WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Agfa-Gevaert N.V. v. DotMedia Limited, DotMedia Limited

Case No. D2020-1412

1. The Parties

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

The Respondent is DotMedia Limited, DotMedia Limited, Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <agfaphoto.net> is registered with DropCatch.com LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2020. On June 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 2020, 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 June 4, 2020 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 June 9, 2020.

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 June 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 1, 2020.

On June 18, 2020, someone wrote to the Center under the name Eason Gong, responding to the Notification of Complaint that had been sent by the Center to the Respondent and had been forwarded from the Respondent to Eason Gong, asking the Center: “What do we need to do?” The Center replied, asking the sender to identify her or his relationship with the Respondent. Neither Eason Gong nor the Respondent filed any other communications with the Center. Accordingly, on July 2, 2020, the Center informed the Parties that it would proceed with panel appointment.

The Center appointed David H. Bernstein as the sole panelist in this matter on July 10, 2020. 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 Background

The Complainant owns several trademarks containing the word “agfa”, including European Union Trade Mark (“EUTM”) Registration No. 3353463 for the word mark AGFA, registered on January 24, 2005, and EUTM Registration No. 8820979 for the word mark AGFA, registered on July 5, 2010. The Complainant uses these and other associated marks in connection with its activities in the photographic, medical imaging, and medical software sector.

The Respondent registered the disputed domain name on May 13, 2020. The Panel has entered the disputed domain name into different browsers on different devices and has observed that, depending on the user’s device and/or location, accessing the disputed domain name redirects the user to different URLs (including URLs such as <sogou.com>, <206729.com>, and <gb001.app>), which display advertisements to gambling or explicit/sexual content, or fail to connect to an active website. According to evidence submitted by the Complainant, at the time of filing of the Complaint, the disputed domain name itself did not resolve to an active website; the Panel has confirmed that is still the case as of the date of this decision.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that it has rights in the trademark AGFA as evidenced by its registration with the European Union Intellectual Property Office (“EUIPO”) and based on its use predating such registration.

The Complainant asserts that its AGFA trademark is famous and is widely known amongst the public for its products in the field of imagery.

The Complainant argues that the disputed domain name is identical or confusingly similar to its registered mark.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent has not been commonly known by AGFA, and because the Complainant has not licensed or otherwise authorized the Respondent to use its AGFA trademark.

The Complainant asserts that the mark is so famous that the Respondent must have been fully aware of it when selecting the disputed domain name.

The Complainant states that the fact that the Respondent has chosen the disputed domain name is per se a clear indication that the registration and use of the disputed domain name was made in bad faith, due to the alleged fame of the Complainant’s mark.

The Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to it.

B. Respondent

As noted above, the Respondent did not file any substantive Response to the Complainant’s contentions.

6. Discussion and Findings

The Complainant must prove each of the following elements to establish that the Respondent has engaged in abusive domain name registration, pursuant to paragraph 4(a) of the Policy, and to obtain transfer of the disputed domain name:

(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.

A. Identical or Confusingly Similar

The Complainant holds several trademark registrations for the AGFA trademark. Those registrations are sufficient to establish the Complainant’s rights in the AGFA trademark.

The disputed domain name, <agfaphoto.net>, incorporates the Complainant’s entire trademark AGFA, with the additions of the descriptive word “photo” and the “.net” generic Top-Level Domain (“gTLD”). As such, the disputed domain name is confusingly similar to the Complainant’s trademark for the purposes of the Policy.See sections 1.7, 1.8, and 1.11 of the WIPO Overview 3.0.

The Panel thus finds that the Complainant has met its burden of proving the first element, in that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

In order to prevail under the second factor, the Complainant must make a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the burden of production shifts to the Respondent to come forward with evidence establishing its rights or legitimate interests (though the burden of proof always remains on the Complainant). Seegenerally WIPO Overview 3.0, at section 2.1.

The Complainant states that it has not licensed or otherwise permitted the Respondent to use the trademark or to register any domain name incorporating the trademark.

The Respondent’s name is DotMedia Limited, which bears no obvious facial relationship to the name “agfa” or “agfaphoto”. The disputed domain name redirects Internet users to websites such as “www.sogou.com”, but these websites do not immediately appear to bear any relationship to “agfa” or “agfaphoto” or to the AGFA trademark. There is also no indication from the record, from the websites to which the disputed domain name resolves, or from the Respondent’s communication to the Center, that the Respondent has been commonly known by the disputed domain name, or that the Respondent is making a legitimate noncommercial or fair use of the Complainant’s mark.

Because the Respondent has failed to submit a substantive Response, this prima facie case is unrebutted. As such, the Panel finds that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in connection with the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant argues that the disputed domain name should be found to have been registered and used in bad faith for the following principal reasons:

“The AFGA trademarks are famous and far predate the disputed domain name registration. The trademark AGFA is in fact so famous that the Respondent could not ignore the preexistence of the Complainant’s trademark rights and the Respondent must have been fully aware of it when selecting the domain name.”

