WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Belfius Bank S.A. / Belfius Bank N.V. v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Barbi Girl, Bieren Lul, david jones, coinwallet, and kibu dolci

Case No. D2021-2869

1. The Parties

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

The Respondents are Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Barbi Girl, Sweden; Bieren Lul, the Netherlands; david jones, coinwallet, United States of America (“United States”); and kibu dolci, Belgium.

2. The Domain Names and Registrar

The disputed domain names <bank-belfius.info>, <bank-belfius.live>, <bank-belfius.site>, <belfiusbanking.net>, <belfiusmobile.cc>, <www-belfius-be.info>, <www-belfiusbe.info>, <www-belfius.info>, and <www-belfius.live> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2021. On September 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 2, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 2, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on September 6, 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 September 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 30, 2021.

The Center appointed Assen Alexiev as the sole panelist in this matter on October 11, 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 Belgian bank and financial services provider. It has more than 5,000 employees and over 650 agencies and is 100 percent state-owned. The Complainant is the owner of the domain name <belfius.be>, registered on January 23, 2012, which it uses for its official website offering banking and insurance services.

The Complainant is the owner of the European Union Trade Mark BELFIUS with registration No. 010581205, registered on May 24, 2012 for goods and services in International Classes 9, 16, 35, 36, 41, and 45 (the “BELFIUS trademark”).

The disputed domain names were registered as follows:

The disputed domain names are inactive.

5. Parties’ Contentions

A. Complainant

The Complainant submits that its name BELFIUS is an invented word composed of “bel” for “Belgium”, “fi” for “finance”, and the English word “us”. It states that the disputed domain names are confusingly similar to its BELFIUS trademark, because they incorporate the Complainant’s BELFIUS trademark with the addition of the elements “bank”, “banking”, “mobile”, and “www-”. According to the Complainant, these additional elements do not lessen the likelihood of confusion of the disputed domain names with the BELFIUS trademark, but rather strengthen their association with it.

According to the Complainant, the Respondents have no rights or legitimate interests in respect of the disputed domain names, because the registration of the BELFIUS trademark predates their registration, the Respondent is not associated with the Complainant, and the Complainant has not licensed the registration and use of its trademark in the disputed domain names. The Complainant points out that the disputed domain names are inactive, so the Respondents are not making any legitimate noncommercial or fair use of the disputed domain names.

The Complainant contends that the disputed domain names were registered and are being used in bad faith. It notes that it has substantial presence on the Internet, having registered more than 200 domain names in gTLDs and ccTLDs worldwide that incorporate the BELFIUS trademark, which was registered in 2012, while the disputed domain names were registered in June and July 2021. It notes that the disputed domain names all incorporate the BELFIUS trademark in its entirety, and some of them also contain the elements “bank”, “banking”, “mobile”, “be”, or “www-”. According to the Complainant, all this indicates that the Respondents were aware of the Complainant’s trademark when registering the disputed domain names, and appreciated the likelihood of confusion between the disputed domain names and the Complainant.

The Complainant submits that the Respondents have registered the disputed domain names in June and July 2021 but do not appear to have not used them for any legitimate activities. When one attempts to access the disputed domain names <bank-belfius.site>, <bank-belfius.live>, and <bank-belfius.info>, the Internet browser displays security warnings for illicit activities. According to the Complainant, such use cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. The Complainant further submits that the passive holding of the disputed domain names supports a finding of use in bad faith because they consist of the BELFIUS trademark and it is difficult to imagine any plausible future active use of them by the Respondents that would be legitimate and not infringing the BELFIUS trademark or would not represent an act of unfair competition or an infringement of the consumer protection legislation. The Complainant also notes the Respondents have concealed their identities likely in order to make it difficult for the Complainant to protect its trademark rights.

B. Respondent

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

6. Discussion and Findings

6.1 Procedural issue – Consolidation of the Respondents

The Complainant requests the consolidation of the disputes with the Respondents. According to it, the disputed domain names are connected and are under common management and control. The Complainant submits that the consolidation of these disputes would be fair and equitable, since they involve common facts and legal issues, and promote the shared interests of the Parties, avoiding unnecessary duplication in time, effort, and expense.

In support of its consolidation request, the Complainant notes that all of the disputed domain names were registered in the short period between June 18 and July 16, 2021, all of them display a parallel pattern in their structure, incorporating the Complainant’s BELFIUS trademark in combination with terms directly related to the services performed by banking institutions (“bank” and “banking”), descriptive terms (“mobile”), or terms referring to Belgium (“be”), and all of them use the same privacy protection service and the same Registrar. The Complainant further points out that the Respondents’ data for the disputed domain names suggests that it is fictitious, as the name “Barbi Girl” refers to a popular doll, the name “Bieren Lul” consists of the two Dutch words “Bieren” meaning “beers” and “Lul”, meaning “penis”, and most of the indicated addresses are not found on the Internet as locations in Sweden, United States, or Netherlands, or the indicated streets are located in other cities than those listed.

The Center has discharged its duties to notify the persons listed as registrants of the disputed domain names. None of the listed registrants of the disputed domain names has submitted a formal Response or objected to the consolidation request of the Complainant or to its arguments in support of the request.

Paragraph 10(e) of the Rules grants a panel the power to consolidate multiple domain name disputes, and paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder. As discussed in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where a complaint is filed against multiple respondents, UDRP panels look at whether the domain names or corresponding websites are subject to common control, and whether the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario. Prior UDRP panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in the content or layout of websites corresponding to the disputed domain names, any naming patterns in the disputed domain names, or other arguments made by the complainant.

