor of the consolidation:
- the Domain Names were registered within a 20 day period of time, namely the first Domain Name <beobank.online> was registered on April 22, 2019 and the second Domain Name <beobanking.online> was registered on April 3, 2019;
- the same Whois privacy service was used for both Domain Names, namely WhoisGuard Inc., Panama;
- the Domain Names share the same naming pattern, namely they reproduce the trademark BEOBANK of Complainant, in combination with the new generic Top-Level Domain (gTLD) “.online”;
- the Domain Names have been registered through the same registrar, NameCheap;
- both named Respondents appear to be located in Dutch cities, namely the named Respondent of the first Domain Name <beobank.online> appears, per the contact information provided by the Registrar to the Center, in the course of the present proceedings, to be in “Amsterdam” in province/state “Noord Holland”, whereas the named Respondent of the second Domain Name <beobanking.online> appears to be in “Rotterdam” in province “Zuid-Holland P”. As per Complainant, the street names and numbers of the cited cities correspond to real residential locations. However, no information was found by Complainant about the mentioned persons;
- the named Respondent of the first Domain Name <beobank.online> appears to reside in the city of Amsterdam, in the country of “Moldova”;
- both named Respondents’ contact information show telephone numbers with Netherlands international codes;
- the Domain Names appeared to be inactive in the same way, at the time of filing of the Complaint, namely with the message that the connection may be temporarily unavailable (“timed-out”);
- the Domain Names have been detected as being related to potentially fraudulent activities;
Considering all the above, the Panel notes that, as Complainant has argued, there appears prima facie to be one single Respondent, providing possibly fake ID details. Furthermore, named Respondents did not submit any arguments to rebut this inference.
The Panel finds therefore that consolidation is fair to both Parties, as the Respondents have been given an opportunity to object to consolidation through the submission of pleadings to the Complaint (if indeed there are more than one Respondent) but have chosen not to respond (see WIPO Overview 3.0, sections 4.11.1 and 4.11.2; Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302).
5. Factual Background
According to the Complaint, Complainant is a bank, seated in Brussels, Belgium, with more than 1,500 employees and a network of 218 branches in Belgium. A French financial conglomerate, Crédit Mutuel Nord Europe, leader of banking and insurance services in France, with more than 4,400 employees and more than 1.6 million clients, is the owner of Complainant. Complainant offers banking products (current accounts, loans, credit cards, etc.) to 662,000 clients, individuals, self-employed workers and Small and Medium Enterprises. Complainant was formed in 2013 on the grounds of Citibank Belgium, which was itself formed in 1992 from the merger of several Belgian banking companies whose origin began with the opening in Brussels in 1919 of banking facilities by “City Bank of New York”.
Complainant holds numerous trademark registrations consisting of or including the word BEOBANK, such as:
- the Benelux trademark registration BEOBANK (word), No. 01254742, filed on September 19, 2012, and registered on December 10, 2012, for services in international class 36,
- the Benelux semi-figurative trademark registration BEOBANK, No. 01258710, filed on November 26, 2012 and registered on February 11, 2013, for services in international class 36.
Complainant is also the owner of the domain name <beobank.be> registered on October 1, 2012.
Complainant currently operates a website at “www.beobank.be”, in Dutch and French, through which it is offering its services. Complainant’s online banking services are provided by Complainant under the domain name <BEOBANK ONLINE> at “https://online.beobank.be/fr/identification/authentification.html”, in Dutch, French and English.
The first Domain Name <beobank.online> was registered on April 22, 2019. The second Domain Name <beobanking.online> was registered on April 03, 2019. Both Domain Names lead to inactive websites. As Complainant demonstrated, at the time of filing of the Complaint, they were generating a message signifying that the related websites may be temporarily unavailable. Furthermore, Complainant has demonstrated that email servers (MX) have been activated for the second Domain Name <beobanking.online>.
6. Parties’ Contentions
Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant has demonstrated rights through registration and use of the BEOBANK mark.
The Panel finds that the first Domain Name <beobank.online> is identical with the BEOBANK trademark of Complainant.
The first Domain Name incorporates the said trademark of Complainant in its entirety.
The gTLD “.online” is disregarded, as gTLDs typically do not form part of the comparison under the first element on the grounds that they are required for technical reasons only (Credit Agricole S.A. v. Yang Xiao Yuan, WIPO Case No. D2018-1476; Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
The Panel finds that the first Domain Name <beobank.online> is identical with the BEOBANK trademark of Complainant.
