The Complainant is AGFA-Gevaert N.V. of Mortsel, Belgium, represented by Novagraaf Belgium NV/SA, Belgium.
The Respondent is Xu Zhi Xia (徐志霞) of Wuwei, Gansu, China. 2. The Domain Name and Registrar
The disputed domain name is registered with HiChina Zhicheng Technology Ltd. (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2017. On October 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On November 7, 2017, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On November 8, 2017, the Complainant requested for English to be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
The Center verified that the 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 in Chinese and English of the Complaint, and the proceedings commenced on November 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2017.
The Center appointed Douglas Clark as the sole panelist in this matter on December 18, 2017. 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, founded in 1867, is a Belgium-German multinational corporation that develops, manufacturers and distributes analogue, digital imaging products and systems, as well as IT solutions. The Complainant specializes in medical imaging systems, IT solutions and other specialty products for the movie and film industry.
The Complainant owns numerous trademark registrations containing AGFA, including European Union trademark registration nos. 8820979, 3353463 and 16044059 (earliest among which was registered on January 24, 2005).
The Respondent is an individual based in China.
The disputed domain name was registered on August 31, 2017 and resolves to a webpage that contains pornographic content. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions are as follows:
(i) Identical or confusingly similar:
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s registered trademark AGFA as the disputed domain name incorporates the Complainant’s AGFA mark. The inclusion of a non distinctive and/or descriptive term (“eu”) and the addition of the generic Top-Level Domain (“gTLD”) do not avoid the finding of confusing similarity.
(ii) No rights or legitimate interests:
The Respondent has no connection with the Complainant or any of its affiliates and has never sought or obtained any license or trademark registration for AGFA. The website is currently in use for pornographic purposes. It, therefore, has no rights or legitimate interests in the disputed domain names.
(iii) The Domain name was registered and is being used in bad faith:
Before acquiring the disputed domain name, it is highly likely that the Respondent knew of the Complainant’s rights in the AGFA mark because of its worldwide reputation. Further, the use of the Respondent has made on its website providing pornographic content shows the Respondent is using the disputed domain name for commercial gain. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
The language of the Registration Agreement is in Chinese. Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The Complainant requested the language of the proceeding be English on the grounds that the Respondent has been actively conducting business in English through its English only websites and if the Complainant were to translate documents in Chinese, the proceedings may be delayed and the Complainant would incur unnecessary expense and the proceedings may be delayed.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel.
On the facts of this case, the Panel does not consider it appropriate to require the Complainant to translate the Complaint as it will unnecessarily delay the proceeding. This is a clear case of cybersquatting that the Policy was designed to stop.
Further, the Respondent did not respond to the Center’s preliminary determination. This Panel decided in Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191, that a respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint”.
The Panel will render its decision in English. 6.2. Substantive Decision A. Identical or Confusingly Similar
The disputed domain name is confusingly similar to the Complainant’s AGFA trademark.
It incorporates the Complainant’s registered trademark AGFA in its entirety together with the generic geographical designation “eu”. According to previous UDRP decisions, the “addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel notes that the Complainant does not rely on any registered trademarks for AGFA in China where the Respondent is located. The ownership of a trademark is generally considered to be a threshold standing issue. The location of the trademark, its date of registration (or first use) and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights in a trademark under the first element of the UDRP. These factors may however bear on a panel’s further substantive determination under the second and third elements. (See section 1.1.2 of WIPO Overview 3.0).
The first element of paragraph 4(a) of the Policy is therefore satisfied. B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests.
Section 2.1 of the WIPO Overview 3.0 provides:
“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 domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not responded to the Complaint to present any evidence to establish rights or legitimate interests under these heads. None of the circumstances in paragraph 4(c) of the Policy are present in this case.
Considering the absence of a response by the Respondent to the Complainant’s contentions and the fact that the Respondent was granted neither a license nor an authorization to make any use of the Complainant’s trademark, the Panel finds the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
The second element of paragraph 4(a) of the Policy is therefore satisfied. C. Registered and Used in Bad Faith
The Panel finds that the disputed domain name was registered in bad faith and is being used in bad faith.
This case falls with paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The links on the site suggest the Respondent is making a commercial gain from the site.
Further, the links to pornographic or semi-pornographic materials tarnish the AGFA trademark. This has been found in previous UDRP cases to constitute evidence of registration and use of a domain name in bad faith. (See WIPO Overview 3.0, section 3.12).
The third part of paragraph 4(a) of the Policy is therefore satisfied. 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 be transferred to the Complainant.
Douglas Clark
Sole Panelist
Date: January 9, 2018
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