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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Belfius Banque S.A./ Belfius Bank NV v. Contact Privacy Inc. Customer 1242626048 / Maarten Bekkers

Case No. D2018-1802

1. The Parties

The Complainant is Belfius Banque S.A./ Belfius Bank NV of Sint-Joost-ten-Node, Belgium, internally represented.

The Respondent is Contact Privacy Inc. Customer 1242626048 / Maarten Bekkers of Brasschaat, Belgium, self-represented.

2. The Domain Name and Registrar

The disputed domain name <belfius.app> ("Disputed Domain Name") is registered with Google Inc. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 8, 2018. On August 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 8, 2018, 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 10, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Respondent sent an informal email communication to the Center on August 10, 2018. The Complainant filed an amended Complaint on August 14, 2018.

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 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2018. The Respondent did not file a substantive Response but sent an informal email communication to the Center on August 10, 2018, indicating that he did not agree to the Complaint and that he had plans with the Disputed Domain Name. On September 7, 2018, the Center notified the Parties that it would proceed to appoint the Panel.

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on September 13, 2018. 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, Belfius Banque S.A./ Belfius Bank NV, is a large Belgian bank and financial services provider operating mainly on the Belgian territory. The Complainant is wholly owned by the Belgian State. The Complainant has over 650 agencies in Belgium and provides a wide range of banking, insurance and financial services.

The Complainant is the holder of a multitude of trade and service mark registrations for and relating to the mark BELFIUS, which it uses in connection with its banking and financial services. The Complainant's trademark portfolio includes, inter alia, the following trade and service mark registrations:

- BELFIUS, word mark registered with the European Union Intellectual Property Office ("EUIPO") under No. 010581205 on May 24, 2012 in classes 9, 16, 35, 36, 41 and 45;

- BELFIUS, word mark registered with the Benelux Office for Intellectual Property ("BOIP") under No. 0914650 on May 10, 2012 in classes 9, 16, 35, 36, 41 and 45; and

- BELFIUS, word mark registered with the BOIP under No. 0915963 on June 11, 2012 in classes 9, 16, 35, 36, 41 and 45.

The Complainant also offers a mobile banking application which, according to its score on Google play, is the best on the Belgian financial market with a daily user base of over a million (Android and iOS combined).

The Disputed Domain Name <belfius.app> was registered by the Respondent on May 9, 2018, using a privacy service. The Disputed Domain Name does not resolve to an active webpage.

Before initiating UDRP proceedings, the Complainant attempted to contact the Registrar and the Respondent on May 18, 2018, and June 26, 2018 respectively, in order to obtain the voluntary transfer of the Disputed Domain Name. The Registrar responded by stating that it did not participate in trademark disputes and that it encouraged trademark owners to resolve such disputes directly with the relevant registrant or by filing a UDRP complaint. The Respondent did not reply to the Complainant's communication. After verification of the Respondent's identity and contact details by the Registrar, the Complainant attempted to contact the Respondent again with an email dated August 13, 2018. In this email, the Complainant notified the Respondent of its rights and requested the immediate transfer of the Disputed Domain Name and the cease and desist of any further use of the term "belfius" or variations thereof. Again, the Respondent did not reply to this communication.

5. Parties' Contentions

A. Complainant

The Complainant considers the Disputed Domain Name to be confusingly similar to trademarks in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to the Complainant, the Respondent has not been commonly known by the Disputed Domain Name and is in no way affiliated with the Complainant. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent knew, or at least should have known, of the existence of the Complainant's trademark. The Complainant further claims that the Respondent attempts to attract Internet users, for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

B. Respondent

The Respondent did not reply to the Complainant's contentions. On August 10, 2018, the Respondent sent an informal email communication to the Center in which he indicated that he did not agree to the Complaint and that he had plans with the Disputed Domain Name.

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.

Thus, for the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:

(i) The Disputed Domain Name is identical or confusingly similar to a 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.

The Panel will therefore deal with each of these requirements.

A. Identical or Confusingly Similar

To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there is a trademark in which the Complainant has rights. The Complainant's BELFIUS mark has been registered and used in connection to its financial services.

The Disputed Domain Name incorporates the Complainant's BELFIUS trademark in its entirety.

