The Complainant is Agfa-Gevaert N.V. of Septestraat, Mortsel, Belgium, represented by Novagraaf Belgium NV/SA, Belgium.
The Respondent is Registration Private / Domains By Proxy, LLC / DomainsByP of Scottsdale, Arizona, United States of America / Manuel Gomez of Estaires, France. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 22, 2018. On November 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 23, 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 November 28, 2018 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 November 30, 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 December 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 23, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 27, 2018.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on January 7, 2019. 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-based business that develops, produces, and distributes a range of analogue and digital imaging systems and IT solutions. The Complainant consists of three divisions, namely Agfa Healthcare, Agfa Graphics and Agfa Speciality Products. One of the Group companies of the AGFA Group is registered in the Köln (Germany) Commercial Registry under the name AGFA GEVAERT GRAPHICS SYSTEMS.
The Complainant is the owner, amongst others, of the following trademarks at European Union Intellectual Property Office (EUIPO):
European registration number
TradeMark
Registration Date
Classes
003353463
AGFA
January 24, 2005
1, 2, 7, 9, 10, 40, 42
015598113
AGFA
February 27, 2017
1, 2, 3, 7, 9, 10, 17, 24, 42
The AGFA trademark is to be considered well-known for the purposes of the UDRP. See AGFA-Gevaert N.V. v. Bernard Kwanagw,WIPO Case No. D2017-2127.
The domain name was registered on September 4, 2018 and is inactive. 5. Parties’ Contentions A. Complainant
The Complainant asserts to be the legal owner of the AGFA trademarks. On such basis the Complainant contends that the domain name is confusingly similar to the Complainant’s trademarks because the domain name consists of the trademark and the addition of descriptive terms “graphics” and “systems”.
With regard to the second element the Complainant asserts that to its best knowledge the Respondent has not been commonly known by the terms “agfa” or “agfa graphics” or “agfa graphics systems”. Further, the Complainant has not licensed or otherwise authorized the Respondent to use its trademark or any domain name including the AGFA trademark. The disputed domain name in not linked to any active website. Accordingly, the Respondent has no rights or legitimate interests in the disputed domain name
.
The Complainant alleges the due to the its widely known trade, the Respondent when registering the disputed domain name could not ignore the preexistence of the Complainant’s trademark, in particular in the graphics sector.
The Complainant further contends that by using the email [...]@, the Respondent presented himself as an employee of the Complainant “Agfa Gevaert Graphic Systems Gmbh” placing large orders through third parties. Thus, wrongfully representing himself as one of the Complainant’s affiliate companies B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of the disputed domain name to the Complainant, it is necessary that the Complainant proves, as required by 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;
(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.
There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the domain name registrant as a condition of registration. Therefore, a registrant should not gain any evidentiary benefit from its failure to participate. A. Identical or Confusingly Similar
To the Panel’s satisfaction, the Complainant has established accurate trademark rights on AGFA. It is apparent that the AGFA trademark is entirely incorporated in the disputed domain name. Thus, the disputed domain name
The mere addition of the dictionary words “graphics” and “systems” does not prevent a finding of confusing similarity. As stated at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the disputed domain name, the additions of other terms would not prevent a finding of confusing similarity.
Accordingly, the first requirement is met under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel finds that the Complainant has made a prima facie showing. The Complainant has not licensed or otherwise authorized the Respondent to use its trademark or any domain name including its AGFA trademark. Besides, the Respondent has not been commonly known by the name “Agfa”, “Agfa graphics” or “Agfa graphics systems”. Further, the disputed domain name is inactive as evidenced in annex 7 of the Complaint. Besides, the Complainant provides evidence of the earlier use of the disputed domain name impersonating the Complainant in an attempt to place orders to prospective clients.
According to the WIPO Overview 3.0, section 2.1.: “[W]here 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”. However, if the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Panel also refers to the WIPO Overview 3.0 section 2.5, which states that; “Fundamentally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner”.
The Complainant has therefore demonstrated that the Respondent lacks rights or legitimate interests in the disputed domain name to the satisfaction of the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
For the purposes of the Policy, a complainant must establish that the domain name was registered and used in bad faith by the respondent.
The Panel has provided evidence of the well-known recognition of its trademarks and activities. Further, as set out above, previous UDRP panels have recognized the strength and renown of the Complainant’s trademark. The Panel finds, under the circumstances of this case, that the Respondent knew of the Complainant, its trademarks, and activities at the time of the registration of the disputed domain name. Further, the inclusion of the words “graphics” and “systems” in the disputed domain name heightens the confusion since they refer to one of the principal activities of the Complainant and one of its subsidiaries in Germany. For this finding, the Panel also notes the later use of the disputed domain name by the Respondent in connection with an attempt of impersonation of the Complainant.
With respect to the use of the disputed domain name, the Panel notes that the Respondent attempted to obtain money from third parties by using an email address corresponding to the disputed domain name in an attempt to impersonate the Complainant. Nothing in the file allows the Panel to conclude otherwise.
According to the Policy paragraph 4(b)(iv) where bad faith may be shown by evidence of “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”.
Therefore, the Complainant has succeeded on 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, be transferred to the Complainant.
Manuel Moreno-Torres
Sole Panelist
Date: January 14, 2019
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