Complainant is Agfa HealthCare Inc., Canada, represented by Novagraaf Belgium NV/SA, Belgium.
Respondent is Sam Pike, United Kingdom, self-represented.
The disputed domain names <impax.digital> and <impax.solutions> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2019. On April 29, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 30, 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 Complainant on May 2, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on May 3, 2019.
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 Respondent of the Complaint, and the proceedings commenced on May 6, 2019. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2019. The Response was filed with the Center on May 25, 2019.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on June 6, 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.
Complainant is active in the photographic, medical imaging and software sectors. Complainant and affiliate companies within Complainant’s Agfa group own trademarks containing the word IMPAX, the most relevant of which are the following:
- IMPAX, Benelux registration No. 0507244 (December 10, 1991)
- IMPAX BASIC, Benelux registration No. 0663519 (November 22, 1999)
- IMPAX, European registration No. 007422165 (June 16, 2009)
- IMPAX Business Intelligence, European registration No. 015814973 (January 12, 2017)
- IMPAX, International registration No. 587793 (June 5, 1992)
Respondent owns a United Kingdom limited company, Impax IT Ltd, company no. 11815971, registered on February 8, 2019, operating in the IT contracting and solutions sector.
Both of the Domain Names, <impax.digital> and <impax.solutions>, were registered on September 23, 2018. They link to a website at “www.impax.it,” where there is a small header indicating “Impax | IT Solutions | Coming Soon!” and a message that reads “We’re currently working on our new website!” and “To find out more email [email protected]”
(i) Identical or confusingly similar
Complainant states that it has been active in the photographic sector, medical imaging and medical software sector for many years and enjoys a worldwide reputation. Complainant further states that the Domain Names contain Complainant’s trademark, IMPAX.
Complainant contends that previous UDRP panels have held that when a domain name wholly incorporates a complainant’s registered mark, this is sufficient to establish identity or confusing similarity for purposes of the Policy. Further, by using the Domain Names, Respondent creates confusion as consumers may believe that these Domain Names refer to Complainant.
(ii) Rights or legitimate interests
Complainant states that to the best of its knowledge, Respondent has not been commonly known by the name IMPAX. Both Domain Names currently redirect to a website linked to the domain name <impax.it>. Complainant has not licensed or otherwise authorized Respondent to use its trademark or any domain name including the trademark IMPAX. Consequently, Respondent has no right or legitimate interest to use and register the Domain Names, as Complainant has prior and exclusive rights on the name IMPAX.
(iii) Registered and used in bad faith
Complainant has submitted trademark registration certificates to show that the IMPAX trademark has been registered in the Benelux since 1991 and internationally since 1992. Complainant claims that the mark has been renowned in the medical sector and far predates registration of the Domain Names. Complainant states the trademark IMPAX is in fact so famous that Respondent could not ignore the preexistence of Complainant’s trademark rights and Respondent must have been fully aware of them when selecting the Domain Names.
Complainant contends that the fact Respondent chose the Domain Names, which correspond to Complainant’s known IMPAX trademark, is per se a clear indication that the registration of the Domain Names was made in bad faith. Bad faith is generally accepted in a case where, by using the Domain Names, 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 Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. Complainant suspects that Respondent has selected its reputed trademark, IMPAX, to draw the impression that it is affiliated with Respondent, or endorsed by it. This is unacceptable for Complainant.
(i) Identical or confusingly similar
Respondent states that he was unaware of Complainant’s trademarks at the time of registering the Domain Names. They were registered due to the nature of Respondents business, operating in the information technology (“IT”) sector and providing contracting and solutions to customers in the United Kingdom. Respondent has submitted a certificate of incorporation in the United Kingdom, dated February 8, 2019, for his business, IMPAX IT LTD.
Respondent argues against Complainant’s claim that the Domain Names create confusion. When registering the Domain Names and his UK limited company, web searches were made and no information or websites relating to Complainant were present in those searches. Respondent has submitted screen shots of Google searches for “IMPAX IT” and “IMPAX IT solutions” to show that none of the results on the pages correspond to Complainant.
(ii) Rights or legitimate interest
Respondent states that his company, IMPAX IT LTD, is a limited company registered in the United Kingdom in February 2019 and operating in the IT contracting and solutions sector. Respondent claims he has a legitimate interest to use the Domain Names corresponding to the name of his registered company. Work has been completed under this company and customers contacted using the Domain Names, even if Respondent has acquired no trademark or service mark rights. Both Domain Names have been imported into Respondent’s company Office 365 account and have been in use since December 2018. Respondent states that currently his custom website is nearing completion and can be found at “https://dev.impax.it,” along with the custom logo. This development has been underway since early December 2018.
(iii) Registered and used in bad faith
Respondent states that he only became aware of Complainant’s existence and trademarks upon receiving the Complaint. Respondent contends that web research on the IMPAX trademark proves that it is not as famous as Complainant claims, due to no information being discovered aside from when searching specifically for “Impax medical solutions” or “Agfa Impax.” Aside from the specific trademark searches and WIPO database search, it would be impossible to be aware of Complainant’s trademarks.
