Belfius Bank SA / Belfius Bank NV v losar sarioe, lsoair

WIPO Case No. D2024-4279

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Belfius Bank SA / Belfius Bank NV v. losar sarioe, lsoair

Case No. D2024-4279

1. The Parties

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

The Respondent is losar sarioe, lsoair, United States of America.

2. The Domain Name and Registrar

The disputed domain name <belfius-annulation.com> is registered with Squarespace Domains II LLC (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2024. On October 17, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 17, 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 (REDACTED FOR PRIVACY, Isoair) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 21, 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 October 22, 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 October 23, 2024. In accordance with the Rules, paragraph
5, the due date for Response was November 12, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on November 13, 2024.

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The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on November 19, 2024. 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 state-owned bank with more than 5,000 employees and over 650 agencies. Its activities in the financial services sector focus on Belgium but, through sponsoring of sports events, are also seen outside of Belgium. The Complainant is the registrant to the domain name <belfius.be> that

resolves to its official website where it offers banking and insurance services (Annexes 8 and 9). The partners and journalists, as well as other domain names that include the word “belfius” and redirect to its official website.

The Complainant owns, amongst others, the following trademarks (Annexes 4 to 7):

- European Union (“EU”) trademark registration no. 010581205 BELFIUS (word), filed on January 23, 2012 and registered on May 24, 2012, for goods and services in Classes 9, 16, 35, 36, 41 and 45 (Annex 4);

- The Benelux registration no. 914650 BELFIUS (word), filed on January 23, 2012 and registered on

May 10, 2012, for goods and services in Classes 9, 16, 35, 36, 41 and 45 (Annex 5);

- The Benelux registrations no. 915963 and 915962 BELFIUS (fig.), filed on March 2, 2012 and

registered on June 11, 2012, for goods and services in Classes 9, 16, 35, 36, 41 and 45 (Annexes 6 and 7).

The disputed domain name was registered on August 20th, 2024. It does not resolve to any active website.

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 it owns trademark registrations for BELFIUS and has therefore established trademark rights. The disputed domain name incorporates the Complainant’s trademark in its entirety. According to the Complainant, the addition of the descriptive term “annulation”, which means “cancellation” in French, one of the national languages of Belgium, does not prevent a finding of confusing similarity. The applicable generic Top-Level Domain (“gTLD”) “ .com” is viewed as a standard registration requirement and thus to be disregarded for the purposes of determining identity or confusing similarity.

On the second element, the Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, its trademarks predate the Respondent’s registration of the disputed domain name. The Respondent is not associated with the Complainant, and it has never licensed, approved of or given consent to the Respondent to register the disputed domain name or to use it. The Respondent has no trademark rights in BELFIUS and thus has no reason to adopt this term in a domain name. The Respondent is not making any legitimate noncommercial or fair use of the disputed domain name, in fact is not making any use of it, as the disputed domain name does not resolve to any active website and therefore is merely passively held by the Respondent. The Complainant also claims that 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.

On the third element, the Complainant submits that the Respondent has registered and is using the disputed domain name in bad faith. As to registration in bad faith, the Complainant states that its trademark

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registrations, which it claims to be reputed, by far predate the registration of the disputed domain name and
that the Respondent knew or should have known the Complainant’s trademark or exercised willful blindness,
pointing to previous UDRP panel decisions in this respect. Had the Respondent conducted some good faith
searches before the registration of the disputed domain name it would readily have found the substantial
online presence which the Complainant claims to have. According to the Complainant, the Respondent must
have had knowledge of the Complainant’s trademark, given that a coincidence in the registration of a domain
name including an identical (fictional) name is inconceivable. As to use in bad faith, the Complainant refers
to various UDRP panel decisions finding that passive holding may amount to bad faith use when it is difficult
to imagine any plausible future active use of a disputed domain name by a respondent that would be
legitimate and not infringing a complainant’s reputed trademark, or unfair competition or contrary to
consumer protection legislation. Further, the concealment of the Respondents identity and the provision of
incomplete contact details point to the bad faith of the Respondent, just as its failure to respond to the

Complainant’s cease and desist notice.

B. Respondent

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

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.

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. In particular, it has shown rights in the term “belfius”.

The entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms, here “annulation”, 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 mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

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.

Although 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 difficult 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 (although the burden of proof always remains on the complainant). 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.

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Having reviewed the available 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.

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.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness per se of the Complainant’s trademark, and the composition of the disputed

domain name, and finds that in the circumstances of this case, including the Respondent’s failure to submit a response or to provide any evidence of actual or contemplated good-faith use, the Respondent’s concealing of its identity and the implausibility of any good faith use of the disputed domain name, the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.

The Panel finds that the Complainant has established the third 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-annulation.com> be transferred to the Complainant.

/Andrea Jaeger-Lenz/
Andrea Jaeger-Lenz
Sole Panelist
Date: December 3, 2024