“The fact that the Respondent has chosen as domain name a known trademark is per se a clear indication that the registration of the disputed domain name was made in bad faith.”

“The Complainant suspects that the Respondent has selected its reputed trademark AGFA to draw the impression that it is affiliated with the Respondent, or endorsed by it. This is unacceptable for the [Complainant].”

The Panel cannot accept the Complainant’s arguments, standing alone, for why bad faith should be found here. These arguments are premised on the alleged “fame” and reputation of the AGFA mark, but the Complainant offers no direct evidence to support the assertion that the AGFA mark is famous. As the WIPO Overview 3.0 makes clear in section 4.2, “conclusory statements unsupported by evidence will normally be insufficient to prove a party’s case.” The AGFA trademark may be famous, but the Complainant’s conclusory allegations of fame are insufficient to prove fame; instead the Panel would expect a complainant asserting that its mark is famous to allege facts that might support a finding of fame, such as information on the history of the use of the mark, the scope and extent of advertising of the mark, the scope and extent of sales of products or services under the mark, the existence of unsolicited media attention for the mark, the existence of other publicity for the mark, and any actual recognition of the mark (such as by consumers or through brand awareness surveys). The Panel would not require evidence related to all of these categories, detailed figures reflecting advertising and sales, or even any documentary support, but it does expect complainants, especially those represented by counsel, to submit at least some allegations of facts (supported by the Complainant’s certification that all of the facts alleged are true). The mere statement that the Complainant’s mark is famous is a conclusory allegation; it is not an allegation of facts from which the Panel can make a proper finding. Because the Complainant has failed to submit proper evidence of fame, the Panel declines to find that the Complainant’s mark is famous.

Nevertheless, fame is not a prerequisite to success generally, and here, given the facts of this case. That is because the Complainant also references paragraph 4(b)(iv) of the Policy, which provides that the following conduct, if found by the panel to be present, shall be evidence of bad faith registration and use:

(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] 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 [the Respondent’s] website or location.

As noted above, an Internet user who enters the disputed domain name into her browser may, depending on the device or browser used, or location, be automatically redirected to other websites that contain content related to gambling or sexual explicit images. The use of the Complainant’s trademark in a domain name that automatically redirects to such content, which is entirely unrelated to the trademark or the goods and services provided by the Complainant, is paradigmatic bad faith. See generally WIPOOverview 3.0, at section 3.1.4; see also, e.g.,Booking.com BV v. Chen Guo Long, WIPO Case No. D2017-0311 (finding bad faith where disputed domain name resolved to a website that displayed, inter alia, pornography); AT&T Corp. v. Amjad Kausar, WIPO Case No. D2003-0327 (finding bad faith where disputed domain name redirected Internet users to pop-up boxes that redirected further to gambling and pornographic websites); Nicole Kidman v. John Zuccarini d/b/a Cupcake Party, WIPO Case No. D2000-1415 (finding bad faith where disputed domain name resolved to pop-up advertisements including for sexually-explicit websites).

The fact that some of these websites contain photographs of nude models heightens the bad faith here given that the disputed domain name combines the AGFA mark and the descriptive term “photo”, as it may cause some Internet users to associate Complainant’s AGFA photography- and imaging-related services with these sexually explicit images. Such tarnishing of the Complainant’s mark is further grounds for a finding of bad faith. See generally Policy paragraph 4(c)(iii); WIPO Overview 3.0, section 3.12; V&V Supremo Foods, Inc. v. [email protected], WIPO Case No. D2006-1373; Guccio Gucci S.p.A. v. Lin Shi Jiang, WIPO Case No. D2013-2164.

Finally, the fact that the disputed domain name did not resolve to an active website at the time of filing of the Complaint (i.e., is passively held) supports a finding of bad faith registration and use. See generally Agfa-Gevaert N.V. v. Contact Privacy Inc. Customer 1246729257 / Faris Akhazzan, WIPO Case No. D2020-1411.

The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied, in that the Respondent has registered and is using the disputed domain name in bad faith.

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, <agfaphoto.net>, be transferred to the Complainant.

David H. Bernstein
Sole Panelist
Date: July 24, 2020

¹ As the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) makes clear in section 4.8, a panel may visit “the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name.”

² Given the absence of a Response, the Panel has carefully reviewed the record to ensure that the Center discharged its obligations to give the Respondent fair notice of this proceeding. Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415. In an attempt to provide notice to the Respondent, the Center sent notification of the Complaint to the Respondent via email and (DHL) courier. The Center’s records reflect that email correspondence did not bounce back, and that the package shipped via courier was successfully delivered and signed for. Moreover, as noted above, the Respondent did receive actual notice as it forwarded the Notification of Complaint to “Eason Gong”. In light of the successful transmission of the Notification of Complaint via email and courier, the Panel finds that the Respondent received actual notice of the Complaint. Regardless, even if the Respondent did not receive actual notice, the Panel finds that the Center has discharged its obligation to provide fair notice to the Respondent under paragraph 2(a) of the Rules. Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647.