The Complainant is AGFA-Gevaert N.V. of Belgium, represented by Novagraaf Belgium NV/SA, Belgium.
The Respondent is Salim Almuhairi of United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name is registered with AE Domain Administration (.aeDA). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 31, 2017. On October 31, 2017, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the disputed domain name. On November 1, 2017, AE Domain Administration (.aeDA) transmitted by email to the Center its verification response confirming that:
(a) it is the Registrar for the disputed domain name;
(b) the disputed domain name is registered in the name of the Respondent and providing the contact details;
(c) the language of the registration agreement is English;
(d) the disputed domain name was registered subject to the UAE Domain Name Dispute Resolution Policy (the "Policy" or "UAE DRP"), and the UAE DRP applies to the disputed domain name.
The Center verified that the Complaint satisfied the formal requirements of the UAE DRP, the Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the "Rules"), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy - UAE DRP (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 14, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was December 4, 2017. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on December 5, 2017.
The Center appointed Warwick A. Rothnie as panelists in this matter on December 19, 2017. The Panel finds that it was properly constituted. Each member of 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 the well-known, international graphics and photographics products and services supplier. For many years, many people around the world would have been familiar with it through its "Agfa" brand film products in particular. That consumer products division was apparently sold off in 2004. The Complainant now operates through three divisions, Agfa HealthCare, Agfa Graphics and Agfa Specialty Products.
Amongst other things, it is the owner of EUTM No. 003353463, AGFA, for apparatus and instruments for a wide range of goods and services in International Classes 1, 2, 7, 9, 10, 40 and 42 related to the photographic, graphic, reprographic, cinematographic, micrographic, radiographic and echographic fields. The application for this trademark was filed on September 16, 2003 and formally registered on January 24, 2005.
From the Registrar's confirmation, it appears that the disputed domain name was registered on November 4, 2016. Apparently, it has not resolved to an active website. 5. Discussion and Findings
No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 6(a) of the UAE DRP provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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 or is being used in bad faith. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical or confusingly similar to the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of EUTM No. 003353463 for AGFA.
The second stage of this inquiry requires a visual and aural comparison of the disputed domain name to the proven trademarks. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7.1 Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Disregarding the country code Top-Level Domain (.ae), the Complainant's trademark, AGFA, is clearly and prominently visible in the disputed domain name. The Panel finds therefore that the disputed domain name is confusingly similar to those trademarks. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 6(c) of the UAE DRP provides that the following circumstances may 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. 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 usually sufficient for a complainant to raise a prima facie case against the respondent under this head, and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., section 2.1 of the WIPO Overview 3.0.
The Complainant contends that it has not authorised the Respondent to use the Complainant's trademark and the Respondent is in no way connected or associated with the Complainant. The Complainant also points out that its trademark has been registered for many years before the Respondent registered the disputed domain name. In addition, it may be noted that the Complainant's trademark has been in use and well-known around the world for many years prior to that.
The initial component of the disputed domain name, "agfa", is not, so far as the Panel is aware, a common or dictionary term. Nor is it descriptive of anything. So far as the Panel is aware, its significance is only as the Complainant's trademark. The last four characters of the second level domain, "hcs1", do not apparently have any meaning, although "hcs" can be an acronym for health care services. Therefore, there does not appear to be any reason why the Respondent would register the disputed domain name other than because of its association with the Complainant's trademark.
Taken together these factors raise a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name under the UAE DRP.
The Respondent has not sought to rebut that prima facie case.
Accordingly, the Panel finds that the Complainant has established the second requirement under the UAE DRP. C. Registered and Used in Bad Faith
Under the third requirement of the UAE DRP, the Complainant must establish that the disputed domain name has been either registered or used in bad faith by the Respondent. Unlike the case under the UDRP, these are disjunctive requirements. It is necessary for the Complainant to establish only one or the other.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
As discussed in section 5B above, the distinctive element of the disputed domain name, "agfa", appears to have significance only as the Complainant's trademark. Given the length and extent of use of the Complainant's trademark, it seems unlikely that the Respondent was not aware of this when the Respondent registered the disputed domain name.
The Complainant also points out that the Respondent appears to have provided fake contact details when registering the disputed domain name. The Respondent has listed his street, city and state/province addresses each as "DXB". "DXB" is, or course, the IATA code for Dubai International Airport. Needless to say, it was not possible to deliver the physical Complaint via courier to the address provided by the Respondent. Also, emails sent to the address provided by the Respondent are undeliverable.
Taking all these matters into account, the Panel finds that the disputed domain name has been both registered in bad faith and, in accordance with the approach taken in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, is being used in bad faith also.
In these circumstances, the Panel finds that the Complainant has made out the third requirement under the UAE DRP. 6. Decision
For the foregoing reasons, in accordance with paragraphs 6(i) of the UAE DRP and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Warwick A. Rothnie
Panelist
Date: December 27, 2017
1 Consistently with the approach taken by other panels in proceedings under the UAE DRP, the Panel will apply jurisprudence under the Uniform Domain Name Dispute Resolution Policy ("UDRP") to corresponding substantive provisions under the UAE DRP.
Full & Egal Universal Law Academy