WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Belfius Bank S.A. / Belfius Bank N.V. v. Whois Privacy Protection Foundation / Mosj Inerio

Case No. D2020-1843

1. The Parties

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

The Respondent is Whois Privacy Protection Foundation, the Netherlands / Mosj Inerio, United States of America.

2. The Domain Name and Registrar

The disputed domain name <belfius-quarantaine.com> is registered with Hosting Concepts B.V. d/b/a Openprovider (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2020. On July 16, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 16, 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 August 3, 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 August 7, 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 August 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2020.

The Center appointed Andrea Mondini as the sole panelist in this matter on September 24, 2020. 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 leading Belgian bank and financial services provider with more than 5,000 employees and over 650 agencies.

The Complainant owns several registrations for the trademark BELFIUS, including the European Union Trade Mark (“EUTM”) registration no. 010581205 for the word mark BELFIUS in classes 9, 16, 35, 36, 41, and 45, filed on January 23, 2012 and registered on May 24, 2012.

The disputed domain name was registered on April 28, 2020 and resolves to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant in essence contends the following:

The trademark BELFIUS is a coined term composed of “Bel” as in Belgium, “fi” as in finance and “us” as in the English word “us”.

The disputed domain name is confusingly similar to the Complainant’s marks because it incorporates the BELFIUS mark in its entirety. The addition of the term “quarantaine” does not dispel confusion.

The Respondent is not commonly known by the disputed domain name. The Complainant has not licensed or otherwise authorized the Respondent to use the BELFIUS trademark. The Respondent has no association with the Complainant, no rights or legitimate interests in the disputed domain name, or any rights in the BELFIUS trademark.

The disputed domain name has been registered and used in bad faith, because the Respondent either knew or should have known the Complainant’s trademark when it registered the disputed domain name.

The Respondent has further used the disputed domain name in bad faith by passively holding it without a legitimate purpose.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:

(i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has shown that it holds trademark registrations for the word marks BELFIUS.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark because it incorporates in its entirety the distinctive trademark BELFIUS. The addition of the French word “quarantaine” does not dispel confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.8.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant contends, credibly, that it has not authorized the Respondent to register or use the disputed domain name and that there is no relationship whatsoever between the Parties.

In the absence of any Response, the Panel concludes that the Respondent was not authorized or licensed to use the Complainant’s trademark in the disputed domain name and that there is no indication of any bona fide offering of goods or services under the disputed domain name nor any legitimate noncommercial or fair use of the disputed domain name. Further, there is no evidence showing that the Respondent has been commonly known by the disputed domain name. Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

Therefore, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The BELFIUS trademark is a coined, distinctive term identifying a major Belgian provider of financial services. The Panel thus concludes that the Respondent must have been aware of this trademark and its reputation when it registered the disputed domain name, so that the disputed domain name was registered in bad faith.

Considering the distinctiveness and reputation of the Complainant’s trademark and the failure of the Respondent to submit a response, the inactive use of the disputed domain name without a legitimate purpose, under the circumstances of this case, does not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3.

Accordingly, the Panel concludes that the disputed domain name has been registered and used in bad faith.

The Panel therefore finds that the Complainant has satisfied the requirement under 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 disputed domain name <belfius-quarantaine.com> be transferred to the Complainant.

Andrea Mondini
Sole Panelist
Date: October 5, 2020