The Complainant is Agfa-Gevaert N.V., Belgium, represented by Novagraaf Belgium NV/SA, Belgium.
The Respondent is Shtefan Jurij Borisovich, Kazakhstan.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2021. On September 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 11, 2021, 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 September 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2021.
The Center appointed John Swinson as the sole panelist in this matter on October 8, 2021. 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 BackgroundThe Complainant is a Belgium-German multinational business that is active in the photographic sector, medical imaging and medical software sector. It was founded more than a hundred years ago. It was once a very well-known company in the photography sector, namely as a manufacturer of cameras and photographic film.
The Complainant owns many registered trademarks for AGFA, including European Union Trade Mark Registration No. 3353463 for the word AGFA registered since January 24, 2005 in classes 1, 2, 7, 9, 10 and 42.
The disputed domain name was registered on January 20, 2021.
The Respondent did not file a response, so little is known about the Respondent.
At the time of this decision, the disputed domain name diverts to a website at “www.fotocity-kz.com”. This website is in Cyrillic text, and appears to advertise photographic printing services, such as the making of prints of photographs, and producing items with photographs printed on them, such as wall hangings, calendars, shirts and mugs. This website has the branding “Agfa City” and in-between the words “Agfa” and “City” is the Complainant’s diamond trademark that includes the word “Agfa”.
5. Parties’ Contentions A. ComplainantIn summary, the Complainant makes the following submissions:
The Complainant owns many trademarks containing the word AGFA.
The Complainant has been active in the graphics and photographic sector for many years and enjoys a worldwide reputation. The Complainant also owns various domain names containing the word AGFA.
The disputed domain name contains the Complainant’s trademark and the letters “kz” which is the ISO code for Kazakhstan. This may imply that the website at the disputed domain name refers to the Complainant’s activities in that country. By using the Complainant’s trademark in the disputed domain name, the Respondent creates confusion as consumers may believe that the disputed domain name refers to the Complainant.
The Respondent has not been commonly known by AGFA. The Complainant has not licensed or otherwise authorized the Respondent to use the AGFA trademark or any domain name that includes AGFA.
The Respondent is using the Complainant’s logo on the header of its websites without authorization.
The Complainant has prior rights in AGFA. The Respondent has no right or legitimate interest to use AGFA.
The AGFA trademarks are famous, and in fact are so famous that the Respondent must have been aware of the Complainant’s trademark rights when selecting the disputed domain name.
The Complainant relies of paragraph 4(b)(iv) of the Policy.
The Complainant suspects that the Respondent selected AGFA to draw the impression that it is affiliated with the Complainant.
The Complainant tried to contact the Respondent prior to filing the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsTo succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the disputed domain name 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant even though the Respondent failed to submit a Response.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Identical or Confusingly SimilarThe Complainant owns long-standing trademark registrations for AGFA.
Other UDRP panels have accepted that the Complainant has trademark rights in AGFA. See, for example, Agfa-Gevaert N.V. v. Domain Administrator, See PrivacyGuardian.org / Yang Huai Yi, Chang Sha Bo Huan Wang Luo Ke Ji You Xian Gong Si,WIPO Case No. D2019-1495.
The disputed domain name includes the Complainant’s trademark AGFA in its entirety. The disputed domain name also includes the word “city”, a hyphen, and the letters “kz” (which the Panel understands to be the country code for Kazakhstan according to ISO-3166 Alpha-2). The addition of these extra terms and the hyphen does not avoid a finding of confusing similarity between the disputed domain name and the Complainant’s AGFA trademark under the Policy.
The Panel accordingly concludes that the disputed domain name is confusingly similar to the Complainant’s AFGA trademark, disregarding the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant succeeds on the first element of the Policy in relation to the disputed domain name.
B. Rights or Legitimate InterestsThe second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] 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 in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [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 trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant.
Previous UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent.
Accordingly, it is sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden of production will shift to the respondent to rebut that prima facie case.
The Complainant states that the Complainant has not licensed or authorized the Respondent to use the Complainant’s AGFA trademark or to include the AGFA trademark in any domain name. The Complainant also states that the Respondent is not commonly known by the name AGFA.
The question arises as to whether there is bona fide use of the disputed domain name by the Respondent and whether the Respondent is the legitimate distributor of AGFA products. The Complainant states that the Respondent uses the Complainant’s AGFA logo without authorization. The website to which the disputed domain name diverts does not appear to sell AGFA products. The evidence suggests that the use of AGFA by the Respondent is not bona fide.
In these circumstances, the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds that the Complainant succeeds on the second element of the Policy in relation to the disputed domain name.
C. Registered and Used in Bad FaithParagraph 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.
In the present circumstances, the fact that the disputed domain name resolves to a website, which copies the Complainant’s logo leads the Panel to conclude the registration and use of the disputed domain name are in bad faith.
The Respondent’s conduct demonstrates the Respondent’s knowledge of the Complainant and its trademark. By registering the disputed domain name and then by using the disputed domain name to, in effect, impersonate the Complainant by also using the Complainant’s famous AGFA diamond logo, demonstrates that the Respondent specifically knew of and targeted the Complainant.
The use of a logo in the masthead of the Respondent’s website, which is the same as the Complainant’s logo, in respect of similar services to those once offered by the Complainant, is misleading. The Respondent’s website site is likely to be confused for a website belonging to or connected with the Complainant and its services. Compare Solstice Marketing Corporation v. Solsticesunglasses-Discount-Shop-Sale.com,WIPO Case No. D2017-1919.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website under paragraph 4(b)(iv) of the Policy. This also could disrupt the business of the Complainant and may constitute bad faith under paragraph 4(b)(iii) of the Policy to the extent that the Complainant and the Respondent could be considered to be competitors.
The Panel finds that the Complainant succeeds on the third element of the Policy in relation to the disputed domain name.
7. DecisionFor 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
John Swinson
Sole Panelist
Date: October 22, 2021