The Complainant is Agfa-Gevaert N.V., Belgium, represented by Novagraaf Belgium NV/SA, Belgium.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Domain Admin, DomainNameNexus.com - This Domain is For Sale, United States of America. 2. The Domain Name and Registrar
The Disputed Domain Name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2020. On May 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 8, 2020, 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 May 14, 2020 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 May 18, 2020. 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 May 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2020. The Center received an email communication from the Respondent on June 1, 2020 regarding possible settlement. On June 5, 2020, the Complainant requested suspension of the proceedings. On the same day, the Center confirmed the Parties that the administrative proceeding is suspended until July 5, 2020 for purposes of settlement discussions concerning the Disputed Domain Name. The Parties discussed settlement from June 8, 2020 until September 1, 2020. On September 22, 2020, the Center notified the Parties of the reinstitution of proceedings, and the new response due date was set on October 4, 2020. The Respondent did not submit a formal response. Accordingly, the Center notified the commencement of panel appointment process on October 9, 2020. The Center appointed Pablo A. Palazzi as the sole panelist in this matter on October 16, 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 incorporated in Belgium and is a developer of software for use in the medical sector including in relation to medical imaging devices. The Complainant has provided evidence that it is the owner of numerous trademarks worldwide relating to the term “AGFA”, including, among other the following trademarks registrations: - AGFA European Union trademark registration No. 008820979, registered on July 5, 2010; In addition, the Complainant is the owner of the domain name The Disputed Domain Name The Complainant’s contentions can be summarized as follows: Identical or confusingly similar The Complainant contends that the Disputed Domain Name is confusingly similar to the Complainant’s AGFA and AGFA HEALTHCARE trademarks. The addition of the descriptive word “medical” only adds to the risk of confusion, given the activities of the Complainant. Finally, the Complainant alleges that by using the Disputed Domain Name, the Respondent creates confusion as consumers may believe that the Disputed Domain Name refers to the Complainant. Rights or legitimate interest The Complainant states that the Respondent has not been commonly known by the name AGFA or AGFAHEALTH. In addition, the Disputed Domain Name is not in use. The Complainant further states that, it has no licensed or authorized the Respondent to use its trademarks or any other domain name including the Complainant’s AGFA trademark. Thus, the Complainant affirms that the Respondent has no rights or legitimate interest to use and register the Disputed Domain Name. Registration and use in bad faith The Complainant contends that the AGFA trademarks are famous and far predate the registration of the Disputed Domain Name. In addition, the Complainant alleges that that the Respondent could not ignore the preexistence of the Complainant’s trademarks rights. The Complainant further states that the fact that the Respondent has chosen as a domain name a well known trademark is per se a clear indication that the registration of the Disputed Domain Name was made in bad faith. Moreover, a Google search to Agfa Medical immediately shows the known trademark of the Complainant. Finally, the Complainant alleges that the Respondent has selected its reputed trademark AGFA to draw the impression that it is affiliated with the Complainant or endorsed by it. B. Respondent The Respondent replied on several occasions to the Complainant’s communications stating that it would transfer the Disputed Domain Name to the Complainant. However, due to the expiration of the suspension period of the proceedings without a successful settlement, the Complainant requested the Center to proceed to panel appointment, and issuance of a Decision on the merits. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Name in this case: “(i) the domain name is identical or confusingly similar to a trademark or service mark in the which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith.” A. Identical or Confusingly Similar Based on the evidence submitted, this Panel finds that the Disputed Domain Name The Disputed Domain Name only differs from the Complainant’s trademark with the addition of the dictionary term “medical”. The addition of such term does not prevent a finding of confusing similarity with the Complainant’s trademark. Moreover, the addition of the Top-Level Domain (“TLD”) “.com” does not change this finding, since the TLD is generally disregarded in such an assessment of confusingly similarity. Therefore, this Panel finds that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name: “(i) before any notice to you of the dispute, your use of, demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue.” There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the AGFA trademark. In addition, in the correspondence with the Complainant, the Respondent recognized that the Disputed Domain Name belongs to the Complainant. As such, this Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith. The Complainant has used its trademarks long before the Disputed Domain Name was registered. The Complainant’s trademarks are well-known as it has been recognized by previous decisions under the Policy (see Agfa-Gevaert N.V. v. Domain Administrator, See PrivacyGuardian.org,WIPO Case No. D2020-1106, and AGFA-GEVAERT N.V. v. shenxingyu,WIPO Case No. D2019-1496). In light of this, the Respondent had evidently knowledge of the Complainant’s AGFA trademark when it registered the Disputed Domain Name. The addition of the dictionary term “medical” to the well-known trademark AGFA in the Disputed Domain Name is further evidence of bad faith. The circumstances in the case before the Panel indicates that the Respondent was aware of the Complainant’s trademarks when registering the Disputed Domain Name and it has intentionally created likelihood of confusion with the Complainant’s trademarks in order to attract Internet users for his own commercial gain. Moreover, it is important to highlight that the Respondent agreed to transfer the Disputed Domain Name to the Complainant. Finally, the Disputed Domain Name is offered for sale. Accordingly, the Panel finds that the Respondent has registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to the Complainant, who is the owner of the trademark AGFA, or to a competitor of the Complainant for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name, according to paragraph 4(b)(i) of the Policy. Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith. 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, Pablo A. Palazzi
- AGFA European Union trademark registration No. 003353463, registered on January 24, 2005; and
- AGFA HEALTHCARE European Union trademark registration No. 016044059, registered on March 22, 2017.
Sole Panelist
Date: October 30, 2020
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