The Complainant is Agfa-Gevaert N.V., Belgium, represented by Novagraaf Belgium NV/SA, Belgium.
The Respondent is Domain Administrator, See PrivacyG, United States of America (“United States”) / Yang Huai Yi, Chang Sha Bo Huan Wang Luo Ke Ji You Xian Gong Si, China. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2019. On June 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Nname. On June 27, 2019, the Registrar transmitted by email to the Center its verification response disclosing the 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 July 10, 2019, providing the name of 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 July 11, 2019.
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 July 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 8, 2019.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on August 26, 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 reputable Belgian-based corporation that develops, manufactures and distributes digital imaging products and IT solutions, primarily focusing on the healthcare and printing industries.
The Complainant owns numerous trade mark registrations for its AGFA mark, including European Union TradeMark No. 3353463 for the word AGFA in classes 1, 2, 7, 9, 10, 40 and 42, registered on January 24, 2005.
The Disputed Domain Name was registered on December 8, 2018 and does not currently resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant’s primary contentions can be summarised as follows:
(a) the Disputed Domain Name is identical or confusingly similar to the Complainant’s registered trade mark AGFA;
(b) the Disputed Domain Name does not appear to have been used at all since registration and the Complainant has not licensed or otherwise authorised the Respondent to use its AGFA mark, therefore the Respondent has no rights or legitimate interest in the Disputed Domain Name; and
(c) a number of factors support the contention that the Respondent has been and is acting in bad faith, namely: (i) the reputation of the Complainant’s AGFA trade mark; (ii) the Respondent’s passive holding of the Disputed Domain Name; and (iii) the fact that the Respondent incorporated the Complainant’s
well-known AGFA mark into the Disputed Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 by the Respondent in bad faith. A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in the AGFA trade mark, based on its various trade mark registrations. The Disputed Domain Name incorporates the Complainant’s AGFA mark in its entirety, but includes an additional letter “l” after the letters “agfa”. The mere addition of the letter “l” does not have the effect of distinguishing the Disputed Domain Name from the Complainant’s AGFA mark and therefore does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trade mark.
It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain (“gTLD”) extension “.icu” may be disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel therefore finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s AGFA trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.
The Panel accepts that the Complainant has not authorised the Respondent to use the AGFA mark, and there is no relationship between the Complainant and the Respondent, which would otherwise entitle the Respondent to use the AGFA mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(1) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or
(2) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark or service mark rights; or
(3) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
No evidence has been provided to demonstrate that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that he has become commonly known by the Disputed Domain Name.
The Disputed Domain Name does not currently resolve to an active website. There is therefore no evidence before the Panel that the Respondent has used, or has made any demonstrable preparations to use, the Disputed Domain Name in accordance with a bona fide offering of goods or services or for noncommercial or fair use purposes.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
It is generally recognized that the passive holding of a domain name does not as such prevent a finding of bad faith. The Panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity. See “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. G, Inc.,WIPO Case No. D2017-0246 and section 3.3 of the WIPO Overview 3.0.
In this case, the Panel finds that the passive holding of the Disputed Domain Name by the Respondent amounts to bad faith registration and use due to the following:
(i) the Complainant’s AGFA trade mark is well-known. Whilst the Complainant has not provided evidence demonstrating the reputation of the Complainant or its AGFA mark, a quick Internet search conducted by the Panel shows that the top search results returned for the keyword “agfa” are the Complainant’s multiple websites for its various business units and affiliated social media pages. Therefore, the Panel accepts the Complainant’s argument that the Respondent must have been fully aware of the Complainant and that the Disputed Domain Name incorporated the Complainant’s AGFA mark;
(ii) the Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name, or any explanation as to the reasons why he chose to register a domain name that incorporated AGFA;
(iii) the Respondent registered the Disputed Domain Name using a privacy shield to conceal his identity in the WhoIs records; and
(iv) it is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given the Disputed Domain Name is identical or at least confusingly similar to the Complainant’s AGFA mark, and in light of the fact that “agfa” are random letters strung together with no apparent meaning. Any use of the Disputed Domain Name would likely result in misleading Internet users into believing the Disputed Domain Name is associated with the Complainant.
In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been 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.
Gabriela Kennedy
Sole Panelist
Date: September 9, 2019
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