The Complainant is Agfa-Gevaert N.V., Belgium, represented by Novagraaf Belgium NV/SA, Belgium.
The Respondent is Pascal Olaf Schubert, Schubert UG, Germany. 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 the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 10, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name. The Center sent an email communication to the Complainant on June 10, 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 11, 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 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 7, 2020. The Respondent did not respond or otherwise communicate, but notification of the proceedings was successfully transmitted via both email and courier. Accordingly, the Center notified the Respondent’s default and proceeded with the panel appointment on July 8, 2020. The Center appointed David H. Bernstein as the sole panelist in this matter on July 14, 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 corporation that produces and distributes analogue and digital imagery, primarily for use in the printing, information technology, and healthcare sectors. Among the Complainant’s trademarks are a 2005 European Union trademark registration for the mark AGFA covering International classes 1, 2, 7, 9, 10, 40, and 42, and a 2010 European Union trademark registration for the mark AGFA covering International class 5. The Complainant also owns and operates the domain name The Respondent registered the Disputed Domain Name Contemporaneous with the filing of the Complaint, the Complainant’s counsel sent an email to the Registrar asking, inter alia, for the Registrar to provide the Complainant with contact information for the registrant so that the Complainant could contact the registrant directly. As the registrant’s contact information was later released to the Complainant only after the Center’s receipt of the Registrar’s verification, the Complainant proceeded to file the Amended Complaint. 5. Parties’ Contentions A. Complainant The Complainant alleges that the Disputed Domain Name is confusingly similar to its trademark AGFA, as the Disputed Domain Name contains the mark in its entirety, adding only the word “type”. The Complainant alleges that the Disputed Domain Name could result in consumer confusion given the longstanding reputation of the AGFA brand and mark. The Complainant also asserts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. It supports this assertion with a screenshot of the blank website to which the Disputed Domain Name resolves demonstrating that the Disputed Domain Name is not in use. Furthermore, Complainant claims that, as the exclusive rights holder of the AGFA mark, it did not confer a license or otherwise authorize use by the Respondent. The Complainant also states that the Respondent is not commonly known by the name “agfa”. Finally, the Complainant alleges that registration of the Disputed Domain Name was in bad faith. The Complainant first asserts that the AGFA trademark is so famous that the Respondent must have been on notice of infringement risk at the time of registration. Moreover, the Complainant argues that use of a known trademark in a domain name is a per se indication of bad faith. The Complainant also “suspects” that the Respondent selected the Disputed Domain Name to connote affiliation with or endorsement by the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred: (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. For the reasons stated below, the Panel finds Complainant has proven each of these elements. A. Identical or Confusingly Similar The Complainant holds several trademark registrations for the AGFA mark. Those registrations are sufficient to establish that the Complainant has rights to the trademark. The Respondent incorporates this mark in its entirety, adding only the word “type”. This alone is sufficient to support a finding that the Disputed Domain Name is confusingly similar. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) Section 1.7. (“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark…the domain name will normally be considered confusingly similar to that mark for the purposes of UDRP standing.”) Furthermore, the word “type” is a descriptive term commonly associated with printing. The addition of this word does not prevent a finding of confusing similarity. WIPO Overview 3.0, section 1.8. Accordingly, the Panel finds that Complainant has met its burden of proving the first element in that the Disputed Domain Name is confusingly similar to the registered mark. B. Rights or Legitimate Interests In order for the Complainant to prevail on the second element, it must make a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Upon doing so, the burden of production shifts to the Respondent to produce evidence to the contrary. The burden of proof, however, always rests on the Complainant. WIPO Overview 3.0, section 2.1. The Complainant has asserted that it has not licensed or otherwise authorized use of the mark to the Respondent, and that the Respondent is not known by the name “agfa”. In light of the Respondent’s default, there is little evidence in the record about the Respondent, but the Panel agrees with the Complainant that, based at least on the identification of the Respondent’s name through the Registrar verification, and the absence of any content on the website to which the Disputed Domain Name resolves, there is no evidence in the record that the Respondent is known by the name “agfa”, or that the Respondent is making any fair or other legitimate use of the Disputed Domain Name. The Panel thus concludes that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Given that the Respondent has failed to come forward with any evidence to rebut this showing, 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 Before reaching a conclusion on the finding of the third element, the Panel finds it appropriate to comment on the dearth of evidence in the Complaint. The Complainant made several assertions in the Amended Complaint that it failed to substantiate. For example, the Complainant states its mark is “so famous” that the Respondent must have known of its existence at the time it registered the Disputed Domain Name, but the Complainant has not submitted any evidence, or