WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Belfius Bank S.A. / Belfius Bank N.V. v. Lies Haelewyck

Case No. D2019-1983

1. The Parties

The Complainant is Belfius Bank S.A. / Belfius Bank N.V., Belgium, internally represented.

The Respondent is Lies Haelewyck, Belgium.

2. The Domain Name and Registrar

The disputed domain name <mandatbelfius.com> is registered with One.com A/S (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 15, 2019, 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 Registrar confirmed that the language of the registration agreement is Dutch. The Center sent an email communication to the Complainant on August 27, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint.

On the same day, the Center sent an email in English and Dutch to the Parties regarding the language of the proceeding. The Complainant filed an amended Complaint on August 30, 2019, including a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.

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 September 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 26, 2019.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on October 8, 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

The Complainant, Belfius Banque S.A. / Belfius Bank NV, is a renowned Belgian bank and financial services provider operating mainly in Belgium. The Complainant is wholly owned by the Belgian state. The Complainant has over 650 agencies in Belgium and provides a wide range of banking, insurance, and financial services.

The Complainant is the owner of the trademark BELFIUS across various jurisdictions. These registrations include:

- European Union trademark BELFIUS with registration No. 010581205, registered on May 24, 2012, in International classes 9, 16, 35, 36, 41, and 45;

- Benelux trademark BELFIUS with registration No. 914650, registered on May 10, 2012, in international classes 9, 16, 35, 36, 41, and 45;

- Benelux trademark BELFIUS with registration No. 915963, registered on June 11, 2012, in international classes 9, 16, 35, 36, 41, and 45;

- Benelux trademark BELFIUS with registration No. 915962, registered on June 11, 2012, in International classes 9, 16, 35, 36, 41, and 45.

Additionally, the Complainant is also the registrant of the domain names <belfius.be> and <belfius.com>.

The disputed domain name <mandatbelfius.com> was registered on May 6, 2019, well after the Complainant secured rights to the trademarks. The disputed domain name currently does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

“Belfius” is an invented word composed of “Bel” as in Belgium, “fi” as in finance and the English word “us”.

The Complainant contends that the generic Top-Level Domain (“gTLD”) “.com” may be disregarded for the purpose of determining whether the disputed domain name is identical or confusingly similar to the Complainant’s BELFIUS mark.

Relying on Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505, the Complainant further argues that by incorporating the Complainant’s BELFIUS trademark in its entirety, the disputed domain name is confusingly similar to the Complainant’s trademark.

Additionally, the Complainant claims that the mere adjunction of the generic term “mandat” does not negate the confusingly similarity between the disputed domain name and the Complainant’s trademark. Taken in combination with the Complainant’s trademark, the term “mandat” strengthens the association with the Complainant as it suggests a mandate. This term can also imply to Internet users that the corresponding website is linked to the Complainant as it is a direct reference to the email addresses used by the Complainant’s staff: “[...]@mandat.belfius.be”.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant further submits that the Respondent registered the disputed domain name on May 6, 2019, which is after the Complainant’s registration of its BELFIUS trademark.

The Complainant also states that it has never licensed or otherwise permitted the Respondent to use the Complainant’s trademark or to register any domain name including the Complainant’s trademark. There is no relationship with the Complainant.

Furthermore, the Respondent does not appear to have used the disputed domain name for any legitimate noncommercial purpose. Nor are there any indications of demonstrable preparation to use the disputed domain name, accordingly, it is being passively held. The Complainant alleges that such passive holding is evidence of a lack of rights and legitimate interests in the disputed domain name (see American Home Products Corporation v. Ben Malgioglio, WIPO Case No. D2000-1602).

(c) The disputed domain name was registered and is being used in bad faith.

The Complainant submits that the Respondent registered the disputed domain name in 2019, which is after the Complainant filed for registration of its BELFIUS trademark in 2012. The Complainant therefore contends that, at the time of registration of the disputed domain name and given the Complainant’s presence on the Internet, the Respondent knew or should have been aware of the existence of the Complainant’s trademarks. Such awareness of the Complainant’s trademark suggests bad faith (see Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org, and Pokemon Fans Unite, WIPO Case No. D2001-1070).

The Complainant further contends that the disputed domain name has been registered and is being used in bad faith for the following reason: the term “belfius” is a coined term and the mere coincidence of an identical name in the disputed domain name cannot be accepted. The adjunction of the term “mandate” proves that the Respondent knew of the Complainant.

As for the use of the disputed domain name, the evidence shows that the Respondent clearly does not use or does not seem to have the intention to use the disputed domain name for purposes of bona fide offering of goods and services over the Internet.

