The Complainant is Agfa-Gevaert N.V., Belgium, represented by Novagraaf Belgium NV/SA, Belgium.
The Respondent is Domain Admin / Privacy Protect, LLC (PrivacyProtect.org), United States of America / Leng Da Ge, China.
The disputed domain name <agfafrique.net> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2020. On October 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 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 October 12, 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 October 13, 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 October 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2020.
The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on November 9, 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.
The Complainant is a company incorporated in Belgium, part of an international group of companies, which operates worldwide in the graphics and photographic sector. It produces and distributes an extensive range of imaging systems and IT solutions, mainly for the printing industry and the healthcare sector, as well as for specific industrial applications, being commercially active worldwide either through wholly owned sales organizations (in more than 40 countries) or through agents and representatives. Particularly, the Complainant’s group operates in China and in many African countries. The Panel has consulted the Complainant’s corporate website under <agfa.com> (registered on November 14, 1989).
The Complainant’s group owns numerous trademark registrations worldwide consisting of or containing the term “agfa”, including International Registration No. 608334 AGFA, word, registered on September 25, 1993, in classes 1, 7, 9, 10, 16, 37, and 40; and International Registration No. 621951 AGFA, figurative, registered on June 17, 1994, in classes 1, 7, 9, 10, 16, 37, and 40, (collectively the “AGFA mark”).
The AGFA mark well-known worldwide character has been recognized by previous decisions under the Policy.1
The disputed domain name was registered on June 23, 2020, and it is linked to a website, in Chinese language, which appears to offer a mobile app of pornographic images under the name “Banana Porn”. This website includes the images of two cell phones containing various photographs of naked Asian women indicating that Banana Porn is ALEXA’s number one Chinese video app, containing various nationalities nude females’ videos to watch free, and indicates ways to download the application (including a scan code).
Key contentions of the Complaint may be summarized as follows:
The AGFA mark is famous and predates the registration of the disputed domain name.
The disputed domain name is confusingly similar to the AGFA mark creating the impression that the Complainant is the sponsor of, or is associated with, the web site identified by the disputed domain name. The disputed domain name includes the AGFA mark in its entirety adding the geographical term “afrique” (deleting the letter “a”), which is a common way of indicating global enterprises’ subdivisions or their sales geographical areas. The Complainant owns several trademark registrations with validity in Africa, and has worldwide activities including in Africa.
The Respondent has no right or legitimate interests in the disputed domain name. To the best of the Complainant’s knowledge, the Respondent is not commonly known by the name “agfa”, and it has not been licensed or otherwise authorized to use the Complainant’s mark. Further, the disputed domain name is used for pornographic content.
The disputed domain name was registered and is being used in bad faith. The AGFA mark is so famous that the Respondent must have been aware of it when selecting the disputed domain name, targeting this trademark in bad faith, intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the AGFA mark. The Respondent has intentionally tried to draw the impression that the Complainant is affiliated with or endorses the Respondent’s website. Further, the pornographic content of the Respondent’s website may tarnish the Complainant’s good reputation.
The Complainant has cited previous decisions under the Policy that it considers supportive of its position, and requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
The Complainant has made the relevant assertions as required by the Policy and the dispute is properly within the scope of the Policy. The Panel has authority to decide the dispute examining the three elements in paragraph 4(a) of the Policy, taking into consideration all of the relevant evidence, annexed material and allegations, and performing some limited independent research under the general powers of the Panel articulated, inter alia, in paragraph 10 of the Rules.
The Complainant indisputably has rights in the registered AGFA mark. The disputed domain name incorporates this mark in its entirety followed by the term “frique” (with no identified meaning) that together with the last letter “a” of the mark refers to the geographical term “Afrique” (“Africa” in French language). The additional term does not avoid confusing similarity with the AGFA mark, which is clearly recognizable in the disputed domain name, and the generic Top-Level Domain (“gTLD”) “.net” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity. See sections 1.7, 1.8, and 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the Respondent’s knowledge. Thus, the consensus view is that paragraph 4(c) of the Policy shifts to the Respondent the burden of production to come forward with relevant evidence of rights or legitimate interests in the disputed domain name, once the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests.
