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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Belfius Bank S.A. / Belfius Bank N.V. v. Registration Private, Domains By Proxy, LLC / Lawrence Rees

Case No. D2020-1847

1. The Parties

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

The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Lawrence Rees, Spain.

2. The Domain Name and Registrar

The disputed domain name <belfiusuk.org> (“Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2020. On July 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 17, 2020, 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 Center sent an email communication to the Complainant on July 20, 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 an amended Complaint on July 24, 2020.

The Center verified that the Complaint and 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 July 29, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 18, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 19, 2020.

The Center appointed Alistair Payne as the sole panelist in this matter on August 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 is Belfius Bank S.A. / Belfius Bank N.V. a Belgian government owned bank with 5,000 employees and over 650 agencies. The Complainant is the registered owner of a number of Belgian and European Union trade marks for BELFIUS including European Union Trade Mark (“EUTM”) no. 010581205 for BELFIUS registered on May 24, 2012.

The Complainant owns a number of domain names incorporating its BELFIUS mark and its main company website is at <belfius.be>. This domain name was registered on January 23, 2012.

The Disputed Domain Name was registered on June 16, 2020. Currently the Disputed Domain Name does not resolve to an active webpage, but initially it redirected to the official website of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant asserts it has registered rights in the EUTM for BELFIUS described above.

The Complainant submits that the Disputed Domain Name is identical or confusingly similar to its trade mark. The Complainant explains that its trade mark is made up of an invented word composed of “Bel” as in Belgium, “fi” as in finance and the English word “us”. The Complainant submits that the Disputed Domain Name incorporates its trade mark but for the inclusion of the letters “uk” and the generic Top-Level Domain (“gTLD”) “.org”. In respect of this point, the Complainant notes that the addition of “uk” does not change the overall impression of the Disputed Domain Name. Further, the Complainant notes that the addition of the gTLD suffix “.com” should be ignored, as it is a standard registration requirement.

The Complainant says that its various trade mark registrations for BELFIUS predate the Respondent’s registration of the Disputed Domain Name. The Respondent is in no way associated with the Complainant. The Complainant has not licensed, approved or in any way consented to the Respondent’s registration and use of the trade mark in the Disputed Domain Name.

The Complainant submits that the Respondent has no trade mark rights in BELFIUS and does not seem to carry out any activity in relation to it, noting that it does not currently redirect to an active website and there is no indication that the Respondent has made any demonstrable preparations to use the Disputed Domain Name. In addition, the Complainant says that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. In summary, the Complainant says that the Respondent is making a passive holding or non-use of the Disputed Domain Name, which in the circumstances amounts to evidence of a lack of rights or legitimate interests in the Disputed Domain Name.

As far as bad faith is concerned, the Complainant submits that its EUTM registration, as noted above, was registered in 2012, whereas the Disputed Domain Name was only registered on June 16, 2020. The Complainant notes that it has established a substantial presence on the Internet and has registered more than 200 gTLDs and country-code Top-Level Domains (“ccTLDs”) worldwide, which incorporate the trade mark BELFIUS as a domain name and amongst them is <belfius.com> and <belfius.be>. The Complainant says that it is clear that the Respondent had, or should have had, knowledge of the Complainant’s Internet presence, and trade mark, when it registered the Disputed Domain Name and that numerous UDRP panels have found that a Respondent’s awareness of the Complainant’s trade mark rights at the time of registration suggests bad faith. The Complainant further says that its trade mark is a distinctive coined term and the fact that it is contained within the Disputed Domain Name, together with the addition of “uk”, cannot be a coincidence. In summary, the Complainant submits that it is not conceivable that the Disputed Domain Name has been registered by the Respondent without having in mind the Complainant and the Complainant’s products.

The Complainant notes that the Respondent registered the Disputed Domain Name in June 2020 and seems to have done nothing with the website to which the Disputed Domain Name resolves, since no content is displayed on it. Such use, says the Complainant, can neither be considered a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the Disputed Domain Name. Neither says the Complainant is there any evidence of use or of demonstrable preparations to use the Disputed Domain Name, or that the Respondent was ever known by the Disputed Domain Name.

