Belfius Bank SA / Belfius Bank NV v Jane Watson

WIPO Case No. D2024-0298

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Belfius Bank SA / Belfius Bank NV v. Jane Watson

Case No. D2024-0298

1. The Parties

The Complainant is Belfius Bank SA / Belfius Bank NV, Belgium, represented internally.

The Respondent is Jane Watson, Thailand.

2. The Domain Name and Registrar

The disputed domain name <belfiuseurohockey.com> is registered with DropCatch.com LLC., (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 24, 2024.
On January 24, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On January 24, 2024, 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 (administrative) and contact information in the Complaint. The
Center sent an email communication to the Complainant on February 1, 2024, 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 February 5, 2024.

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 February 5, 2024. In accordance with the Rules, paragraph
5, the due date for Response was February 25, 2024. The Respondent sent email communications to the
Center on February 20 and 28, 2024.

The Center appointed Vincent Denoyelle as the sole panelist in this matter on March 14, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration

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of Impartiality and Independence, as required by the Center to ensure compliance with the Rules,

paragraph 7.

4. Factual Background

Given that no Response was filed, the following facts are based on the submissions in the Complaint and the

Annexes to the Complaint.

The Complainant is a financial services company headquartered in Belgium.

The Complainant is the owner of several trademarks for BELFIUS, including the following:

- European Union Trademark BELFIUS, registration no. 010581205 filed on January 23, 2012 and
registered on May 24, 2012; and

- Benelux Trademark “BELFIUS” registration no. 914650 filed on January 23, 2012 and registered on
May 10, 2012; and

The Complainant is also the owner of numerous domain names reflecting its BELFIUS trademark including
<belfius.com>.

The disputed domain name was registered on October 28, 2023. The disputed domain name points to a website with content mainly in the Thai language and some words in English such as the word “insurance”.

There is no information known on the Respondent apart from the details as they appear on the WhoIs record.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that the disputed domain name is confusingly similar to the BELFIUS trademark in which the Complainant has rights as the disputed domain name incorporates the entire BELFIUS trademark with the addition of the term “eurohockey” and that such addition does not prevent the finding that the disputed domain name is confusingly similar to the Complainant’s trademark.

The Complainant asserts that the Respondent is in no way associated with the Complainant. The Complainant declares that it has not licensed, approved or in any way consented to the Respondent’s registration and use of its trademark in the disputed domain name. The Complainant contends that the Respondent has no trademark rights in the term “belfius” and does not seem to carry out any activity. Finally the Complainant submits that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name as the Respondent is not making any use of the disputed domain name in connection with an active website or even indicating demonstrable preparations to use the disputed domain name.

The Complainant contends that the Respondent had or should have had knowledge of the Complainant’s trademark when it registered the disputed domain name given the Complainant’s substantial presence on the Internet. The Complainant then points to the fact that the disputed domain name is passively held and asserts that it is not possible to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent that would be legitimate and not infringe the Complainant’s rights or be in breach of consumer protection legislation.

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B. Respondent

The Respondent did not substantively reply to the Complainant’s contentions but simply sent a communication to the Center on February 20, 2024, stating “Hi, How shall we proceed. Regards,” and another one on February 28, 2024, pointing to its earlier email of February 20, 2024.

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The Panel finds the entirety of the BELFIUS trademark is reproduced within the disputed domain name.

Accordingly, the disputed domain name is confusingly similar to the BELFIUS trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

While the addition of other terms, here “eurohockey”, may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the disputed domain name and the trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

Based on the available record, the Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

While the overall burden of proof in UDRP proceedings is on the complainant, 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 disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the record, the Panel finds the Complainant has established a prima facie case that the
Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

Here there is no indication that the Respondent is known by the disputed domain name or has any rights corresponding to the disputed domain name.

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In addition, the composition of the disputed domain name which reproduces the exact BELFIUS trademark
with the term “eurohockey” would likely be perceived as referring to the sporting event sponsored by the
Complainant and thus the composition of the disputed domain name carries a risk of implied affiliation.
WIPO Overview 3.0, section 2.5.1.

Finally, the current content of the website with content mainly in the Thai language and some words in English such as the word “insurance” does not offer any credible justification for the use of the Complainant’s trademark in the disputed domain name and cannot qualify as either use of the disputed domain name (or demonstrable plans for such use) with a bona fide offering or a legitimate noncommercial fair use given the overall circumstances of the present case including the reputation and online visibility of the Complainant’s trademark and the absence of Response.

Based on the available record, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel finds that the Respondent, at the time of registration of the disputed domain name, must have been aware of the Complainant’s trademark BELFIUS reproduced in the disputed domain name given (i) the reputation and online presence of the BELFIUS trademark, (ii) the targeted choice of the term “eurohockey” referring to the sporting event sponsored by the Complainant, (iii) the fact that the disputed domain name was registered relatively recently and many years after the registration of the trademark BELFIUS and the fact that (iv) all search results for the term “belfius” and all top results for the term “belfiuseurohockey” on Google refer to the Complainant.

As for use of the disputed domain name in bad faith, having reviewed the record, the Panel finds the current use of the disputed domain name does not prevent a finding of bad faith in the circumstances of this proceeding including (i) the substantial online presence of the Complainant’s BELFIUS trademark and (ii) the failure of the Respondent to submit a Response or to provide any explanation as to why it would be legitimate to use the BELFIUS trademark in the disputed domain name.

The Panel finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark 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.

Based on the available record, the Panel finds the third element of the Policy has been established.

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 <belfiuseurohockey.com> be transferred to the Complainant.

/Vincent Denoyelle/
Vincent Denoyelle
Sole Panelist
Date: March 28, 2024