WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Belfius Bank S.A. / Belfius Bank N.V. v. Toh Moussa Soro (T.S.)
Case No. D2021-2229
1. The Parties
The Complainant is Belfius Bank S.A. / Belfius Bank N.V1., Belgium, represented internally.
The Respondent is Toh Moussa Soro (T.S.), France.
2. The Domain Name and Registrar
The disputed domain name <belfiustransaction-fonds.com> (the “Domain Name”) is registered with Hosting Concepts B.V. d/b/a Registrar.eu. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 9, 2021. On July 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 13, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 14, 2021 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 July 16, 2021.
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 July 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 22, 2021.
The Center appointed Nicholas Smith as the sole panelist in this matter on August 30, 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 services company, based in Belgium, with over 5,000 employees providing its services from 650 locations. The Complainant trades and promotes its services under a trade mark consisting of the word “BELIFUS” (the “BELFIUS Mark”) a coined word comprised of the elements “bel” (short for Belgium), “fi” (short for finance) and the English word “us”.
The Complainant is the owner of trade marks in various jurisdictions for the BELFIUS Mark including European Union Registration No. 10581205, registered on May 24, 2012, for goods and services in classes 9, 16, 35, 36, 41 and 45 including banking and financial services.
The Domain Name was registered on April 18, 2021 and does not resolve to an active website.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s BELFIUS Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the BELFIUS Mark, having registered the BELFIUS Mark in the European Union. The Domain Name is confusingly similar to the BELFIUS Mark as the BELFIUS Mark is fully contained in the Domain Name, along with the additional words “transaction” and “fonds” (“funds” in French).
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known as the Domain Name nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather the Respondent is using the Domain Name at all.
The Domain Name was registered and is being used in bad faith. There is no plausible circumstance under which the Respondent could use the Domain Name, which contains the BELFIUS Mark and the additional words “transaction” and “fonds”, other than to falsely create an impression of an association with the Complainant. In such circumstances, the Respondent’s passive holding of the Domain Name amounts to use of the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the BELFIUS Mark, having a registration for the BELFIUS Mark as a trade mark in the European Union and various other jurisdictions.
The Domain Name incorporates the BELFIUS Mark in its entirety with the addition of the dictionary terms “transaction” and “fonds”. The addition of a dictionary term to a complainant’s mark does not prevent confusing similarity, see Wal-Mart Stores, Inc. v. Henry Chan, WIPO Case No. D2004-0056. The Panel finds that the Domain Name is confusingly similar to the Complainant’s BELFIUS Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant may make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 are making 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 Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the BELFIUS Mark or a mark similar to the BELFIUS Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.
There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. In fact, there is no evidence of any demonstrable preparations to use the Domain Name at all.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights or legitimate interests in the Domain Name. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) the Respondent has registered the 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 Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the 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 Domain Name was registered over eight years after the BELFIUS Mark was registered. The Panel finds, on the balance of probabilities, that the Respondent would have been aware of the Complainant and its reputation in the BELFIUS Mark at the time the Respondent registered the Domain Name. There is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register a domain name incorporating the coined BELFIUS Mark and the words “transaction” and “fonds” (descriptive terms that relate directly to the services provided by the Complainant under the BELFIUS Mark) unless, as suggested by the Complainant and not denied by the Respondent, there was an intention to create a likelihood of confusion between the Domain Name and the BELFIUS Mark for an illegitimate purpose.
The Panel is prepared to infer, based on the conduct of the Respondent, including the nature of the Domain Name, the passive holding of the Domain Name and the failure by the Respondent to participate in this proceeding or otherwise provide any explanation of its conduct, that the Domain Name is most likely being held pending use as website or email address that, without the license of the Complainant, will offer or make reference to the Complainant in an illicit manner for the Respondent’s commercial gain. As such, the Panel finds that the passive holding of the Domain Name does not prevent a finding of use in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
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, <belfiustransaction-fonds.com> be transferred to the Complainant.
Date: September 1, 2021
1 The Complainant is a single entity, apparently known as Belfius Bank S.A in the Walloon region of Belgium and Belfius Bank N.V in the Flemish region.