In addition, the Complainant refers to a previously rendered UDRP decision (see, Inter-IKEA v. Polanski, WIPO Case No. D2000-1614) which found that the passive holding of a domain name may amount to bad faith when it is difficult to imagine any plausible future active use of the disputed domain by the respondent that would be legitimate.

Furthermore, the Complainant states that the concealment of the Respondent’s identity is an indication of bad faith as it is inspired solely to make it difficult for the Complainant to protect its trademark rights.

Finally, the Complainant argues that the Respondent has ignored the Complainant’s attempt to resolve this dispute outside of this administrative proceeding. Relying on Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments Inc., WIPO Case No. D2000-0330, the Complainant asserts that failure to respond to a cease-and-desist letter may be considered as a factor in finding bad faith registration and use of a domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of Proceedings

Under paragraph 11(a) of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise. In the present case, the language of the Registration Agreement is Dutch.

The Complainant submitted its Complaint in English and requested the language of the proceeding to be English. The Respondent has not submitted any comments in this regard, despite having been given the opportunity to do so. Taking into account the Respondent’s default and that the Complainant would be unfairly disadvantaged by being forced to translate its Complaint, the Panel concludes that, in accordance with paragraph 11(a) of the Rules, it is appropriate that the language of the proceeding is English.

Therefore, the Panel has decided to accept the Complainant’s filing in English and to issue the decision in English.

B. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).

First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights in BELFIUS.

Secondly, this Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the disputed domain name is viewed as a standard registration requirement and as such is to be disregarded.

Thirdly, the disputed domain name fully incorporates the Complainant’s BELFIUS trademark in which the Complainant has exclusive rights.

Fourthly, this Panel finds that the addition of the term “mandat” does not constitute an element so as to avoid confusing similarity for purposes of the Policy. See in this regard section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), stating that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity.

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s BELFIUS trademark.

The Panel further notes that the disputed domain name closely relates to the to the email addresses used by the Complainant, i.e. “[...]@mandat.belfius.be”.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(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.”

This Panel finds that there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name.

It is a well-established view of UDRP panels, with which this Panel agrees, that a prima facie case advanced by the complainant is generally sufficient for the complainant to satisfy the requirements under paragraph 4(a)(ii) of the Policy, provided that the respondent does not submit any evidence to the contrary (AGUAS DE CABREIROA, S.A.U. v. Hello Domain, WIPO Case No. D2014-2087; Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0145; HubSpot, Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Steve Johnson, WIPO Case No. D2016-1338).

In the present case, taking into consideration the Respondent’s default, this Panel finds that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, in view of the circumstances of this case, including the following factors:

- there is no evidence that the Respondent has been commonly known by the disputed domain name;

- there is no evidence that the Respondent has been licensed or authorized to use the disputed domain name by the Complainant;

- there is no evidence that legitimate noncommercial or fair use of the disputed domain name has taken place.

For all the foregoing reasons, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

Each of the four circumstances in paragraph 4(b) of the Policy, if found, would be an instance of “registration and use of a domain name in bad faith”.

With regard to the Respondent’s registration of the disputed domain name, this Panel believes bad faith may be found where the Respondent knew or should have known of the registration and use of the BELFIUS trademark prior to registering the disputed domain name. Such is true in the present case in which the Respondent registered the disputed domain name after the Complainant obtained its trademark registrations for the BELFIUS trademark. The Complainant’s presence on the Internet makes it disingenuous for the Respondent to claim that he was unaware that the registration of the disputed domain name would violate the Complainant’s rights.

Additionally, since that the Complainant’s trademark is an invented word with no meaning in any language apart from in relation to the Complainant’s service and that the Complainant is well-known for its financial services, it cannot be a mere coincidence that the Respondent has chosen the disputed domain name.

As to the current use of the disputed domain name, it does not resolve to an active website at the time of the Complaint and the Decision. However, passive holding of a domain name can, in certain circumstances, constitute a domain name being used in bad faith. The Panel has considered, whether, in the circumstances of this particular Complaint the passive holding of the disputed domain name by the Respondent amounts to the Respondent acting in bad faith. Relying on Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, the Panel concludes that the Complainant has proven bad faith under the passive use doctrine.

Finally, the Panel also finds that the Respondent’s failure to reply to the Complainant’s cease-and-desist letter and to submit a Response amount to additional circumstances evidencing the Respondent’s bad faith.

In light of the foregoing, this Panel finds that the disputed domain name was registered and is being used by the Respondent in 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 name <mandatbelfius.com> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: October 22, 2019