WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Agfa Gevaert NV & Co. KG v. Fotografie Jules Dierick
Case No. D2011-0659
1. The Parties
The Complainant is Agfa Gevaert NV & Co. KG, Koln, Germany, represented by Novagraaf Belgium NV/SA, Belgium.
The Respondent is Fotografie Jules Dierick, Stein, Netherlands.
2. The Domain Names and Registrar
The disputed domain names <agfafinance.com> and <agfaphotofinance.com> are registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2011. On April 14, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain names. On April 14, 2011, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 10, 2011. The Response was filed with the Center on May 11, 2011.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on May 27, 2011. 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 Panel notes that the Respondent claims in an email to the Center of May 11, 2011 that the language of these proceedings should be Dutch. He claims that the relevant registration agreement for both domain names is in Dutch.
However, the registration agreement with Tucows has been confirmed by the Registrar to be in English. The agreement in Dutch referred to by the Respondent is a service agreement with the host service provider (Hostnet). Further, the Respondent has submitted the abovementioned emailed Response in English. Neither in this email nor in an email of April 20, 2011 to the Complainant's representative has he indicated a lack of understanding of some or any specifics of the Complaint. Also, the relevant text on the website to which the disputed domain name <agfaphotofinance.com> resolves, although in Dutch has been translated accurately in the Complaint. In any case this Panelist is fluent in Dutch. The Respondent had, at the very least, from April 29, 2011 when he received the email from the Complainant's representative pointing out that English was the proper language of the Proceedings, until May 11, 2011 (deadline for submitting a Response) to address the issues raised by the Complainant and resolve any specific linguistic difficulties he might have had.
Therefore the Panel concludes that the language of the proceedings is English.
4. Factual Background
The Complainant owns registrations in many countries for the marks AGFA and AGFAPHOTO predating registration of the disputed domain names, inter alia for goods in Class 9. The Complainant appends a table containing details of such national registrations. The Complainant also appends a registration certificate for the figurative Community Trade Mark AGFA (CTM No 008133167), registered February 17, 2010 for goods and services in Classes 1, 2, 7, 9, 10 and 42. The Complainant asserts that its oldest still active trade mark registration for the Agfa lozenge dates back to September 1983 (German Registration No 1053338).
The Complainant owns numerous domain names replicating the words “agfa” and “agfaphoto”, with various generic extensions.
The disputed domain names were registered on March 18, 2011 with Tucows Inc.
5. Parties’ Contentions
The Complainant asserts that it owns many trademarks consisting of the words “agfa” and “agfa photo”. The trademarks are registered in relation to goods including photographic apparatus and the like. The Complainant asserts that it is active in the graphics and photo sectors and enjoys a worldwide reputation.
Further the Complainant contends that both disputed domain names are confusingly similar to the Complainant’s trademark AGFA, as the words “finance” and “photofinance” are non distinctive additions. As the first part of the disputed domain names is identical to the Complainant’s trademark AGFA there is a serious risk of confusion. The Complainant contends that consumers may think that the relevant websites are a product from the Complainant, and that by using the trademark AGFA in the domain names the Respondent creates confusion as consumers may believe that they refer to the Complainant.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain names. According to its searches the Respondent does not own any trade mark or trade name incorporating the word “agfa” and has no prior rights to the words “agfa”, “agfa photo finance” or “agfa finance”. The Respondent has also not been commonly known by any of those terms.
The Complainant contends that the Respondent is not making a legitimate non commercial or fair use of the disputed domain names as he has the intention for commercial gain misleadingly to divert consumers or to tarnish the trademarks or service marks at issue.
Further the Complainant has not licensed or authorized the Respondent to use its trademark or any domain name incorporating it. In conclusion, as the Complainant has prior and exclusive rights to the name Agfa the Respondent has no rights or legitimate interests to register and use the disputed domain names.
The Complainant further contends that the Respondent has registered and uses the disputed domain names in bad faith. The Complainant asserts that the AGFA trademarks are famous and the Respondent could not have been ignorant of the Complainant’s pre-existing rights. The choice of a famous mark for a domain name is a clear indication per se of bad faith registration even in the case of the particular combinations here adopted because the disputed domain names have a specific meaning intended to attract Internet users looking for an official website with information concerning the Complainant’s goods and services.
Further, the website to which the domain name <agfaphotofinance.com> resolves uses detrimental, injurious and negative terms to describe the Complainant and its intention is to tarnish the Complainant’s trademarks.
The Complainant also contends that the registration of the disputed domain names causes unfairness and is detrimental to the Complainant’s business, because of the nature and contents of the text appearing at the website to which <agfphotofinance.com> resolves. The domain name <agfafinance.com> is not yet active.
The Complainant contends that its potential customers will be confused as to whether they have reached an official website of the Complainant because of the look and feel of the websites. The domain name <agfaphotofinance.com> is said to redirect Internet users to a website on which the Respondent offers its photography services for its personal purpose which disrupts the Complainant’s business. Further, the Complainant contends that the Respondent has intentionally attempted to attract Internet users to irreparably injure the Complainant’s reputation and goodwill by creating a likelihood of confusion. This, the Complainant contends, constitutes bad faith.
