WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Beobank NV/SA v. WhoisGuard Protected, WhoisGuard, Inc. / Theo Landschot / Guy Wesselink
Case No. D2020-0007
1. The Parties
The Complainant is Beobank NV/SA, Belgium, represented by MEYER & Partenaires, France.
The Respondents are WhoisGuard Protected, WhoisGuard, Inc., Panama / Theo Landschot, the Netherlands / Guy Wesselink, Belgium.
2. The Domain Names and Registrar
The disputed domain names <beobankbe-nieuwupplan.pro> and <beobankbe-startnu.pro> are registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 2, 2020. On January 2 and 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 2 and 14, 2020, 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 January 15, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed two amended Complaints due to the consolidation on January 13, 2020, and January 20, 2020.
The Center verified that the Complaint together with the amended Complaints 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 Respondents of the Complaint, and the proceedings commenced on January 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 17, 2020. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on February 19, 2020.
The Center appointed Evan D. Brown as the sole panelist in this matter on February 24, 2020. 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 offers banking services, including banking accounts and credit cards to hundreds of thousands of clients across Belgium. The Complainant owns the trademark BEOBANK and has several registrations for that mark, including Benelux verbal trademark no. 01254742, filed on September 19, 2012 and registered on December 10, 2012. The disputed domain name <beobankbe-startnu.pro> was registered on December 17, 2019 and <beobankbe-nieuwupplan.pro> was registered on December 20, 2019. The disputed domain name <beobankbe-startnu.pro> was used to set up a website that was a copy of the Complainant’s legitimate site, apparently in furtherance of a phishing scheme. By the time the Complainant detected <beobankbe-nieuwupplan.pro>, there was no active website there. The Complainant also presented evidence that the Respondents set up the disputed domain names to send email as part of its phishing scheme.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s trademark; that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. All three of these elements are discussed below.
There are two named Respondents (two underlying registrants disclosed by the Registrar) - one for each of the disputed domain names. The Complainant requests that both be consolidated into this matter. More specifically, the Complainant has made the somewhat unusual-sounding request that the Panel “consider and approve that there is in fact only one Respondent using two probably fake/stolen identities.” Though the record does not support a finding that one person is engaged in identity theft and otherwise playing the role of two respondents, the Panel finds that Consolidation of the two named Respondents – regardless of whether it is one person or two – is proper. The two Respondents and disputed domain names are consolidated into this one case.
Paragraph 10(e) of the Rules states that a “[p]anel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”. Paragraph 10(c) of the Rules provides, in relevant part, that “the [p]anel shall ensure that the administrative proceeding takes place with due expedition”. Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) summarizes the consensus view of UDRP panels on the consolidation of multiple respondents and provides that where a complaint is filed against multiple respondents, panels consider whether the domain names or corresponding websites are subject to common control, and whether the consolidation would be fair and equitable to all parties.
The record indicates the disputed domain names are under common control. Both disputed domain names were registered relatively closely together in time. Both of the disputed domain names contain the Complainant’s mark BEOBANK. Both of the disputed domain names were registered in the name of the same privacy proxy provider and through the same registrar. Both of the disputed domain names have a similar structure (i.e., trademark + hyphen + added term + “.pro”). The Respondents have not presented any arguments as to why consolidation would be unfair or inequitable. Accordingly, conditions for proper consolidation of the two disputed domain names into one matter are present here.
B. Identical or Confusingly Similar
The incorporation of a trademark in its entirety is sufficient to establish that a disputed domain name is identical or confusingly similar to the Complainant’s registered mark. See, Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. In this case, the disputed domain names contain the Complainant’s trademark BEOBANK in its entirety. The addition of the Top-Level Domain (“TLD”) “.pro” to the disputed domain names does not avoid confusing similarity. Neither do the other letters and words in the disputed domain names avoid confusing similarity. The letters “be” in each of the disputed domain name are likely intended to refer to Belgium, the home country of the Complainant. And the words “startnu” and “nieuwupplan” indicate the meanings of “start now” and “new plan” in Dutch.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See, Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights because it has shown that it is the owner of the registered mark BEOBANK as noted above.
Accordingly, the Complainant has shown that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights and has prevailed on this first element of the Policy.
C. Rights or Legitimate Interests
The Complainant will be successful under this element of the Policy if it makes a prima facie showing that the Respondents lack rights or legitimate interests in the disputed domain names, and if that prima facie showing remains unrebutted by the Respondents.
The Complainant asserts, among other things, that the Respondents are not related in any way to the Complainant’s business: they are not the Complainant’s agents and do not carry out any activity for, or have any business with the Complainant. And the Complainant has granted no license or authorization to the Respondents to make any use, or apply for registration of the disputed domain names. Further, the Complainant is not and has never been related with or been in business with these Respondents. Moreover, the Complainant’s assert that the Respondents were not using the disputed domain name for any bona fide purpose. One of the disputed domain names was an imitation of the Complainant’s legitimate site and apparently a phishing site. Any website at the other disputed domain name had become inactive before the Complainant noticed it. But the Panel credits the Complainant’s unrebutted assertion that although the Complainant did not notice such use related to the second domain name, it would not be unreasonable to assume that it may have been used in the same way as the other one. Moreover, in the Panel’s opinion, both of the disputed domain names carry a risk of implied affiliation.
The Complainant’s assertions establish the Complainant’s prima facie case. The Respondents have not addressed these matters raised by the Complainant, and, there being no other basis in the record to overcome the Complainant’s prima facie showing, the Complainant has satisfied this second Policy element.
D. Registered and Used in Bad Faith
The Policy requires the Complainant to establish that the disputed domain names were registered and are being used in bad faith. Based on the available record, the Panel finds that the Respondents registered and used the disputed domain names in bad faith. Using the disputed domain names to set up fake websites for phishing purpose are strong examples of bad faith under the Policy. See, Samaritan’s Purse v. Domains By Proxy, LLC / Christopher Orientale NA, WIPO Case No. D2019-2403 and Golden Goose S.P.A. v. Whoisguard Inc. / Wei Zhang, WIPO Case No. D2017-2444. While it is not clear that one of the disputed domain names has been used in this manner, both of the disputed domain names carry a risk of implied affiliation which means Internet users are likely to be confused into believing that the domain names are sponsored or authorized by the Complainant.
Accordingly, the Complainant has satisfied this third element of the Policy.
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 <beobankbe-nieuwupplan.pro> and <beobankbe-startnu.pro> be transferred to the Complainant.
Evan D. Brown
Date: March 9, 2020