WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Agfa-Gevaert N.V. v. Identity Protection Service, Identity Protect Limited / Martin

Case No. D2019-1497

1. The Parties

The Complainant is Agfa-Gevaert N.V., Belgium, represented by Novagraaf Belgium NV/SA, Belgium.

The Respondent is Identity Protection Service, Identity Protect Limited, United Kingdom / Martin, Uganda.

2. The Domain Name and Registrar

The disputed domain name <agfacorp.com> is registered with Mesh Digital Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2019. On June 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 28, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 8, 2019, 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 the same day.

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 July 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was August 4, 2019.

The Center received an email communication on July 15, 2019, from the Respondent regarding the status of the disputed domain name. In response, the Center sent to the Parties a possible settlement email on July 16, 2019. On July 19, 2019, the Complainant requested the administrative proceedings to be suspended in order to explore settlement options. On July 19, 2019, the Center notified the Parties on suspension of the proceedings. The Complainant requested the reinstitution of the proceedings on August 13, 2019. Accordingly, the proceedings herein were reinstituted on August 14, 2019, rendering the due date for response August 30, 2019. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties that it was proceeding to the panel appointment on September 2, 2019.

The Center appointed Cherise Valles as the sole panelist in this matter on September 10, 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 Respondent submitted a further email communication to the Center on September 12, 2019.

4. Factual Background

The Complainant is a multinational developer, manufacturer and distributor of imaging products and systems and IT solutions which has been active in the photographic, medical imaging and medical software sector for many years and enjoys a worldwide reputation.

The Complainant owns a number of trademarks in jurisdictions around the world for the term AGFA, including the following:

- European Union Trade Mark No. 003353463 for AGFA, registered on January 24, 2005, in classes 1, 2, 7, 9, 10, 40, and 42; and
- European Union Trade Mark No. 008820979 for AGFA, registered on July 5, 2010, in class 5.

The disputed domain name was registered on April 7, 2019. The disputed domain name does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

- The disputed domain name is confusingly similar to the Complainant’s registered trademark, AGFA, in light of the fact that it wholly incorporates the Complainant’s mark.

The Respondent lacks rights or legitimate interests in the disputed domain name.

- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.

The disputed domain name has been registered and is being used in bad faith.

- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.

The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. In its email communication of July 15, 2019, the Respondent simply indicated that “agfacorp.com is already cancelled in our account”. In its email communication of September 12, 2019, the Respondent stated, inter alia, that “this domain name is no longer in my domain name panel”.

6. Discussion and Findings

The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:

- the domain name is identical or confusingly similar to a trademark in which the complainant has rights;
- the respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith.

The Complainant has the burden of proof in establishing each of these elements.

The Respondent has failed to reply to the Complainant’s contentions. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant and the Respondent’s two brief email communications.

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.

The Complainant is the sole and exclusive owner of multiple registrations worldwide for the term AGFA, as indicated in Section 4 above. The disputed domain name wholly incorporates the Complainant’s trademark, with the addition of the element “corp”, which refers to the word “corporation”. Previous UDRP panels have held that added terms to a clearly and easily identifiable mark in a disputed domain name do not prevent a finding of confusing similarity with a complainant’s mark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Previous UDRP panels have held that the Top-Level Domain (“TLD”) “.com” is not to be taken into account when assessing whether a domain name is identical or confusingly similar to a trademark.

In light of the foregoing, the Panel finds that the disputed domain name <agfacorp.com> is confusingly similar to the Complainant’s registered trademark and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):

“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent did not reply to the Complainant’s contentions or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

Previous UDRP panels have established that in order to shift the burden of production to the respondent, it is sufficient for the complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has established a prima facie case and the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. In the absence of a reply to the Complainant’s contentions or assertion that any such right or legitimate interest exists, this must lead to a presumption that the Respondent is unable to show that such a right or legitimate interest exists. The Respondent’s two brief email communications do not contain any assertions that might indicate that the Respondent has any rights or legitimate interests in the disputed domain name.

There has never been any relationship between the Complainant and the Respondent. The Respondent is not licensed, or otherwise authorized, be it directly or indirectly, to register or use the Complainant’s trademarks in any manner whatsoever, including in or as part of the disputed domain name. To the best of the Complainant’s knowledge, the Respondent is not commonly known by the names “agfa” or “agfa corp”.

The disputed domain name resolves to a holding page. There is no evidence that the Respondent has made demonstrable preparations to use the disputed domain name, nor is there any evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods and services. There is also no evidence of a noncommercial or fair use of the disputed domain name.

In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online 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 its website or location.

The disputed domain name was registered after the Complainant had registered and used its AGFA marks over a number of years. Given the Complainant’s reputation worldwide, the Respondent must have been aware of the Complainant’s trademarks when the disputed domain name was registered. The Respondent’s registration of the disputed domain name suggests that the Respondent’s intention in registering the disputed domain name was to take unfair advantage of the Complainant’s AGFA trademarks and reputation in order to confuse Internet users as to the source or affiliation of the Respondent’s website.

Previous UDRP panels have held that a clear absence of rights or legitimate interests together with no credible explanation for a respondent’s choice of the domain name is a significant factor to consider that the disputed domain name was registered in bad faith. See BHP Billiton Innovation Pty Ltd (BHP Billiton Innovation) v. Joe Kreg, WIPO Case No. D2018-2712.

The Respondent is not making any use of the disputed domain name and is not offering any goods or services in connection with the disputed domain name. It has been established by previous UDRP panels that passive holding does not, as such, prevent a finding of bad faith. See, e.g., “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246.

Finally, the Respondent’s use of an identity protection service when registering the disputed domain name is further evidence of bad faith.

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) of the Policy.

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 <agfacorp.com> be transferred to the Complainant.

Cherise Valles
Sole Panelist
Date: September 24, 2019