The Complainant is Agfa-Gevaert N.V., Belgium, represented by Novagraaf Belgium NV/SA, Belgium.
The Respondent is Contact Privacy Inc. Customer 1246729257, Canada / Faris Akhazzan, Thailand. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2020. On June 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 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 June 4, 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 June 9, 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 June 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2020. The Respondent sent an email on June 7, 2020 to the Center (described further below) but did not submit any substantive Response. Accordingly, the Center proceeded with the panel appointment on July 2, 2020. The Center appointed David H. Bernstein as the sole panelist in this matter on July 10, 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 a Belgian multinational LLC operating in the photographic, medical imaging, and medical software sectors. The Complainant owns numerous trademark registrations for the mark AGFA including an European Union (EUTM) registration issued in 2005 in International classes 1, 2, 7, 9, 10, 40, and 42 and an EUTM registration issued in 2010 in International class 5. The Respondent registered the disputed domain name The Complainant alleges that the disputed domain name The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name because the Complainant has not licensed or authorized the Respondent to use the mark in any way. The Complainant also alleges that the Respondent is not commonly known by the name “agfa”. The Complainant further suggests that the Respondent has no legitimate interest in the disputed domain name because the website is not currently in use. Finally, the Complainant alleges that, by registering the disputed domain name The Respondent did not reply to the Complainant’s contentions. The only communication that the Center received from the Respondent was an inquiry on June 7, 2020 that stated: “I am not sure what this is all about? Could somebody please explain what the complaint is about and what this dispute is about and what it has to do with agfaholding.com?” The Center responded by explaining that a Complaint had been filed under the UDRP, that the Center was reviewing the Complaint for compliance with the requirements of the UDRP, and that, once those requirements have been confirmed, the Center would provide the Respondent with formal notice of the Complaint, at which time the Respondent’s time to Respond would begin to run. The Center also provided the Respondent with a link to resources on the Center’s website to assist the Respondent in preparing a Response. Despite the Center’s communication to the Respondent and the Center’s subsequent notice of Complaint, the Respondent did not file any Response nor did it send any other communication to the Center. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order to obtain cancellation or transfer of a disputed domain name: (i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the respondent has no rights or legitimate interests with respect to the domain name; and (iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has established rights in the AGFA word mark by virtue of its ownership of trademark registrations for that mark. The disputed domain name, The Panel therefore finds that the disputed domain name, Demonstrating that a respondent has no rights or legitimate interests in a domain name requires the complainant to prove a negative, which can be challenging if only the respondent is aware of its intentions with respect to the domain name and its claim of rights or legitimate interests. For that reason, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production . . . shifts to the respondent.” WIPO Overview 3.0, section 2.1. The burden of proof, however, always remains on the Complainant. Id. The Complainant has asserted sufficient allegations to make a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. First, the Complainant asserts that the Respondent is not commonly known by the AGFA trademark. Second, the Complainant has not licensed use of its mark to the Respondent. Third, the disputed domain name is not currently in use, and has not been used for any website that might support a claim of rights or legitimate interests. The Complainant’s prima facie showing shifts the burden of production to the Respondent. As the Respondent did not submit any substantive Response, the Panel finds that the Complainant has established that the Respondent lacks rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith To establish bad faith, the Complainant first asserts that the AGFA mark is “so famous” that the Respondent must have known of the mark when it selected its domain name. However, the Complainant offers no evidence to support this assertion. As the WIPO Overview 3.0 makes clear in section 4.2, “conclusory statements unsupported by evidence will normally be insufficient to prove a party’s case.” The AGFA trademark may well be famous, but the Complainant’s conclusory allegations of fame are insufficient to prove fame; instead the Panel would expect a complainant asserting that its mark is famous to allege facts that might support a finding of fame, such as information on the history of the use of the mark, the scope and extent of advertising of the mark, the scope and extent of sales of products or services under the mark, the existence of unsolicited media attention for the mark, the existence of other publicity for the mark, and any actual recognition of the mark (such as by consumers or through brand awareness surveys). A complainant is not required to submit all of this evidence, or detailed figures reflecting advertising and sales, or even any documentary support, but a well pled complaint must at least assert (and certify) facts that can support the asserted conclusion. Nevertheless, whether generally or in a case of passive holding like this one, fame is not a prerequisite to success. Rather, as section 3.3 of the WIPO Overview 3.0 explains, “factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put” (emphasis added). Here, all four of these factors support a finding that the Respondent’s passive holding of the disputed domain name establishes that the Respondent registered and used the domain name in bad faith. First, although the Complainant has not provided evidence on the degree of reputation (let alone fame) of its mark, there is no dispute that the term AGFA – which is not a dictionary word – is a distinctive mark. Indeed, based on the Panel’s review of the European Union trademark database, all of the registered European Union trademarks for or containing the word “agfa” are owned by the Complainant.1 Second, as noted above, the Respondent did not submit a substantive Response (even after the Center provided information on how to do so) and has therefore not provided any evidence of any actual or contemplated good-faith use. Third, as also noted above, the Respondent initially concealed his identity by registering the disputed domain name through a privacy service. Fourth, given that the disputed domain name appears to impersonate a holding company of Agfa, it is implausible that the Respondent has any good faith use to which it might put the disputed domain name. Finally, the policy goals underlying the UDRP support a finding of bad faith in this case. ICANN adopted the UDRP based on the recommendation of WIPO to prevent abusive cybersquatting and to allow trademark owners to vindicate their rights in an efficient manner when registrants register and squat on domain names containing their trademarks. 2 Although it is difficult to divine the Respondent’s intentions when it has not used the disputed domain name for any active website and has declined to participate in this proceeding, it would be a perversion of the Policy to decline to award transfer when a respondent has registered a domain name containing a distinctive mark that impersonates the trademark owner and then passively holds that domain name. See WIPO Overview 3.0, Section 2.5.1; Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC,WIPO Case No. D2019-0633. The Panel therefore finds that the Complainant has established that the Respondent registered and used 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, David H. Bernstein 1 As the WIPO Overview 3.0 makes clear in section 4.8, a panel may “access [ ] trademark registration databases.” 2See World Intellectual Property Organization, The Management of Internet Names and Addresses: Intellectual Property Issues, Final Report of the WIPO Internet Domain Name Process, para. 168 (1999) (“It was a striking fact that in all the 17 consultation meetings held throughout the world in the course of the WIPO Process, all participants agreed that ‘cybersquatting’ was wrong. It is in the interests of all, including the efficiency of economic relations, the avoidance of consumer confusion, the protection of consumers against fraud, the credibility of the domain name system and the protection of intellectual property rights, that the practice of deliberate abusive registrations of domain names be suppressed.”).
Sole Panelist
Date: July 24, 2020
Full & Egal Universal Law Academy