The fact that the Respondent having been contacted by the Complainant did not transfer the disputed domain names also indicates bad faith according to the Complainant.
Finally the Complainant contends that the use of a trademark with the intention to mislead consumers and injure the Complainant’s business constitutes bad faith.
The Respondent contends that the proper language of the proceeding is Dutch and not English. This matter is disposed of in 3. Procedural History above.
Further the Respondent contends that his objective is as per the text that is visible when accessing the “www.agfaphotofinance.com” website. The Respondent asserts that he has no commercial interest in the site, which is a site for open discussion about “how Finance at Agfa and AgfaPhoto is done during the last nearly 10 years”. The Respondent contends that as a result of Agfa or AgfaPhoto’s actions the “world wide photo business nearly broke down”. Further the Respondent asserts the truth of the material concerning a minilab sold to him as it appears on the relevant website, and indicates that his interest in free speech is engaged in this matter.
Further the Respondent contends that the Complainant Agfa Gevaert NV & Co KG has entered into a license agreement with AgfaPhoto GmbH granting the latter the right to use the trademark AGFAPHOTO, and by whose terms the Complainant declines any liability in relation to any AgfaPhoto products and asserts that it does not manufacture, market, distribute, sell, service or support any AgfaPhoto products. Therefore the Respondent contends that the Complaint against him should have been filed by AgfaPhoto Holding GmbH and not by Agfa-Gevaert NV& Co. The Respondent attaches a number of documents to his Response: a document in the form of a press release entitled “Disclaimer regarding AgfaPhoto” apparently sourced from the “www.agfa.com” website and substantially in the terms cited above; secondly, correspondence from Hostnet, the web hosting service provider from whom the Complainant sourced the two disputed domain names, which is in Dutch; and thirdly email correspondence from the Complainant’s representative of April 29, 2011 asserting that the proper language of these proceedings is English and not Dutch.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain names are not identical to the Complainant’s trademarks. However, both domain names incorporate the trade mark AGFA as their initial and predominant component. The term “agfa” is distinctive and has no known primary meaning. The addition of the generic terms “photofinance” and “finance” respectively are not apt to distinguish the domain names. These are ordinary descriptive terms and their combination suggests the provision of finance for Agfa products or services. Consumers are familiar with the practice of product and service providers offering finance or financial services in connection with the acquisition of their products or services. The Complainant also establishes that it owns the trademark AGFAPHOTO in a number of jurisdictions, which further augments the resemblance between the Complainant’s marks and the disputed domain name <agfaphotofinance.com>.
The Respondent contends that the Complainant has licensed its rights in the relevant trademarks to another company not joined to the Complaint, AgfaPhoto Holding GmbH. He contends that the Complainant has also declined any further involvement with or liability for AgfaPhoto products and services. In effect his contention appears to be that the relevant trademarks are licensed in exclusivity to another party, and therefore the Complainant cannot exercise any rights under the UDRP. However, the UDRP Policy 4(a)(i) provides “(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights”. It is clear that the Complainant has rights in the trademarks AGFA and AGFAPHOTO, as the Complainant is the owner of numerous registered trademarks for these terms, as is established by the registration certificate and table it attaches to the Complaint.
Therefore the Panel holds that the disputed domain name <agfafinance.com> is confusingly similar to the Complainant’s trade mark AGFA and the disputed domain name <agfaphotofinance.com> is confusingly similar to the Complainant’s trademarks AGFA and AGFAPHOTO.
B. Rights or Legitimate Interests
The Respondent does not have trademark rights in relation to the trademarks AGFA or AGFAPHOTO, nor is he commonly known by that name or mark. The Panel finds no evidence that the Complainant authorized or licensed the Respondent to use its relevant trademarks in any way or incorporate them in a domain name.
It is apparent that the Respondent registered the disputed domain names with the full knowledge of the Complainant’s rights in the relevant trademarks. The trade mark AGF is a well known mark that has been used in many jurisdictions for a substantial time. Moreover the text at the website to which the disputed domain name <agfaphotofinance.com> resolves indicates that the Respondent has had dealings with the Complainant or companies providing the Complainant’s products or services in the past and in any case alludes to a commercial difference with the Complainant or associated companies.
The Respondent contends that his website engages his right to freedom of speech as “The site is for an open discussion with the world” in relation to various aspects of the conduct of Agfa businesses.
It is well established that if a website practices genuine non commercial criticism a respondent may be able to establish that he has rights or legitimate interests that defeat the complainant’s request for transfer or cancellation. However, only the <agfaphotofinance.com> domain name resolves to this website.
Further, in this case the domain name itself does not denote or suggest criticism or that it will resolve to a site critical of the Complainant, which in this Panel’s view would be capable of giving rise to legitimate rights or interests. Although not consisting of a trade mark of the Complainant as such, the additional words suggest no criticism, but rather a service offered by the Complainant or a genuine commercial service offered in association with the Complainant’s products and services.
