The Complainant is AGFA-GEVAERT N.V. of Belgium, represented by Novagraaf Belgium NV/SA, Belgium.
The Respondent is Hu Bing Yi of China.
The disputed domain names <agfa1.com>, <agfa123.com>, <agfa2.com>, and <agfa3.com> (the “Domain Names”) are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2019. On April 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 25, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 26, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant filed an amended Complaint on April 29, 2019 and confirmed its request that English be the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on May 2, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2019.
The Center appointed Karen Fong as the sole panelist in this matter on May 28, 2019. 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.
The Complainant is active in the photographic sector as well as in the medical imaging and medical software sector for many years. Its products and services are provided under the well-known brand name “AGFA”. The Complainant owns many trade marks containing the word “agfa” including European Union Trade Mark (“EUTM”) registration No 3353463 for AGFA registered on January 24, 2005, and EUTM registration No. 8820979 for AGFA registered on July 5, 2010 (the “Trade Mark”).
The Respondent who appears to be based in China registered the Domain Names on September 24, 2018. The Domain Names are not connected to active websites.
The Complainant contends that the Domain Names are confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and being used in bad faith. The Complainant requests transfer of the Domain Names.
The Respondent did not reply to the Complainant’s contentions.
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the registration agreement for the Domain Names is Chinese.
The Complainant submits that the language of the proceeding should be English for the following reasons:
(a) The Domain Names are made up of words using the Latin alphabet which gives rise to a presumption that the Respondent is familiar with the English language;
(b) English is the language most widely used in the world and international communications;
(c) If the proceeding is in Chinese, the Complainant would have to incur translation costs which probably which would impose an undue burden on the Complainant.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts the Complainant’s request regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a Response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost-effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and being used in bad faith.
The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case the Domain Names comprises the Trade Mark in its entirety and the numerals “123”, “1”, “2”, and “3” respectively. The addition of these non-distinctive numerals does not avoid a finding of confusing similarity between the Domain Names and the Trade Mark. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a standard registration requirement (section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
The Panel finds that the Domain Names are identical or confusingly similar to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence the complainant is deemed to have satisfied the second element.
The Complainant submits that the Respondent is not commonly known by the Domain Names or any name that incorporates the Trade Mark. The Complainant has not licensed, authorized, or otherwise permitted the Respondent to use the Trade Marks or apply for any domain name that incorporates the Trade Mark. As the Domain Names do not resolve to any active website, there is no evidence of any use or demonstrable preparation to use the Domain Names in connection with any bona fide offering of goods or services or legitimate noncommercial fair use under the Policy.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not provided any reasons why it chose to register the Domain Names comprising a trade mark with which it has no connection. The Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Names. It is implausible that it was unaware of the Complainant when it registered the Domain Names especially since the Complainant is well known globally and the Domain Names are identical to the Trade Mark with the edition of a single numeral for three of the Domain Names and three numerals for one of them.
In the WIPO Overview 3.0, section 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Names is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith.
The Domain Names resolve to an inactive website. This does not prevent a finding of bad faith under the “passive holding” principles which are laid out in section 3.3 of the WIPO Overview 3.0. In this case the totality of the circumstances to be considered include the fame of the Complainant, the multiple registrations of domain names with the Trade Mark combined with a variation of numerals, the failure of the Respondent to submit a Response in this proceeding and the implausibility of any good faith use for which the Domain Names can be put to.
From the above, the Panel finds that the Respondent has registered and used the Domain Names in bad faith and the Complainant has succeeded in proving the third element.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <agfa1.com>, <agfa123.com>, <agfa2.com>, and <agfa3.com> be transferred to the Complainant.
Karen Fong
Sole Panelist
Date: June 13, 2019
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