WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Belfius Bank S.A. and Belfius Bank N.V. v. Oleg Ivlev

Case No. D2020-3525

1. The Parties

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

The Respondent is Oleg Ivlev, Russian Federation.

2. The Domain Name and Registrar

The disputed domain name <betaalservice-belfius.info> is registered with Registrar of Domain Names REG.RU LLC (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 28, 2020, the Registrar transmitted by email to the Center its verification response. The Center sent an email in English and Russian regarding the language of the proceedings. On December 30, 2020, the Complainant requested English to be the language of the proceedings. The Respondent has not replied on the language of the proceedings. The Complainant filed an amended Complaint with language of proceedings arguments 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 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2021.

The Center appointed Clark W. Lackert 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 is a financial institution based in Belgium that provides banking, finance, and insurance services under BELFIUS word and design marks. Its activities are primarily within Belgium, but it enjoys multinational exposure in response to from various sport club and event sponsorships. Complainant owns the <belfius.be> domain name and actively uses this address to offer and advertise its services.

The Complainant’s registered trademarks include European Union Trade Mark BELFIUS with registration No. 010581205, registered on May 24, 2012, and Benelux trademark BELFIUS with registration No. 914650, registered on May 10, 2012. The Complainant also owns the <belfius.com> domain name, and uses this to promote its services to industry partners and the media.

The disputed domain name was registered on September 3, 2020 and there is no evidence that it has been used to display content. The Complainant became aware of the registration through its domain monitoring program, and transmitted an email to the Respondent’s email address of record on October 30, 2020 detailing its rights in BELFIUS and potential for the disputed domain name to mislead consumers to presume that the disputed domain name is endorsed by or somehow connected to the Complainant.

The Respondent did not reply to the Complainant’s email objection, and did not respond to this Complaint.

5. Parties’ Contentions

A. Complainant

The Complainant cites existing rights in the BELFIUS mark in word and design forms including registrations in the European Union, and Benelux (i.e., Belgium, Netherlands, and Luxembourg) covering financial services in Class 36. The Complainant also notes that it trades under the name “Belfius” in various forms and owns the domain name registrations for <belfius.be> and <belfius.com>.

The Complainant argues that the “.info” portion of the domain name should not be evaluated for confusing similarity because it is a generic Top-Level Domain (“gTLD”) extension. As such, the Complainant emphasizes that confusing similarity is evident because the disputed domain name incorporates the BELFIUS mark in its entirety and combines this mark with the terms “betaal” and “service” which the Complainant dismisses as non-distinctive because they communicate payment services. The Complainant alleges that its mark is well-known, and that confusing similarity is evident because other terms in the domain name suggests the nature of services provided by the Complainant.

Absence of legitimate noncommercial or fair use and passive holding are cited by the Complainant as evidence that the Respondent does not have rights or legitimate interests. The Complainant also emphasizes that it has no relationship with the Respondent and has not licensed, approved, or consented to the Respondent’s registration and use of the disputed domain name.

The Complainant maintains that the Respondent should have known of its rights in the BELFIUS mark when registering the disputed domain name, and that inclusion of the terms “betaal” and “service” in the disputed domain name confirms that the Respondent had knowledge of the Complainant’s rights and its activities. The Complainant also alleges bad faith use because no content has been posted at the disputed domain name and there is no indication that the disputed domain name has been associated with a legitimate business. These arguments cite passive holding as evidence of bad faith use.

The Complainant also cites the Respondent’s efforts to conceal its identity and the Respondent’s failure to provide complete contact details for the registration as further evidence of bad faith.

B. Respondent

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

6. Discussion and Findings

A. Proceeding Language

The Complaint was filed in English, however the Registrar has confirmed that the registration agreement for the disputed domain name is in Russian. The Complainant argues that the proceeding should be allowed to continue in the English language because the domain name is composed of Latin characters (rather than the Cyrillic script of Russian) and notes that prior panels have accepted dual language proceedings in the past. The Complainant has also expressed that translation of the Complaint and its supporting Annexes would result in extensive expenses and delay.

The Rules promote use of a proceeding language that conforms with the registration agreement for the domain name(s) at issue. However, use of a different language is permitted if facts and circumstances indicate that deference will not result in unequal treatment or present unfair opportunities. Potential for unjustified delay is also a relevant factor. See paragraph 11(a) of the Rules (concerning language formalities) and paragraphs 10(a) and 10(c) of the Rules (detailing the need to account for overall proceeding objectives when addressing language discrepancies).

Because no objection has been raised and there is nothing in the file demonstrating an overriding need to change course at this point, the Panel finds that the proceeding should conclude in English to promote expedition and avoid unnecessary costs associated with translation.

B. Identical or Confusingly Similar

The Complainant owns registered rights in the BELFIUS mark that precede registration of the disputed domain name by many years. The BELFIUS mark is a unique term that does not convey a discernable message other than the one created by the Complainant by combining Bel with fi and us to communicate “Belgium finances us”. The complainant’s registered rights include protection for a broad range of financial services, and the Complainant actively promotes banking, finance, and insurance services under its BELFIUS mark at its websites available at <belfius.be> and <belfius.com>.