Respondent argues that Complainant’s IMPAX trademarks are not known trademarks. Impax IT Ltd is an IT contracting and solutions company and Respondent believes that the Domain Names, <impax.digital> and <impax.solutions>, are within the scope of reasonable domain names to register for a company in this industry. As the Domain Names include part of Respondent’s registered company name, Respondent argues that they were not registered in bad faith.
Analytics have been enabled on both Domain Names, and Respondent is thus able to see the exact number of users visiting the website and from which locations. During the months prior to the Complaint being filed, both Domain Names – which redirect to <impax.it> – collectively totaled 24 visitors with the majority from the United Kingdom. From April 1, 2019 until May 15, 2019 (the month the Complaint was filed), the number of visitors totaled 19 users. The location of the visitors can be traced to the United Kingdom, United States, United Arab Emirates, Switzerland, Italy and Netherlands. This is most likely due to Complainant and the Center viewing the Domain Names in question.
In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Names; and
(iii) Respondent has registered and is using the Domain Names in bad faith.
The Panel finds that Complainant has established rights in its IMPAX trademark, based on ownership of its Benelux, European Union and International trademark registrations.
Further, the Panel determines that the Domain Names are identical or confusingly similar to Complainant’s IMPAX mark. The Domain Names incorporate the IMPAX mark in its entirety, with the addition of the “digital” and “solutions” Top-Level Domains (“TLDs”). It is well accepted that the first element of the Policy functions primarily as a standing requirement, and 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 purposes of UDRP standing. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Moreover, “[t]he practice of disregarding the TLD in determining identity or confusing similarity is applied irrespective of the particular TLD (including with regard to “new gTLDs”); the ordinary meaning ascribed to a particular TLD would not necessarily impact assessment of the first element.” WIPO Overview 3.0, section 1.11.2.
Accordingly, the Panel finds that that the Domain Names are identical or confusingly similar to a trademark in which Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy. Complainant has satisfied the first element of the Policy.
Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant 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”.
In this case, Complainant made a brief submission concerning the second element of the Policy. Complainant asserted that, to the best of its knowledge, Respondent has not been commonly known by the name IMPAX; that Complainant has not licensed or otherwise authorized Respondent to use its IMPAX trademark or any domain name including the mark; and that the Domain Names currently redirect to a website linked to the domain name <impax.it>, which is under construction. The Panel finds that Complainant has satisfied the minimum of a prima facie showing.
In response to this showing, Respondent claims that it has a legitimate interest to use the Domain Names corresponding to the name of his registered company, Impax IT Ltd. Respondent further states that work has been completed under this company and customers contacted using the Domain Names. Regarding the website located at “www.impax.it,” Respondent claims it is nearing completion and development has been underway since early December 2018.
Here, the Panel determines, on the balance of the probabilities, that Respondent has successfully rebutted Complainant’s prima facie case. The evidence indicates that Respondent has a registered limited company in the United Kingdom under the name Impax IT Ltd. Further, Respondent has provided information, although limited, concerning his company and use of the Domain Names. Importantly, there is no evidence that the Domain Names have been used in a manner that is intended to target Complainant or its IMPAX trademarks.
Accordingly, the Panel finds that Complainant has failed to show that Respondent has no rights or legitimate interests in respect of the Domain Name. The Panel therefore concludes that Complainant has not established the second element of the Policy in accordance with paragraph 4(a)(ii).
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark.” Here, the Panel determines, on the balance of the probabilities, that Respondent has not taken unfair advantage of, or otherwise abused, Complainant’s IMPAX mark.
Complainant alleged that it has owned its IMPAX trademark since as early as 1991, that the mark is well known in the medical sector and sufficiently famous so that Respondent must have been fully aware of it when registering the Domain Names. Complainant case is based primarily on this contention, that is, that Respondent’s choice of the Domain Names, in view of Complainant’s reputation and goodwill in its IMPAX marks, is a per se indication that the Domain Names were registered in bad faith. The evidence, however, does not adequately support Complainant’s contention. Complainant has not submitted any evidence, other than the registration certificates for its IMPAX marks and statements in the Complaint, to demonstrate the strength of Complainant’s mark, whether in the medical sector or more generally. Further, Complainant has submitted no sufficient indication of actual or potential confusion.
Quite apart from these points, Respondent has put forward plausible information to support its claim that it was unaware of Complainant and its IMPAX mark when registering the Domain Names. Respondent has also provided tracking analytics data to show that thus far, there has been no confusion between Respondent and Complainant. Further, and importantly, there is no evidence that Respondent has used the Domain Names, or is planning to do so, in a manner that takes unfair advantage of Complainant’s IMPAX trademarks. Instead, the Domain Names correspond to Respondent’s registered company name, Impax IT Ltd.
In reaching its decision, the Panel makes no finding as to whether the Domain Names and their current or future use by Respondent might support an action under English law for passing off or trademark infringement. Instead, the Panel concludes, for all of the above reasons, that Complainant has failed to show that the Domain Names were registered and are being used in bad faith by Respondent. Accordingly, Complainant has failed to satisfy the third element of the Policy.
For the foregoing reasons, the Complaint is denied.
Christopher S. Gibson
Date: June 18, 2019
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