The addition of generic Top-Level Domains ("gTLDs") can be disregarded when comparing the similarities between a domain name and a mark (see e.g., Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206and Zions Bancorporation v. Mohammed Akik Miah, WIPO Case No. D2014-0269).

In the present case, the gTLD ".app" may even strengthen the association with the Complainant and its BELFIUS trademark as it directly relates to the Complainant's mobile banking application (see in this regard the analysis under "C. Registered and used in bad faith").

As the Disputed Domain Name is identical to a trademark in which the Complainant has rights, the Complainant has made out the first of the three elements of the Policy that it must establish.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

It is well established that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

The Panel notes that the Respondent has not been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. The Respondent's use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent exists.

Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, the Respondent is not making any use of the Disputed Domain Name in connection with an active website. Neither the Respondent nor the facts of the case indicate any demonstrable preparations to use the Disputed Domain Name (See section 2.2, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")). Moreover, the Disputed Domain Name does not seem to be comprised of or refer to a dictionary word or phrase. The passive holding or non-use of domain names is, in appropriate circumstances, evidence of a lack of rights or legitimate interests in the domain names (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; American Home Products Corporation v. Ben Malgioglio, WIPO Case No. D2000-1602; Vestel Elektronik Sanayi ve Ticaret AS v. Mehmet Kahveci, WIPO Case No. D2000-1244).

The Respondent had the opportunity to demonstrate his rights or legitimate interests but did not do so. As the Respondent did not specifically address the Complainant's contentions, the prima facie case established by the Complainant has not been rebutted.

Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

In the present case, it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when he registered the Disputed Domain Name. The Disputed Domain Name is identical to the Complainant's distinctive BELFIUS trademark. Considering the distinctive character and the established reputation of the Complainant's trademark, the Respondent must have had knowledge of the Complainant's rights at the time of registering the Disputed Domain Name. The Panel therefore finds that the Respondent's awareness of the Complainant's trademark rights at the time of registration suggests bad faith (See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc. v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007).

The Respondent is not presently using the Disputed Domain Name. The passive holding of the Disputed Domain Name may amount to bad faith when it is difficult to imagine any plausible future active use of the Disputed Domain Name by the Respondent that would be legitimate and not interfere with the Complainant's well­known mark (see Inter-IKEA v. Polanski, WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows, supra). Additional factors to support a finding of bad faith in relation to the passive holding of a domain name include the degree of distinctiveness or reputation of the Complainant's mark, the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and the Respondent's concealing its identity or use of false contact details (see section 3.3, WIPO Overview 3.0).

In the present case, the Panel is of the opinion that the Complainant's BELFIUS trademark is distinctive and widely known, especially in Belgium where the Respondent is residing. This makes it difficult to conceive any plausible legitimate future use of the Disputed Domain Name by the Respondent. The incorporation of the Complainant's BELFIUS trademark together with the gTLD ".app" in the Disputed Domain Name directly relates to the Complainant's mobile banking application which is used by the Complainant's customers to manage their bank accounts, make online payments and use other financial services. Accordingly, the Panel finds it likely that the Respondent has registered the Disputed Domain Name with the intent of attracting, for commercial gain, Internet users to a website connected to the Disputed Domain Name by creating a likelihood of confusion with the Complainant's BELFIUS trademark and its mobile banking application. In view of the Complainant's activity in the financial and banking sector, misleading use of the Disputed Domain Name poses a real threat to the Complainant and its clients.

Additionally, by using a privacy registration service, the Respondent has taken active steps to conceal its identity, which may further support an inference of bad faith in light of the circumstances in which the service or the domain name is used (see Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696).

The Panel also notes that the Respondent failed to respond to the Complainant's cease and desist communications of June 26, 2018, and August 13, 2018. The Panel further notes that the Respondent is involved in a concurrent UDRP proceeding concerning the domain name <myproximus.app>, which may indicate a pattern of conduct of preventing trademark holders from reflecting their mark in corresponding domain names (see PROXIMUS, NV van publiek recht v. Contact Privacy Inc. Customer 1242625283 / Maarten Bekkers, WIPO Case No. D2018-1742).

Finally, by failing to respond to the Complainant's contentions, the Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.

Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last element 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.app> be transferred to the Complainant.

Flip Jan Claude Petillion
Sole Panelist
Date: September 18, 2018

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