The Complainant’s assertions and evidence effectively shift the burden of production to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing the circumstances of paragraph 4(c) of the Policy, without limitation, that may establish rights or legitimate interests in the disputed domain name in order to rebut the Complainant’s prima facie case. However, the Respondent has not replied to the Complainant’s contentions.
In the absence of any Response, the Panel notes that the disputed domain name is used to promote a cell phone application of pornographic content, which seems to be identified by the name “Banana Porn”. There is no indication or evidence showing that the Respondent is commonly known by the disputed domain name, no indication of any bona fide offering of goods or services under the disputed domain name, and no indication of any legitimate noncommercial or fair use of the disputed domain name.
A core factor in assessing potential fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5.1, WIPO Overview 3.0. The disputed domain name incorporates the Complainant’s trademark in its entirety adding term “frique”, which together with the last letter “a” of the AGFA mark refers to the geographical term “Afrique” (“Africa” in French language) that may point to the Complainant and its reputed trademark, as an indication of one of its subdivisions or market areas. Therefore, the Panel considers that there is prima facie a risk of implied affiliation.
It is further remarkable the Respondent has not replied to the Complaint not providing any explanation connected to any of the circumstances included in paragraph 4(c) of the Policy or any other circumstance that may be considered as a right or legitimate interest in the disputed domain name.
All the above-mentioned circumstances lead the Panel to conclude that the Respondent lacks of any rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.
The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith.
The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.
The Panel considers that all cumulative circumstances of this case point to bad faith registration and use of the disputed domain name:
(i) the disputed domain name incorporates the Complainant’s AGFA mark in its entirety adding a term (“frique”), creating a likelihood of confusion or implied affiliation and the impression that the disputed domain name refers to one of the Complainant’s subdivisions or market areas related to “Africa”, suggesting affiliation, sponsorship or endorsement by the Complainant;
(ii) the Complainant’s trademark is well-known and the Complainant operates internationally including Africa as well as China (where the Respondent is located according to the Registrar verification);
(iii) the Respondent used a privacy protection service to hide its identity in the WhoIs record of the disputed domain name;
(iv) the AGFA mark refers to the photographic sector, imaging systems and IT solutions;
(v) the Respondent’s website promotes a pornographic cell phone application with images and videos of pornographic content with no connection to the Complainant or its reputed mark; and
(vi) the Respondent has not offered any explanation of any rights or legitimate interests in the disputed domain name and has not come forward to deny the Complainant’s assertions of bad faith, choosing not to reply to the Complaint.
Therefore, on the balance of probabilities, taking into consideration all cumulative circumstances of this case, the Panel considers that the disputed domain name was very likely registered targeting the Complainant’s AGFA mark with the intention of obtaining a free ride on their established reputation, seeking to mislead and attract Internet users to a website promoting the Respondent’s pornographic app, which may tarnish the Complainant’s trademark reputation and constitutes bad faith.
All of the above-mentioned circumstances lead the Panel to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under the third element 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 disputed domain name <agfafrique.net> be transferred to the Complainant.
Reyes Campello Estebaranz
Date: November 13, 2020
1 See AGFA-Gevaert N.V. v. Bernard Kwanagw, WIPO Case No. D2017-2127; Agfa-Gevaert N.V. v. Registration Private / Domains By Proxy, LLC / DomainsByProxy.com / MANUEL GOMEZ, WIPO Case No. D2018-2683; Agfa-Gevaert N.V. v. WhoisGuard Protected, WhoisGuard, Inc. / Domain Admin, WIPO Case No. D2020-1098; Agfa-Gevaert N.V. v. Bruce C. Whitehurst, Xray Eye & Vision Clinics, WIPO Case No. D2020-1105.
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