WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Beobank NV/SA v. WhoisGuard, Inc. / Willem Been
Case No. D2019-1460
1. The Parties
Complainant is Beobank NV/SA, Belgium, represented by MEYER & Partenaires, France.
Respondent is WhoisGuard, Inc. / Willem Been, Republic of Moldova.
2. The Domain Name and Registrar
The disputed domain name <beobank.live> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2019. On June 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 28, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 1, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on July 8, 2019.
The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on July 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 29, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 30, 2019.
The Center appointed Marina Perraki as the sole panelist in this matter on August 2, 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. 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-sized enterprises (“SMEs”). 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, 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 at “www.online.beobank.be”, in Dutch, French and English.
The Domain Name was registered on April 30, 2019 and leads to an inactive website. Prior to this, namely at the time of its detection by Complainant, the Domain Name was used to host a website (the Website) which displayed a web page identical to Complainant’s official web page for online banking, at “www.online.beobank.be”, requesting the log-in user name and password. The Website is currently taken down by the hosting provider at the request of Complainant.
Lastly, as Complainant demonstrates, Respondent is also cited as respondent in Beobank NV/SA v. WhoisGuard, Inc. / Willem Been / Teleev Finos, WIPO Case No. D2019-1297 as the named registrant of the domain name <beobank.online>.
5. 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 Name.
Respondent did not reply to 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 Domain Name is identical with the BEOBANK trademark of Complainant, as it incorporates the said trademark of Complainant in its entirety.
The generic Top-Level Domain (“gTLD”) “.live” is disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (See 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).
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 Respondent of the dispute, Respondent’s 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) Respondent (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) Respondent is 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 concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name.
Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complainant, Respondent was not authorized to register the Domain Name.
Respondent did not demonstrate any prior to the notice of the dispute, use of the Domain Name or a trademark corresponding to the Domain Name in connection with a bona fide offering of goods or services.
On the contrary, as Complainant demonstrates, even though the Domain Name currently leads to an inactive website, following a takedown notice of Complainant, it was used prior to that, to host a Website that imitated Complainant’s online banking web page, requesting the user name and password of the Internet users.
Lastly, the Domain Name includes the trademark of Complainant BEOBANK entirely, with the addition of the gTLD “.live”.
The above, along with the fact that the Domain Name was at the time of filing the Complaint registered with a privacy shield service, speak against any rights or legitimate interests held by Respondent (See Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625; Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records, WIPO Case No. D2017-2533).
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 Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name 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 Name; or
(ii) that Respondent has registered the Domain Name 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 Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, 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 Name in bad faith. As per Complaint, Complainant’s BEOBANK trademark is well-known at least in Belgium, where Complainant has the substantial part of its business, while 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 Name registration by Respondent, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (See 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 (See Caesars World, Inc. v. Forum LLC, WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc., WIPO Case No. D2009-0462). The Domain Name is 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.
Most importantly, as Complainant demonstrated, the previous website content related to the Domain Name was identical to the official online banking web page of Complainant and requested Internet users to provide their log-in and password in order to enter into their bank accounts. This indicates that Respondent knew of Complainant and chose the Domain Name with knowledge of Complainant and its industry competitors (See Safepay Malta Limited v. ICS Inc., WIPO Case No. D2015-0403). It alsofurther supports registration in bad faith (See WIPO Overview 3.0, section 3.1.4), reinforcing the likelihood of confusion, as Internet users were likely to consider the Domain Name as connected with Complainant (See Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, supra; Marie Claire Album v. Whoisguard Protected, Whoisguard, Inc. / Dexter Ouwehand, DO, WIPO Case No. D2017-1367).
As regards bad faith use, Complainant demonstrated that the Domain Name currently leads to an inactive website. The non-use of a domain name would not prevent a finding of bad faith (See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003;WIPO Overview 3.0, section 3.3).
In addition, prior to this, as Complainant demonstrated, Respondent used the Domain Name to host a Website identical to the official on-line banking web page of Complainant, where users were requested to log-in in order to access their bank accounts online, entering their log-in and password. This indicates use in bad faith (See Arkema France v. Aaron Blaine, WIPO Case No. D2015-0502).
As Complainant demonstrated further, even though the Website has been shut down by the hosting company on Complainant’s request, the email servers (MX) are still activated. Therefore there is a risk that the Domain Name be used for purposes other than to host a website. Use of a domain name for purposes other than to host a website may also constitute bad faith. Such purposes include sending deceptive emails, phishing, identity theft, or malware distribution (WIPO Overview 3.0, section 3.4).
Furthermore, Respondent is also the named registrant of the domain name <beobank.online> in Beobank NV/SA v. WhoisGuard, Inc. / Willem Been / Teleev Finos, supra, namely is engaged in a pattern of conduct of registering domain names in bad faith, specifically domain names including the trademark BEOBANK of Complainant.
Lastly, as Complainant has demonstrated, initially the Domain Name was registered with a privacy shield service to hide the holder’s identity and then, subsequently, it appeared to be registered by Respondent.
Under these circumstances and on this record, the Panel finds no good faith basis for Respondent’s conduct vis-à-vis the Domain Name.
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 Name, <beobank.live>, be transferred to Complainant.
Date: August 16, 2019