The second Domain Name <beobanking.online> incorporates the BEOBANK trademark of Complainant in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).
The addition of the ending “ing” in the “beobank” portion of the second Domain Name is disregarded, (Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302; WIPO Overview 3.0 , section 1.9 ).
The gTLD “.online” is also disregarded, as gTLDs typically do not form part of the comparison under the first element on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik, WIPO Case No. D2002-0122).
The Panel finds that the second Domain Name <beobankinb.online> is confusingly similar to the BEOBANK trademark of Complainant.
Complainant has established Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Names, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Names. As per Complainant, Respondent was not authorized to register the Domain Names.
Respondent did not demonstrate any prior to the notice of the dispute, use of the Domain Names or a trademark corresponding to the Domain Names in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrates, the Domain Names include the trademark of Complainant BEOBANK entirely, with the addition of the gTLD “.online”, composing, in combination, the name “BEOBANK ONLINE” under which Complainant provides its online banking services. This signals an intention on the part of Respondent to confuse users seeking or expecting Complainant (Edmunds.com, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2006-1043, WIPO Overview 3.0, section 2.5.1).
Furthermore, as Complainant has demonstrated, the Domain Names lead to inactive websites, whereas an email server has been configured on the second Domain Name <beobanking.online>. These indicate the intention of Respondent to potentially use the second Domain Name <beobanking.online> for purposes other than hosting a website, including potentially for constructing an email composition containing the second Domain Name, to be used for deceiving purposes (Accor SA v. Domain Admin, C/O ID#10760, Privacy Protection Service INC d/b/a PrivacyProtect.org / Yogesh Bhardwaj, WIPO Case No. D2017-1225).
Lastly, the Domain Names, per Complainant, were initially registered with a privacy shield service and subsequently appeared as registered in the name of Respondent.
The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name.
Complainant has established Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Names in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Names registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Names; or
(ii) that Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that Respondent has registered and used the Domain Names in bad faith. Complainant provides its services also online at “www.beobank.be”. Furthermore BEOBANK is a fictitious word. Because the BEOBANK mark had been widely used and registered at the time of the Domain Names registration by Respondent, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Names (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc., WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226).
Respondent should have known about Complainant’s rights, as such knowledge is readily obtainable through a simple browser search and also due to Complainant’s nature of business, provided also online through its website “www.beobank.be“, namely online banking (Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462).
Furthermore, the Domain Names incorporate in whole Complainant’s mark. Use of the Domain Names therefore creates a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Domain Names. It also indicates knowledge of Complainant and its field of business. This also supports registration in bad faith (WIPO Overview 3.0, section 3.1.4), reinforcing the likelihood of confusion, as Internet users are likely to consider the Domain Names as in some way endorsed by or connected with Complainant (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625; Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO, WIPO Case No. D2017-1367).
ThegTLD “.online” and the Second-Level portion of both Domain Names (“beobank” and “beobanking” respectively for the first and the second Domain Names) compose, in combination, the name “BEOBANK ONLINE”, which is identical to the name under which Complainant provides its online banking services (Compagnie Generale des Etablissements Michelin v. Pacharapatr W., WIPO Case No. D2016-2465; Totaljobs Group Limited v. Faisal Khan, CreativeMode Ltd, WIPO Case No. D2017-0295).
The Domain Names are also practically identical to an existing domain name of Complainant, namely <beobank.be> registered on October 1, 2012 and widely used for corresponding Complainant’s website and for the provision of online banking services, under the name “BEOBANKING”. Use of the gTLD “.online” in the disputed Domain Names further enhances a likelihood of confusion with the Complainant’s mark, given the nature of Complainant’s services which are also provided “online” (online banking).
Lastly, as Complainant has demonstrated, initially the Domain Names were registered with a privacy shield service to hide the holder’s identity and then, subsequently, they appeared to be registered by Respondent, in the circumstances of this case, the use of privacy service further supports a finding of bad faith.
As regards bad faith use, Complainant demonstrated that the disputed Domain Names both lead to inactive websites. As regards the second Domain Name <beobanking.online> there is also a risk that it be used for purposes other than to host a website. This is indicated by the fact that, as Complainant has demonstrated, an email server has been configured on this Domain Name. The non-use of a domain name would not prevent a finding of bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; WIPO Overview 3.0, section 3.3).
Under these circumstances and on this record, the Panel finds no good-faith basis for Respondent’s conduct vis-à-vis the Domain Names.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <beobanking.online> and <beobank.online> be transferred to the Complainant.
Date: August 7, 2019