The website content is in Dutch and arguably does contain suggestions critical of the Complainant, both in terms of its corporate governance and management, and in relation to an “Agfa” product (a PhotoLab) supplied to the Respondent. It contains a separate page with various linked documents in a manner suggestive of some connection with these contentions: third party documents relating to the value of PhotoLabs; photos of various pieces of machinery, purporting to show dilapidation; a Royal Decree (Belgium); extracts of press reports; documents relating to the CV of an Agfa manager; annual reports; and some other matter. On the Home page it is contended that the purpose of all this is to communicate with the world, so that pressure will be exerted on the Complainant, inter alia to enter into correspondence with the Respondent concerning his grievances, mainly centered on the supply of a PhotoLab by Agfa-Gevaert in March 2002. He also asserts on the website that he is a shareholder of the Complainant and as such has discovered cause for complaint concerning the Complainant’s general management of its business, but without being specific.
The Respondent also reiterates similar claims in his Response and asserts that he has no commercial interest in the site.
However, there are significant difficulties with the Respondent’s contention. First, as indicated above, the relevant domain name does not suggest a criticism site. Any person searching to learn about or become involved in a legitimate discussion concerning the Complainant’s commercial conduct and the like would not be attracted to the domain names in dispute. Rather, a genuine consumer of the Complainant’s products might be. Such a person would then arrive at a website offering information about “an unfair piece of litigation, that has been dragging on and is full of lies and deceit”, to quote some of the website content in translation. Panels have repeatedly held that the interest in fair and non-commercial criticism is not served by adopting either a domain name identical to a trademark or one such as is at issue here, which clearly suggests in a misleading manner some offering of legitimate commercial and financial services in relation to the trade mark goods or services.
Further the matter on the relevant website purports to relate to a legal and commercial dispute between the Respondent and the Complainant. Little if anything is offered concerning the Complainant going beyond that. Arguably the contents is not non-commercial as it relates to the Respondents commercial interests, and is for the purpose of advancing those interests vis a vis the Complainant. It would be unhelpful to hold that whenever a party has a commercial or legal dispute with a Complainant, he is entitled to establish a website by reference to a misleading domain name, which incorporates the Complainant’s mark, simply for the purpose of pursuing an individual dispute or complaint without any broader compass or public interest. Alternatively this amounts to an attempt to exert pressure on the Complainant in relation to a particular matter, which cannot be said to be legitimate use.
The further material offered on the site relating to the general management of the Complainant’s business is stale and outdated, and is in any case difficult to follow and inconclusive. There is also no opportunity offered to other internet users to join any debate or discussion concerning the activities of the Complainant via the website.
None of these issues arise in relation to the disputed domain name <agfafinance.com> as it resolves to a website with a boxed statement, in translation: “This website is temporarily unavailable due to an agreement with Mr. van Lishout”, and with a Username and Password facility. There is nothing in this website that could establish that any rights or legitimate interests of the Respondent are engaged.
Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
It is clear from all the circumstances that the Respondent was aware of the Complainant’s trademarks and their reputation at the time of registration of the disputed domain names. It is apparent from the website content and the Response that the purpose of the registration of the disputed domain names, and the present use of the domain name <agfaphotofinance.com>, is to offer criticism of the Complainant’s conduct and in that manner exert pressure on it.
It can be inferred that the Respondent has deliberately adopted a domain name which misleadingly suggests that a legitimate service in relation to the Complainant’s products is on offer at the connected website. In reality the website to which the domain name <agfaphotofinance.com> resolves offers criticism of the Complainant in terms that are not substantiated including accusations of “lies and deceit”. This Panel has already held that the use of the domain name <agfaphotofinance.com> (given its composition including a non-critical term) does not give rise to legitimate rights or interests in the Respondent. The deliberate adoption and use of a misleading domain name to exert pressure on the Complainant in relation to a specific dispute and to promote general accusations of “lies and deceit” and “an unfair legal case that is dragging on” with no further substantiation or supporting material amounts to bad faith use for this Panel.
The deliberate adoption of the domain name <agfafinance.com>, which at present resolves to a website that says that it is not available due to an agreement with a Mr. Lishout, is similarly in bad faith. The domain name itself is apt to mislead Internet users into thinking they will find a legitimate website offering finance for Agfa photo products. The Response suggests that the purpose of the Respondent was to use both domain names to voice criticism of the Complainant in the manner occurring in relation to <agfaphotofinance.com>. The presence of a log in box on the <agfafinance.com> website suggests access for the initiated to further material, which is either non-existent or can, in the circumstances, only be inferred to be made available for a purpose detrimental to the Complainant. In the circumstances maintaining the associated website in its present condition and in apparent readiness for uses analogous to the other disputed domain name <agfaphotofinance.com> is use in bad faith of the disputed domain name.
Therefore the Panel holds that both disputed domain names were registered and are used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <agfaphotofinance.com> and <agfafinance.com> be transferred to the Complainant.
William A. Van Caenegem
Dated: June 10, 2011