even allegations of fact, that substantiate that assertion. Similarly, the Complainant stated that its mark “enjoys a worldwide reputation”, yet it alleges no facts whatsoever to support that contention. Such facts might include information on the length of time the mark has been used, the geographic scope of the mark’s use, the extent and scope of advertising using the mark, the extent and scope of sales of products and services using the mark, unsolicited media recognition of the mark, and the results of brand awareness and consumer perception evidence. A complainant is not required to submit all of this evidence, or detailed figures, or even any documentary support at all, but the Panel does expect complainants, especially those represented by counsel, to submit at least some allegations of facts (supported by the complaint’s certification that all of the facts alleged are true). The statements that the Complainant’s mark is famous and enjoys a worldwide reputation are conclusory allegations; they are not allegations of facts from which the Panel can make findings. Because the Complainant has failed to submit proper evidence of fame or reputation, the Panel declines to find that the Complainant’s mark is famous or enjoys a worldwide reputation. Also unsupported is the Complainant’s contention that the Respondent’s selection of a “known trademark” should result in a per se finding of bad faith. That argument finds no support in the Policy or in the consensus view of UDRP panels. To the contrary, there are many UDRP decisions that find that a respondent’s adoption of a domain name that contains a known trademark is not illegitimate or bad faith. For example, such a domain name could reflect the respondent’s name, e.g., G. A. Modefine S.A. v. A.R. Mani,WIPO Case No. D2001-0537, it could reflect a nominative fair use, e.g., Amylin Pharmaceuticals, Inc. v. Watts Guerra Craft LLP,WIPO Case No. D2012-0486, it could reflect a descriptive fair use, e.g., Gstaad Saanenland Tourismus v. Domain Administrator, PrivacyGuardian.org / Dimitri Dimitriadis,WIPO Case No. D2016-2601, it could reflect a legitimate criticism or fan site, e.g., Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647, it could reflect use by an authorized reseller, e.g., Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; it could reflect use by an unauthorized reseller, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc.,WIPO Case No. D2007-1524, or it could reflect use of a respondent’s own trademark in a different geographic area, e.g., Office Holdings Limited v. Hocu To d.o.o. and Office Shoes d.o.o.,WIPO Case No. D2009-1277. It simply is not true that a respondent who registers a domain name that contains a known trademark has committed a per se violation of the Policy, resulting in automatic transfer of the domain name. Rather, as the WIPO Overview 3.0 makes clear in section 3.3, even in cases of passive holding, “panelists will look at the totality of the circumstances in each case” in assessing bad faith. Even more bizarre is the Complainant’s assertion that bad faith is evident here because, “by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on the respondent’s website or location.” That argument does nothing more than copy the standard articulated in Paragraph 4(b)(iv) of the Policy. Not only is it entirely non-specific to this case, but, in fact, it is irrelevant. For example, the Complainant has conceded that the Disputed Domain Name does not resolve to an active website – therefore, there are no products or services on the Respondent’s website that are being offered, let alone that could cause a likelihood of confusion. (The Panel is mindful that the Disputed Domain Name could be used in other ways designed to cause confusion, such as for phishing emails, but no allegations or evidence of such use has been put forward in this case.) Similarly, there is no evidence whatsoever that the Respondent is attempting to attract Internet users to its website for commercial gain; in fact, the Respondent does not appear to have any website connected to the Disputed Domain Name at all. In light of the somewhat deficient pleading on the facts and the irrelevant and incorrect assertions of law, the Panel has had pause in rendering this Decision, but because the Panel has concluded that the Respondent did register and use the Disputed Domain Name in bad faith, the Panel has concluded that justice would best be served by identifying the clear grounds on which bad faith registration and use can and should be found: that the Respondent has registered and used the domain name in bad faith through its passive holding of a domain name comprised of a distinctive mark. As the WIPO Overview 3.0 explains, in evaluating whether a respondent’s passive holding constitutes bad faith registration and use, panels have considered factors including “(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.” WIPO Overview 3.0, section 3.3. Because the first factor considers whether the mark is famous or distinctive, the Complainant’s failure to allege sufficient facts to establish the fame of the AGFA mark is not fatal to consideration of the passive holding doctrine. Here, three of the four factors support a finding of bad faith use and registration of the Disputed Domain Name. First, the mark AGFA is distinctive. It is not a dictionary word and, based on the Panel’s review of the European Union trademark database, all registered marks for or containing the word “agfa” are owned by the Complainant. Second, the Respondent has defaulted and has therefore provided no evidence of actual or contemplated good faith use. Third, there is no indication in the record that the Respondent intends to pursue any of the types of good faith uses of the Disputed Domain Name. Rather, based on the record before the Panel, the Panel infers that the Respondent registered the Disputed Domain Name to impersonate the Complainant. 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. These three factors are sufficient to establish that the Respondent’s passive holding of the Disputed Domain Name constitutes bad faith registration and use. The Panel therefore finds 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.”
Sole Panelist
Date: July 27, 2020
Full & Egal Universal Law Academy