The disputed domain name incorporates the Complainant’s unique BELFIUS mark in its entirety. This is enough to find confusing similarity. See, e.g., Xerox Corporation v. Imaging Solution, WIPO Case No. D2001-0313 (finding use of the XEROX trademark in its entirety in <xeroxdealers.com> “sufficient to justify” a finding of confusing similarity).

The additional literal components in the disputed domain name do not prevent a finding of confusing similarity. The term “betaal” is Dutch for the English word “pay”, and the term “service” are precisely the nature of the Complainant’s line of trade, i.e., pay service. Evaluation of the gTLD component is not necessary because the extensions are necessary for registration.

The requirements of paragraph 4(a)(i) of the Policy are satisfied.

C. Rights or Legitimate Interests

The record demonstrates that the Complainant has established its prima facie case. The Respondent has failed to provide any evidence of its separate rights or any legitimate interests in and to the disputed domain name.

The requirements of Paragraph 4(a)(ii) of the Policy have been satisfied due to absence of any evidence on behalf of the Respondent that may counter the Complainant’s prima facie case.

D. Registered and Used in Bad Faith

The Complainant’s BELFIUS mark is a unique term and its meaning is limited to that created by the Complainant and conveyed when used to promote the Complainant’s services. Prior panels have often cited the distinctiveness of the Complainant’s mark as evidence of a respondent’s knowledge the Complainant in decisions concerning domain names featuring BELFIUS. See, e.g., Belfius Bank S.A. / Belfius Bank N.V. v. Whois Privacy Protection Foundation / Mosj Inerio, WIPO Case No. D2020-1843 (holding that the respondent “must have been aware” of the Complainant’s BELFIUS mark when registering the <belfius-quarantine.com> domain name because it is a “coined, distinctive term identifying a major Belgian provider of financial services”); see also Belfius Bank S.A. / Belfius Bank N.V. v. Contact Privacy Inc. Customer 1242626048 / Maarten Bekkers, WIPO Case No. D2018-1802 (finding it “inconceivable” that the respondent was unaware of the Complainant and its mark when registering <belfius.app>).

The composition of the disputed domain name verifies awareness of the Complainant and its services. The “betaal” portion translates to English as “pay”, and this has been combined with the English word “service”. These terms convey the nature of offerings provided by the Complainant in connection with its BELFIUS mark, namely financial services. Any doubts are resolved by the disputed domain name’s adoption of the Dutch term for pay. The Flemish dialect of Dutch is widely used in the Complainant’s home country, and adoption of “betaal” in the disputed domain name reflects a knowledge of where the Complainant is based and directs its services.

There is no evidence of use of the disputed domain name to display or transmit content. However, overt actions are not always necessary for a finding of bad faith use. Each case has its own facts and circumstances, and the concept of “passive holding” may or may not rise to the level of bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The facts and circumstances here support a finding of bad faith use due to passive holding. The disputed domain name incorporates the Complainant’s unique BELFIUS mark in its entirety. A recent decision noted that use of the Complainant’s BELFIUS mark in a domain name presents a scenario where “almost no good faith use by an unconnected third party is imaginable”. Belfius Bank S.A. / Belfius Bank N.V. v. WhoisGuard Protected, WhoisGuard, Inc. / Didiane Cherte, WIPO Case No. D2020-3524 (finding bad faith elements were satisfied despite no evidence of use of the <belfius-alert.app> domain name). The Panel agrees that the unique composition of the Complainant’s mark weighs against the Respondent, and that bad faith use in this case is confirmed by additional factors including (i) the Respondent’s failure to respond to the Complainant’s cease and desist notice, (ii) the Respondent’s failure to acknowledge this proceeding, and (iii) evidence that the Respondent furnished inaccurate and incomplete contact information to the Registrar for WhoIs records. These factors are delineated as appropriate evidence of bad faith use by Section 3.3 of WIPO Overview 3.0, and have been cited as evidence of bad faith use in similar contexts. See, e.g., Societe des Eaux dee Volvic v. Yasushi Okabayashi / Kikakusha, Tokorozawa-shi, WIPO Case No. D2004-0304 (bad faith registration combined with the respondent’s failure to respond to the complaint or offer an explanation supported finding of bad faith use); see also Banco Original do Agronegócio S.A. v. Private Registration, WIPO Case No. D2013-2037 (citing inaccurate contact information and lack of legitimate use). The Panel notes that the Center was unable to serve a physical copy of the Complaint in this matter, with the courier service indicating that the address of record could not be located. The Panelist also notes that the Center was unable to fax the Complaint to the Respondent’s documented number despite its several attempts, and that the related reports indicates that no connection could be established.

The Panelist finds that the requirements paragraph 4(a)(iii) of the Policy have been satisfied.

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 <betaalservice-belfius.info> be transferred to the Complainant.

Clark W. Lackert
Sole Panelist
Date: March 3, 2021