WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

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

Case No. D2020-3382

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 / Kees Koning, Netherlands.

2. The Domain Name and Registrar

The disputed domain name <belfiusmobile.com> 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 11, 2020. On December 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 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 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 an amended Complaint on December 18, 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 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 4, 2021.

The Center appointed Torsten Bettinger as the sole panelist in this matter on February 12, 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, 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.

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

The disputed domain name was registered by the Respondent on September 5, 2020. The website to which the disputed domain name resolves seems to be inactive and contains a security warning displayed by the Internet browser.

5. Parties’ Contentions

A. Complainant

The Complainant has presented evidence that at the time of filing, the disputed domain name resolves to a security warning blocking access to the website.

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case. With regard to the requirement of identity or confusing similarity between the trademark and the disputed domain name pursuant to paragraph 4(a)(i) of the Policy, the Complainant asserts that:

- “Belfius” is an invented word composed of “Bel” as in Belgium, “fi” as in finance and the English word “us”;
- the generic Top-Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark;
- by incorporating the Complainant’s BELFIUS trademark in its entirety, the disputed domain name is confusingly similar to the Complainant’s trademark;
- the mere adjunction of the generic term “mobile” does not negate the confusingly similarity between the disputed domain name and the Complainant’s trademark, but on the contrary the word “mobile” strengthens the association with Complainant and its BELFIUS trademark as it refers to the activities of the Complainant.

With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant submitted that:

- the Respondent lacks any rights or legitimate interests in respect of the disputed domain name;
- the Complainant’s trademark registrations for BELFIUS predate the Respondent’s registration of the Disputed Domain Name;
- that the Respondent is in no way associated with the Complainant and has not licensed, approved or in any way consented to the Respondent’s registration and use of the trademark in the disputed domain name;
- the Respondent has no trademark rights on BELFIUS and does not seem to carry out any activity;
- the Respondent lacks any rights or legitimate interests in respect of the disputed domain name;
- the Respondent is not making any use of the disputed domain name in connection with an active website or even indicating demonstrable preparations to use the disputed domain name.

Furthermore, relying on American Home Products Corporation vs. Ben Malgioglio, WIPO Case No. D2000-1602 the Complainant argues that the passive holding or non-use of domain names is, in appropriate circumstances, evidence of a lack of rights or legitimate interests in the domain names.

Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant argues that:

- the Community trademark of the Complainant is registered since 2012, whereas the disputed domain name is registered since September 5, 2020;
- the Respondent thus either knows or should have known of the Complainant’s trademark or else exercised the kind of willful blindness that numerous panels have held support a finding of bad faith;
- if the Respondent had conducted some good faith searches before registering the Disputed Domain Name, it would have readily found reference to the Complainant and appreciated the likelihood of confusion between the Disputed Domain Name and Complainant;
- the Complainant has established a substantial presence on the Internet and has registered the domain names <belfius.com> and <belfius.be>;
- the Respondent had or should have had knowledge of the Complainant’s trademark and business at the time when it registered the disputed domain name, as it incorporates the trademark BELFIUS in its entirety with the addition of the word “mobile”;
- the Respondent seems to have done nothing lawful with the website to which the disputed domain name resolves;
- the fact that security warning were displayed by the Internet browser indicates that the domain name was used for illicit activities;
- 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;
- there is obviously no evidence indicating that the Respondent has ever been commonly known by the disputed domain name or demonstrable preparations to use and there is no evidence that the Respondent has ever been commonly known by the Disputed Domain Name;
- 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 name by the Respondent that would be legitimate and not infringing the Complainant’s well-known mark or unfair competition and consumer protection legislation;
- that the concealment of the Respondent’s identity is an indication of bad faith, as this was not inspired by a legitimate need to protect Respondent’s identity but solely to make it difficult for the Complainant to protect its trademark rights.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns multiple trademark registrations for the mark BELFIUS in the European Union and the BENLUX countries prior to the registration of the disputed domain name on September 5, 2020.

