WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Belfius Bank S.A. / Belfius Bank N.V. v. Wu Yu

Case No. D2021-1879

1. The Parties

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

The Respondent is Wu Yu, China.

2. The Domain Name and Registrar

The disputed domain name <belfiusapp.com> (“the Domain Name”) is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2021. On June 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 16, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 June 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2021.

The Center appointed Jeremy Speres as the sole panelist in this matter on July 28, 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 uncontested facts are as follows. The Complainant is a bank and financial services provider focusing on the Belgian market and is wholly owned by the Belgium government with over 5,000 employees and 650 branches in Belgium. The Complainant has, since 2012, traded under the BELFIUS mark, which is an invented term formed as a portmanteau of “Belgium”, “finance” and “us”.

The Complainant owns various trade mark registrations for the BELFIUS mark in the European Union Trade Mark and Benelux registries, notably European Union Trade Mark registration number 010581205 for the BELFIUS word mark in classes 9, 16, 35, 36, 41 and 45 registered on May 24, 2012.

The Domain Name was registered on March 7, 2021 and has, at various times, resolved to websites relating to a bitcoin investment scheme, an online game as well as parked pages displaying pay-per-click (“PPC”) links for cloud service providers and offering the Domain Name for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its mark, that the Respondent has no rights or legitimate interests in it, and it was registered and used in bad faith given that it incorporates the entirety of the Complainant’s well-known mark and the Respondent either knew or should have known about the Complainant’s mark prior to registration of the Domain Name.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Where the trade mark is recognisable in the domain name, the addition of other terms does not prevent a finding of confusing similarity (“WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 1.8). The Complainant’s registered BELFIUS trade mark is the first and most prominent element of the Domain Name and the remainder, apart from the generic Top-Level Domain, consists of the common dictionary term “app”, which does not render the Complainant’s mark unrecognisable. The Complainant has thus satisfied the standing requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests and the burden of production thus shifts to the Respondent (WIPO Overview 3.0 at section 2.1).

The Complainant’s mark was registered and well known long prior to registration of the Domain Name, as confirmed in numerous UDRP cases independently researched by the Panel (e.g. Belfius Banque S.A./ Belfius Bank NV v. Contact Privacy Inc. Customer 1242626048 / Maarten Bekkers, WIPO Case No. D2018-1802). UDRP panels may undertake limited factual research into matters of public record (WIPO Overview 3.0 at section 4.8). The Domain Name is confusingly similar to the Complainant’s mark and the Complainant has certified that the Domain Name is unauthorised by it. There is no evidence that any of the circumstances set out in paragraphs 4(c)(ii) and (iii) of the Policy pertain.

Regarding paragraph 4(c)(i) of the Policy, none of the websites to which the Domain Name has resolved mention “belfiusapp” or “belfius”. The term “belfius” is an invented, well-known term and highly specific to the Complainant. It has no semantic value which the Respondent might, in good faith, have sought to use. Thus, the choice of the Domain Name seems entirely incongruous with the content of the websites to which it has resolved. Without any Response, there is no explanation as to why there could be any legitimate reason to register the Domain Name incorporating the Complainant’s well-known trade mark for unrelated goods or services of third parties, and it is therefore likely that the Domain Name was registered in order to take unfair advantage of the Complainant’s mark (Boursorama S.A. v. Pencreach Jacques, WIPO Case No. D2021-1195). Furthermore, the nature of the Domain Name, comprising the Complainant’s well-known trade mark and a descriptive term relevant to the Complainant’s business, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates the Complainant (WIPO Overview 3.0 at section 2.5.1). Default too indicates a lack of rights or legitimate interests in the circumstances of this case (see GA Modefine S.A. and Giorgio Armani S.p.A. v. Yoon-Min Yang, WIPO Case No. D2005-0090).

The Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant’s mark is an invented term with no ordinary meaning and highly specific to the Complainant. This indicates that the Domain Name was registered with the Complainant’s mark in mind (Bayer Aktiengesellschaft v. H. Monssen, WIPO Case No. D2003-0275). The Panel has independently established that the Complainant offers its own banking app. The addition of a descriptive term relating to the Complainant’s services only strengthens this conclusion (WIPO Overview 3.0 at section 3.2.1).

As previously noted, the Domain Name has, at various times, resolved to websites relating to a bitcoin investment scheme, an online game as well as parked pages displaying PPC links for cloud service providers and offering the Domain Name for sale. The Panel find that paragraph 4(b)(iv) of the Policy is applicable here

The Panel has independently established that the Respondent has been found to have acted in bad faith by at least one, but probably more, UDRP Panels. The Panel has verified, using publically accessible historical WhoIs data, that the Respondent was the unsuccessful respondent in Indeed Inc. v. Wu Yu, WIPO Case No. DQA2019-0002, based on the Respondent’s email address. There are numerous other UDRP cases decided against a respondent named “Wu Yu” of China, including of the same province as the Respondent.

The Panel has independently established, through publically accessible reverse WhoIs databases, that the Respondent is, or was in the past, the registrant of almost 4,000 domain names, many of which seem to have been registered in bad faith, taking advantage of well-known trade marks, e.g. <blizzardgames.us> (legitimate site of well-known games producer: “www.blizzard.com”), which is offered for sale with a minimum price of EUR 800; <facebk.cm>, used for PPC advertising relating to Facebook and offered for sale; <fastandfurious8sitemoviemad.us>, taking advantage of the well-known movie franchise FAST & FURIOUS, used for PPC advertising and offered for sale with a minimum price of USD 800; and <suzukibikes.us>, also used for PPC advertising relating to the well-known motorbike brand SUZUKI and offered for sale.

The present case would appear consistent with this modus operandi. It is clear that the Respondent has engaged in a pattern of bad faith registration and use of third party trade marks and this case is merely a continuation of that pattern. A pattern of bad faith conduct is relevant in assessing bad faith generally (WIPO Overview 3.0 at sections 3.2.1 and 3.2.2), and paragraph 4(b)(ii) of the Policy is eminently applicable here.

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 Domain Name <belfiusapp.com> be transferred to the Complainant.

Jeremy Speres
Sole Panelist
Date: August 6, 2021