The Panel is satisfied that the Complainant has shown good reasons why the consolidation of the Respondents and disputes related to the disputed domain names in a single proceeding is justified and appropriate in the circumstances. All of the disputed domain names were registered within a short period of time, and all of them incorporate the distinctive BELFIUS trademark of the Complainant together with the words “bank”, “banking” and “mobile”, or with the abbreviation “www-”, and all of them use the same privacy protection service and the same Registrar. The Respondents’ data for the disputed domain names also appears to be fictitious. Therefore, and in the lack of any denial of it by their registrants, it is more likely than not that the disputed domain names are under common control.

None of the Respondents has advanced any reasons why it may not be equitable to allow the consolidation of the disputes. It appears that the consolidation would lead to greater procedural efficiency, and the Panel is not aware of any reasons why the consolidation would not be fair and equitable to all parties.

Therefore, the Panel decides to allow the consolidation of the disputes in relation to all of the disputed domain names in the present proceeding.

6.2 Substantive issues

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names:

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

(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and

(iii) the Respondents have registered and are using the disputed domain names in bad faith.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”.

None of the Respondents has however submitted a formal Response or disputed the Complainant’s contentions and evidence in this proceeding.

A. Identical or Confusingly Similar

The Complainant has provided evidence that it is the owner of the BELFIUS trademark. In view of this, the Panel accepts that the Complainant has established its rights in this trademark for the purposes of the present proceeding.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the Top-Level Domain (“TLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview 3.0. The Panel sees no reason not to follow the same approach here, so it will disregard the “.info”, “.live”, “.site”, “.net”, and “.cc” TLDs of the disputed domain names.

Each of the disputed domain names incorporates the BELFIUS trademark in its entirety together with the words “bank”, “banking”, and “mobile”, or with the abbreviation “www-”. The BELFIUS trademark remains easily recognizable in each of the disputed domain names. As discussed in section 1.8 of the WIPO Overview 3.0, in cases where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would not prevent a finding of confusing similarity under the first element.

In view of the above, the Panel finds that the disputed domain names are confusingly similar to the BELFIUS trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.

The Complainant contends that the Respondents have no rights or legitimate interests in the disputed domain names, because the Complainant has not given its consent to them to use the BELFIUS trademark, which was registered earlier and is an invented word composed of “bel” for “Belgium”, “fi” for “finance” and the English word “us”. According to the Complainant, the Respondents must have been aware of the Complainant’s rights prior to registering the disputed domain names, because the disputed domain names all incorporate the BELFIUS trademark in its entirety, and some of them also contain the elements “bank”, “banking”, “mobile”, “be”, or “www-”. According to the Complainant, this indicates that the Respondents were aware of the Complainant’s trademark when registering the disputed domain names, and appreciated the likelihood of confusion between the disputed domain names and the Complainant. Thus, the Complainant has established a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names.

None of the Respondents has submitted a formal Response. They have not submitted any arguments in support of the existence of any rights and legitimate interests in the disputed domain names, and have not denied the allegations of the Complainant or disputed the evidence that it has brought forward. As discussed in section 6.1 above, it is more likely than not that the disputed domain names are under common control.

The disputed domain names all incorporate the BELFIUS trademark, which was registered nine years earlier, together with dictionary words or a commonly used abbreviation, and the Respondents have not provided any explanation why they have chosen to register them. They have provided to the Registrar contact details that do not appear credible, and the disputed domain names are inactive.

In view of the above, and in the lack of any arguments or evidence to the contrary, the Panel concludes that it is more likely than not that the Respondents have targeted the BELFIUS trademark with the registration of the disputed domain names in an attempt to improperly capitalize on the reputation and goodwill associated with this trademark by confusing and attracting to the disputed domain names Internet users seeking the Complainant. In the Panel’s view, such conduct does not appear as legitimate and does not give rise to rights or legitimate interests of the Respondents in the disputed domain names.

Therefore, the Panel finds that the Respondents do not have rights and legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The disputed domain names are confusingly similar to the BELFIUS trademark together with dictionary words or a commonly used abbreviation, and were all registered in June and July 2021, while the Complainant’s distinctive BELFIUS trademark was registered in 2012. The Complainant states that it has not authorized the registration and use of the disputed domain names, and none of the Respondents maintains the opposite or provides any plausible explanation for their registration and use. They have provided to the Registrar contact details that do not appear credible, and the disputed domain names are inactive. As discussed in section 6.1, it is more likely than not that all of them are under common control.

In view of the above and in the lack of a denial by the Respondents of any of the arguments and evidence brought forward by the Complainant, the Panel concludes that the Respondents must have been well aware of the goodwill of the Complainant’s BELFIUS trademark when they registered the disputed domain names, and that by targeting this trademark, the Respondents have attempted to improperly capitalize on the reputation and goodwill associated with it by confusing Internet users seeking the Complainant’s services that they are reaching official online locations where the these services are provided.

The disputed domain names do not resolve to active websites, which, in these circumstances, does not prevent a finding of bad faith. Furthermore, as noted by the Complainant, some of the disputed domain names may be linked to illicit activities, as they cause Internet browsers to display security warnings when accessed. In view of the distinctiveness of the BELFIUS trademark and the fact that the disputed domain names fully incorporate it together with non-distinctive elements, it appears to the Panel that the Respondents cannot put these disputed domain names to any legitimate use, and that their registration is suggestive of their intent to seek unjust benefit from the notoriety of the Complainant’s trademark.

On the basis of all the above, the Panel finds that the disputed domain names have been registered and are being used in bad faith.

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 names, <bank-belfius.info>, <bank-belfius.live>, <bank-belfius.site>, <belfiusbanking.net>, <belfiusmobile.cc>, <www-belfius-be.info>, <www-belfiusbe.info>, <www-belfius.info>, and <www-belfius.live>, be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: November 1, 2021