WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Belfius Bank S.A. and Belfius Bank N.V. v. WhoisGuard Protected, WhoisGuard, Inc. / Didiane Cherte
Case No. D2020-3524
1. The Parties
The Complainant is Belfius Bank S.A. and Belfius Bank N.V., Belgium, internally represented.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Didiane Cherte, Belgium.
2. The Domain Name and Registrar
The disputed domain name <belfius-alert.app> 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 24, 2020. On December 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 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 28, 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 January 27, 2021.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on February 3, 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 is a bank and financial services provider in Belgium with more than 5,000 employees and over 650 agencies.
The Complainant is also the registrant of the domain names <belfius.be> and <belfius.com>, which redirect to websites that it manages and controls.
The Complainant is the registered owner of several BELFIUS trademarks inter alia in relation to banking services in class 36. Among the most significant of these: the European Union Trade Mark (“EUTM”) registration No. 010581205 BELFIUS, filed on January 23, 2012 and registered on May 24, 2012; the Benelux registration No. 914650 BELFIUS, filed on January 23, 2012 and registered on May 10, 2012; and the Benelux registrations No. 915963 and 915962 BELFIUS (fig.), filed on March 2, 2012 and registered on June 11, 2012.
The disputed domain name was registered on October 8, 2020.
5. Parties’ Contentions
The Complainant points out that the disputed domain name completely incorporates its trademark BELFIUS and combines it with a descriptive term “alert”. The Complainant submits that panels have regarded incorporation of a trademark in its entirety as sufficient to establish that a domain name is identical or confusingly similar to a Complainant’s registered mark. At least, as here, a dominant feature of the relevant mark must be recognizable in the disputed domain name. According to the Complainant the addition of the term “alert” does not lessen the inevitable confusion with its trademark.
The Complainant also asserts that its trademark registrations of “Belfius” predates the Respondent’s registration of the disputed domain name. The Respondent is not associated with the Complainant, nor has the latter licensed, approved or in any way consented to the Respondent’s registration and use of the trademark. The Complainant also asserts that the Respondent has no trademark rights on “BELFIUS” and does not seem to carry on any activity, and that therefore there is no reason for the Respondent to adopt this word combination in a domain name. According to the Complainant, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, as he is not using it at all nor preparing to use it in any demonstrable manner. Passive holding or non-use of a domain name is, in appropriate circumstances, evidence of a lack of rights or legitimate interests in the disputed domain name concerned.
In terms of bad faith, the Complainant notes that its European Union Trade Mark was registered in 2012, the disputed domain name having been registered only on October 8, 2020. Thus the Respondent either had actual or constructive knowledge of the Complainant’s trademark, or else exercised the kind of willful blindness that numerous panels say supports a finding of bad faith. Some good faith searches before registering the disputed domain name would have located references to the Complainant.
The Complainant asserts that the Respondent has done nothing lawful with the website to which the disputed domain name resolves since it was registered. There is no evidence of actual or intended bona fide offering of goods and services and the passive holding of a domain name may amount to bad faith when it is difficult to imagine any plausible future use of the disputed domain names that would be legitimate and not infringing the Complainant’s rights.
The Complainant also says that the concealment of the Respondent’s identity is an indication of bad faith, as that here the use of a privacy filter service was not inspired by a legitimate need to protect the Respondent’s identity but solely to make it difficult for the Complainant to protect its trademark rights. The Respondent also did not reply to the cease-and-desist notice sent by the Complainant, which fact supports an inference of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant’s registered trademark. However, the Complainant’s BELFIUS trademark is clearly and readily recognizable in the disputed domain name. It forms its initial and most prominent part and is separated from the term “alert” by a dash, making it stand out even more. The Complainant’s trademark is a manufactured term with no ordinary descriptive meaning and wholly distinctive.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s BELFIUS trademark.
B. Rights or Legitimate Interests
There is nothing before the Panel to indicate that the Respondent has rights or legitimate interests in the disputed domain name. The disputed domain name does not resolve to an active website so there is no evidence of activity that could be legitimate. It is indeed difficult to imagine any activity that would be of a kind to vest rights or interests, given the distinctive nature of the Complainant’s trademark and the composition of the disputed domain name (reproducing the BELFIUS trademark in its entirety with the additional term “alert”). The Respondent has not been authorized to use the Complainant’s mark in any domain name or in any other manner, nor is there any indication that the Respondent has any trademark rights in the term “Belfius” or is carrying on any legitimate activity in relation to that mark or the services associated with it. The Respondent is not known in any way by reference to the BELFIUS trademark, and in any case has foregone the opportunity to make a case for rights or legitimate interests.
Therefore, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The registration of the BELFIUS trademark of the Complainant, its use in commerce, and its accrual of a commercial reputation long predate the registration of the disputed domain name. In any case, the careful construction of the disputed domain name clearly reflects knowledge of the relevant mark and the reputation that attaches to it. It is indeed nigh impossible to imagine any legitimate use the Respondent could make of the disputed domain name, and thus the inevitable conclusion is that the intention of the Respondent was to take advantage of the reputation vested in BELFIUS to attract consumers and derive some advantage from misleading them as to the connection between the disputed domain name and the Complainant. The fact that the Respondent has done nothing with the disputed domain name does not stand in the way of a finding of use in bad faith, all the more so in a case that concerns a trademark for which almost no good faith use by an unconnected third party is imaginable.
Therefore the Panel holds that the disputed domain name was registered and used in bad faith.
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-alert.app> be transferred to the Complainant.
William A. Van Caenegem
Date: February 12, 2021