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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Belfius Bank S.A., Belfius Bank N.V. v. WhoisGuard Protected, WhoisGuard, Inc. / Dob Dob

Case No. D2020-3281

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Dob Dob, Germany.

2. The Domain Name and Registrar

The disputed domain name <belfius.site> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2020. On December 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 7, 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 December 16, 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 December 30, 2020.

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 January 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 5, 2021.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on February 16, 2021. 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 in this administrative proceeding is Belfius Bank S.A., a Belgian bank with more than 5,000 employees and over 650 agencies. The bank is 100% government-owned.

The Complainant is the owner of numerous trademarks incorporating iterations of “BELFIUS”, which is an invented word.

The Complainant has provided evidence of rights in the BELFIUS trademarks, which enjoy protection through numerous registrations.

The Complainant has registered, inter alia, the following trademarks:

- BELFIUS (word), European Union Trade Mark No. 010581205, registered on May 24, 2012;
- BELFIUS (word), Benelux Trademark No. 0914650, registered on May 10, 2012;
- BELFIUS (device), Benelux Trademark No. 0915963, registered on June 11, 2012;
- BELFIUS (device), Benelux Trademark No. 0915962, registered on June 11, 2012;

The Complainant is also the registered owner of numerous domain names including the term “BELFIUS”, inter alia <belfius.be> and <belfius.com>.

The disputed domain name was registered on October 12, 2020. Currently the corresponding website is not active. Indeed, from the document provided by the Complainant it appears that the disputed domain name, does not resolve to an active webpage and is subject to a safety warning from Google informing internet users that attackers on <belfius.site> may trick them into doing something dangerous such as installing software or revealing their personal information.

The Complainant’s trademark registrations predate the registration of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant claims that:

(a) the disputed domain name is identical or at least confusingly similar to the Complainant’s trademark;
(b) the Respondent lacks any rights or legitimate rights in the disputed domain name; and
(c) the Respondent has registered and is using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The only difference between the disputed domain name and the Complainant’s BELFIUS trademark is the addition of the generic Top-Level Domain (“gTLD”) suffix “.site”. The Panel considers that the use of the gTLD is irrelevant in assessing the confusing similarity between the Complainant’s trademarks and the disputed domain name.

Therefore, the Panel finds the disputed domain name to be identical to the BELFIUS trademark in which the Complainant has rights.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

This Panel finds that the Complainant has made a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent does not appear to be commonly known by the name “belfius” or by any similar name. The Respondent has no connection to or affiliation with the Complainant and the Complainant has not licensed or otherwise authorized the Respondent to use or register any domain name incorporating the Complainant’s trademarks. The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services. In fact the disputed domain name does not resolve to an active webpage and is subject to a safety warning from Google. Moreover, the Respondent has not replied to the Complainant’s contentions to claim any rights or legitimate interests in the disputed domain name. In addition, the disputed domain name being identical to the Complainant’s BELFIUS trademark carries a high risk of implied affiliation.

The Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy

C. Registered and Used in Bad Faith

The Panel, based on the evidence presented, accepts and agrees with the Complainant’s contentions that the disputed domain name was registered and has been used in bad faith.

Indeed, the Complainant gives several bases for its contention that the disputed domain name was registered and is being used in bad faith.

The disputed domain name was registered years after the Complainant’s trademarks. In addition, owing to the substantial presence established on the internet by the Complainant, who has registered more than 200 gTLDs and country code Top-Level Domains (“ccTLDs”) worldwide which incorporate the trademark BELFIUS as a domain name, it is at the least very unlikely that the Respondent was not aware of the existence of the Complainant’s trademarks when registering the disputed domain name identical to the Complainant’s trademark.

The bad faith registration and use of the disputed domain name is also affirmed by the fact that the Respondent has not responded to, let alone denied, the assertions of bad faith made by the Complainant in this proceeding. The Respondent also did not reply to the cease and desist notice sent by the Complainant.

Another factor supporting the conclusion of bad faith registration and use of the disputed domain name is given by the fact that the Respondent deliberately chose to conceal its identity by means of a privacy protection service. While the use of a privacy or proxy registration service is not in and of itself an indication of bad faith, it is the Panel’s opinion that in the present case the use of a privacy shield, combined with the elements discussed here, amounts to a further inference of bad faith registration and use.

Further, the Panel finds that the passive holding of the disputed domain name in the circumstances of the case does not prevent a finding of bad faith registration and use.

Finally, on the balance of probability, a further circumstance supporting the bad faith seems to be assumable from the security warning displayed on internet browsers, indicating the danger of illicit activities effected by means of the disputed domain name.

Accordingly, the Panel finds, based on the evidence presented, that the Respondent registered and is using the disputed domain name in bad faith. Therefore, the Complainant has satisfied paragraph 4(a)(iii) 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 <belfius.site> be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist
Date: March 2, 2021

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