The Complainant is AGFA-GEVAERT N.V., Belgium, represented by NOVAGRAAF Belgium NV/SA, Belgium.
The Respondent is Ziyuanzhan, Taiwan Province of China. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 30, 2019. On December 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 1, 2020, 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. 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 of the Complaint, and the proceedings commenced on January 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 29, 2020. The Center appointed Joseph Simone as the sole panelist in this matter on February 11, 2020. 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 an established global business that specializes in imaging systems for the healthcare sector. It owns various trademark registrations for AGFA, including: - AGFA, European Union Trade Mark Registration (“EUTM”) No. 003353463, registered on January 24, 2005, in classes 1, 2, 7, 9, 10, 40, and 42. The disputed domain names were all registered on May 14, 2019, and resolve to an active gambling website. 5. Parties’ Contentions A. Complainant The Complainant argues that the disputed domain names should be transferred for the following reasons. First, the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights, as each of the disputed domain names consists of the Complainant’s trademark AGFA in its entirety plus one single digit number. This creates confusion among consumers who may believe that the disputed domain names are associated with the Complainant. Moreover, the Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain names. To the best of the Complainant’s knowledge, the Respondent is not commonly known by the name AGFA. The Complainant has prior and exclusive rights in its trademark AGFA, and has neither granted a license to, nor otherwise authorized the Respondent to use its trademark AGFA alone or in domain names. Finally, the Complainant contends that the disputed domain names were registered and are being used in bad faith. Specifically, prior to registering the disputed domain names, the Respondent must have been aware of the Complainant’s AGFA trademark, which has gained substantial fame and predates the registration date of the disputed domain names by many years. The fact that the Respondent has chosen domain names that fully incorporate the Complainant’s distinctive trademark is itself an indication of the Respondent’s bad faith. Further, bad faith is generally found where, as here, the Respondent intentionally attempts to attract Internet users to its website for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement by the Complainant of said website. The Complainant believes that the Respondent has deliberately chosen the disputed domain names to create the impression that it is affiliated with the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Under the first element of the Policy, a complainant must prove that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights (paragraph 4(a)(i) of the Policy). The Complainant has provided evidence of valid registration for trademark AGFA. Therefore, it has shown that it has rights in the trademark. The test for whether a domain name is identical or confusingly similar to the Complainant’s trademarks is fairly straightforward and a domain name incorporating the entirety or dominant feature of the relevant mark will normally satisfy the threshold (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505; V&S Vin & Sprit AB v. Ooar Supplies,WIPO Case No. D2004-0962). Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether geographical, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements (see, e.g., BHP Billiton Innovation Pty Ltd v. Oloyi,WIPO Case No. D2017-0284). A domain name that consists of a common, obvious, or intentional misspelling of a trademark – including the addition or interspersion of numbers – is considered to be confusingly similar to the relevant mark for purposes of the first element (see, e.g., Comerica Bank v. Online Management / Registration Private, Domains By Proxy, LLC,WIPO Case No. D2014-1018, emphasis added). In the present case, each of the disputed domain names is comprised of the Complainant’s trademark AGFA in its entirety plus a single digit number, which can be viewed as a type of intentional misspelling of the Complainant’s trademark. Therefore, the disputed domain names are confusingly similar to the Complainant’s trademark, and the first element of the Policy is established. B. Rights or Legitimate Interests Under the second element, a complainant must demonstrate that the respondent should be deemed as having no rights or legitimate interests in respect of the disputed domain names (paragraph 4(a)(ii) of the Policy). While the overall burden of proof rests with the complainant, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of proof for this element shifts to the respondent to produce evidence demonstrating its rights or legitimate interests in the domain name. Otherwise, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Complainant submits that it has never given a license to, or otherwise authorized the Respondent to use its trademark AGFA or any domain names incorporating it. There is also no evidence that the Respondent is commonly known by the disputed domain names. Rather, the disputed domain names incorporate the Complainant’s distinctive trademark AGFA in its entirety and were registered 14 years after AGFA’s registration date. Therefore, the Complainant has made out a prima facie case, and in the absence of any explanation by the Respondent, the Respondent has not rebutted the Complainant’s prima facie case. In accordance with paragraph 4(c) of the Policy, the Panel may also consider whether the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain or to misleadingly divert consumers. But here, the Respondent has redirected all of the disputed domain names to what appears to be a commercial gambling website that invites consumers to bet on soccer matches. This cannot be said to confer rights or legitimate interests on the Respondent. Therefore, the Panel concludes that the second requirement of the Policy has been met. C. Registered and Used in Bad Faith Under the final element of the Policy, the Complainant must prove that a disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy). Bad faith under the Policy is understood to include circumstances where: “by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark 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” (paragraph 4(b)(iv) of the Policy). Further, “the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith” (section 3.1.4 of the WIPO Overview 3.0). In this case, each of the six disputed domain names consists of the Complainant’s distinctive and famous trademark AGFA in its entirety and one single digit number, the addition of which to an established trademark is considered a type of misspelling or typo of the trademark. Moreover, the disputed domain names were registered some 14 years after the Complainant’s cited EUTM, which enjoys substantial fame and goodwill in commerce. It is therefore difficult to imagine that the Respondent was unaware of the Complainant’s trademark and business when it registered the disputed domain names. Given this, the Panel believes that the Respondent registered the disputed domain names in bad faith, and with the Complainant’s trademark in mind. After registering the disputed domain names, the Respondent then proceeded to link the disputed domain names to a gambling website, with no apparent purpose other than to mislead consumers for commercial gain - a further indication of the Respondent’s bad faith. As the disputed domain names contain the Complainant’s distinctive trademark AGFA in its entirety, it is likely that consumers, when searching for the Complainant’s official website, would be directed to the Respondent’s gambling website and mistakenly believe this website is affiliated with the Complainant. Given the lack of connection between the website’s content and the Complainant’s trademark, the only logical reason for the Respondent to register the disputed domain names was to improperly exploit the goodwill and reputation of the Complainant by generating traffic to its own website. Therefore, the Respondent is also using the disputed domain names in bad faith. As such, the Panel finds that the final element of the Policy is also 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 names Joseph Simone
Sole Panelist
Date: February 25, 2020
Full & Egal Universal Law Academy