It is well-established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the trademark is used or other marketing and use factors usually considered in trademark infringement cases. (See sections 1.1.2 and 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

In this case, the disputed domain name only differs from the Complainant’s trademark BELFIUS by the addition of the term “mobile” which may refer to mobile telecommunications services and may therefore be perceived by consumers as a descriptive term referring to Complainant’s services provided through mobile telecommunication. The addition of merely descriptive wording to a trademark in a domain name does therefore not prevent a finding of confusing similarity under the first element of the UDRP (see section 1.8 of WIPO Overview 3.0).

Finally, it has been long established under the UDRP decisions that the generic Top-Level Domains (“gTLDs”), designation such as “.com”, “.net”, and “.org”, are typically not to be taken into account when assessing the issue of identity and confusing similarity, except in certain cases where the applicable gTLD may itself form part of the relevant trademark (see section 1.11 of WIPO Overview 3.0).

For the foregoing reasons the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s BELFIUS trademarks in which the Complainant has exclusive rights.

B. Rights or Legitimate Interests

A 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 you [the Respondent] 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 [the 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) you [the Respondent] 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.”

The Complainant has presented evidence that when accessing the disputed domain name the Internet browser displays a security warning blocking access to the website.

These assertions and evidence are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

The Respondent chose not to contest the Complainant’s allegations and has failed to come forward with any evidence to refute the Complainant’s prima facie showing that the Respondent lacks rights or legitimate interests. The Panel therefore accepts these allegations as undisputed facts.

In light of the circumstances of this case, including the level of reputation the Complainant has acquired in its BELFIUS marks in connection with financial services and the fact that when accessing the disputed domain name the browser displays a warning of illicit activities, the Panel concludes that the selection of the disputed domain name incorporating the Complainant’s BELFIUS Mark cannot be considered bona fide and that therefore the Respondent has no rights or legitimate interests in the disputed domain name as set forth by paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, 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 the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or

ii. the Respondent has registered the disputed 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 the Respondent has engaged in a pattern of such conduct; or

iii. the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

iv. by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Complainant holds multiple trademark registrations for the mark BELFIUS in the European Union, and other jurisdictions that predate the registration of the disputed domain name.

Given that the term BELFIUS is an invented word and that Complainant has used the BELFIUS trademarks in connection with banking and insurance services for many years, it is inconceivable that the Respondent coincidentally selected the disputed domain name without any knowledge of the Complainant and its trademark BELFIUS.

The Panel therefore concludes that the Respondent registered the disputed domain name in bad faith.

Based on the record in this proceeding it is also undisputed that when accessing the disputed domain the browser displays a warning of illicit activities.

The Panel infers from these facts that the Respondent intends to use the disputed domain name for illicit activities. This alone justifies a finding of bad faith use.

The fact that there is no evidence that the domain name has yet been actively used for illicit purposes does not prevent a finding of bad faith use.

Although the circumstances listed in Policy paragraph 4(b) are all phrased in terms of affirmative actions by the Respondent, it is by now well accepted that the passive holding of a website, in certain circumstances, can constitute bad faith use under the Policy. (See, e.g., Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483; Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; see also WIPO Overview 3.0, section 3.3.)

While UDRP panels 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. (See Telstra Corporation Limited v. Nuclear Marshmallows, supra; see also WIPO Overview 3.0, section 3.3.)

The circumstances of the present case are sufficiently similar to those present in Telstra to establish bad faith passive holding of the disputed domain name.

Based on the record in this proceeding, the Panel is satisfied that the Complainant’s BELFIUS mark is highly distinctive and renowned for financial services not only in Belgium but due to Complainant’s marketing activities most likely also in the Netherlands where the Respondent appears to be located.

Given that the Complainant’s BELFIUS mark is solely connected with the Complainant and does not have any generic or descriptive meaning, the disputed domain name is also not susceptible to be used in a good faith generic or descriptive sense. Finally, the Respondent has been concealing its identity.

The Panel therefore concludes that the Respondent’s registration and use is a clear-cut case of cybersquatting and that the Complainant has also satisfied their burden under 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, <belfiusmobile.com> be transferred to the Complainant.

Torsten Bettinger
Sole Panelist
Date: March 1, 2021