Although, according to the Complainant, the Disputed Domain Name originally diverted to the Complainant’s own website, at the time of bringing this Complaint the Disputed Domain Name does not resolve to an active webpage and the Complainant submits that this amounts to a passive holding, which in circumstances that it is difficult to imagine any plausible bona fide activity, amounts to use in bad faith. In addition, says the Complainant, the Respondent’s use of a privacy service to conceal its identity and its provision of incomplete contact details makes it impossible to conceive any plausible, actual, or contemplated active use of the Disputed Domain Name by the Respondent in good faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns EUTM registration no. 010581205 for BELFIUS, registered on May 24, 2012. The Disputed Domain Name wholly incorporates the Complainant’s very distinctive BELFIUS mark. Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s BELFIUS mark. The addition, after the mark BELFIUS but before the gTLD “.org”, of the geographical abbreviation “uk” which the Panel takes to be a reference to the United Kingdom, does not detract from the Panel’s finding of confusing similarity. As a result, the Complaint succeeds under the first element of the Policy.

B. Rights or Legitimate Interests

The Complainant has submitted that its various trade mark registrations for BELFIUS predate the Respondent’s registration of the Disputed Domain Name. The Panel notes that the mark BELFIUS is a coined term and finds that it is highly distinctive.

The Complainant has submitted that the Respondent is in no way associated with the Complainant and that the Complainant has not licensed, approved or in any way consented to the Respondent’s registration and use of the trade mark in the Disputed Domain Name. The Complainant has submitted that the Respondent has no trade mark rights in BELFIUS and does not seem to carry out any activity in relation to it, noting that it does not currently re-direct to an active website and there is no indication that the Respondent has made any demonstrable preparations to use the Disputed Domain Name. In addition, the Complainant has submitted that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.

The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Respondent has failed to rebut this case. It appears to the Panel that the Respondent is making a passive holding of the Disputed Domain Name. Accordingly, the Complaint also succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

The Complainant’s EUTM registration, as noted above, was registered in 2012, many years before the Disputed Domain Name was registered on June 16, 2020. It appears that the Complainant’s mark enjoys a considerable degree of renown in Belgium and that the Complainant has a substantial presence on the Internet where it has registered more than 200 gTLDs and ccTLDs worldwide which incorporate the trade mark BELFIUS as a domain name, including <belfius.com> and <belfius.be>.

The Panel notes that the BELFIUS mark is a distinctive coined term and in all of the circumstances it appears to the Panel that the fact that the Complainant’s mark is contained within the Disputed Domain Name together with the addition of “uk” cannot be a coincidence. In addition, it is notable that the Disputed Domain Name originally resolved to the Complainant’s main website featuring its BELFIUS mark. For these reasons, the Panel finds that it is more likely than not the Respondent was well aware of the Complainant’s BELFIUS mark when it registered the Disputed Domain Name.

Currently, the Disputed Domain Name does not resolve to an active webpage and the Complainant submits that this amounts to a passive holding, which in circumstances that it is difficult to imagine any plausible bona fide activity, amounts to use in bad faith. At section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), it is noted in relation to passive holding cases, that while 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.

In this case all of these factors are present. The BELFIUS mark clearly enjoys a considerable reputation in Belgium and no doubt enjoys a degree of reputation in international banking circles as a nationally owned bank based in Belgium. The Respondent has failed to submit a response or to provide any evidence of actual or contemplated good faith use and the Respondent has sought to conceal its identity using a privacy service. Finally, in light of the coined and highly distinctive nature of the Complainant’s BELFIUS mark and the obvious attempt of the Respondent to add in the geographical abbreviation “uk”, the Panel cannot see any plausible bona fide use to which the Respondent could put the Disputed Domain Name that would not involve an attempt to trade on the goodwill and reputation attaching to the Complainant’s trade mark.

As a result, the Panel finds that the Respondent’s passive holding of the Disputed Domain Name amounts to bad faith use.

The Panel’s view of the Respondent’s bad faith is only reinforced by the Respondent’s attempt to mask its identity by using a privacy service.

For these reasons the Panel finds that the Disputed Domain Name has been both registered and used in bad faith and the Complaint succeeds under this element of 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 <belfiusuk.org> be transferred to the Complainant.

Alistair Payne
Sole Panelist

Date: September 7, 2020

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