Complainant is Agfa-Gevaert N.V., Belgium, represented by Novagraaf Belgium NV/SA, Belgium.
Respondent is Milen Radumilo, Romania.
The disputed domain name <agfa-graphics.asia> (the “Domain Name”) is registered with Dynadot, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2020. On July 31, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 2, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 18, 2020, 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 August 19, 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 Respondent of the Complaint, and the proceedings commenced on August 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 9, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 14, 2020.
The Center appointed Clive L. Elliott Q.C. as the sole panelist in this matter on September 29, 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.
Complainant is a limited liability company, incorporated in Belgium, active in the photographic sector, medical imaging and medical software sector.
Complainant is the owner of many trade marks containing the word AGFA (“Complainant’s Marks”), including:
Complainant is also the owner of various domain names containing the words “agfa” and “graphics”. Details are provided in the Complaint.
According to the publicly available WhoIs the Domain Name was registered on June 10, 2020. At the time of filing of the Complaint, the Domain Name did not resolve to an active website.
Complainant states that it has a worldwide reputation and is well-known as a manufacturer of cameras and film. It asserts that Complainant’s Marks are famous and pre-date registration of the Domain Name.
Complainant submits that the Domain Name is confusingly similar to Complainant’s Marks and its actively used trade and commercial names, as it consists of the imaginary word “Agfa” in its entirety, together with the descriptive term “graphics” and the name “asia”.
Complainant contends that Respondent has not been commonly known by the Domain Name. Nor is the Domain Name linked to any active website used by Respondent.
Complainant further contends that Respondent is not licensed or otherwise authorized to use Complainant’s Marks or any domain name including Complainant’s Marks. Complainant submits that consequently Respondent has no rights or legitimate interests to use or register the Domain Name.
Complainant doubts that Respondent was not aware of the pre-existence of Complainant’s Marks and argues that registration of the Domain Name has been made in bad faith, especially as the Domain Name is identical to several of Complainant’s domain names.
Complainant goes on to state that from research carried out on Respondent, it appears that Respondent has filed numerous domain names containing famous trade marks, and subsequently has 77 UDRP complaints filed against it.
Respondent did not reply to Complainant’s contentions.
Complainant is a Belgium company. Complainant asserts, without dispute from Respondent, that it has a worldwide reputation, first as a manufacturer of cameras and film and more latterly in the photographic sector, medical imaging and medical software sector.
Complainant is the owner of Complainant’s Marks, which marks contain as a key element the fanciful word AGFA. On the basis of the record, Complainant also uses the term “graphics” in its domain names. The Domain Name is confusingly similar to Complainant’s Marks and the addition of the descriptive term “graphics” and the generic top level domain “.asia” do not prevent a finding of confusing similarity.
Complainant has established that it has rights in Complainant’s Marks and that these rights predate Respondent’s registration of the Domain Name. Accordingly, the Panel finds that:
a) Complainant has rights in respect of Complainant’s Marks; and
b) the Domain Name is confusingly similar to Complainant’s Marks.
Accordingly, the Panel is satisfied that the first element of the Policy has been met.
Complainant asserts that Respondent is not actively using the Domain Name. Given the finding above that the Domain Name is confusingly similar to Complainant’s Marks, the question arises whether Respondent is entitled to register and effectively sit-on or “park” the Domain Name?
IIn the absence of any response from Respondent, or reliance on any license or authorisation, the Panel infers that the Domain Name is likely to create a mistaken impression. That is, that the Domain Name and/or Respondent is connected to or associated with Complainant and/or Complainant’s Marks.
Based on the above, the Panel is satisfied that the second element of the Policy has been met.
Complainant makes the strong case that Complainant’s Marks are famous and far predate the Domain Name registration, so much so that Respondent could not ignore the preexistence of Complainant’s trade mark rights, in particular in the graphics sector, and that Respondent must have been aware of it when selecting the Domain Name. There is merit in this argument.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.3 deals with the “passive holding” or non-use of a domain name. The general view is that the non-use of a domain name would not prevent a finding of bad faith, but that each case depends on the totality of the circumstances. A number of circumstances lead the Panel to conclude that a finding of bad faith is appropriate in the present case.
First, Complainant’s Marks are famous and contain as a key part the fanciful word AGFA. Secondly, Respondent has failed to provide any evidence of actual or contemplated good faith use. Thirdly, Complainant argues that from research carried out on Respondent, it appears that Respondent was a respondent in numerous previous UDRP cases where domain names were containing famous trade marks, and subsequently 77 UDRP decisions ordered to transfer the domain names back to the complainant.
In the absence of any attempt to refute these allegations or explain these adverse UDRP decisions the Panel finds that Respondent must have known of Complainant and its business activities and registered and used the Domain Name to take bad faith advantage of Complainant and/or Complainant’s Marks as described under paragraph 4(b)(ii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <agfa-graphics.asia> be transferred to Complainant.
Clive L. Elliott Q.C.
Date: October 29, 2020
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