WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Agfa-Gevaert NV & Co KG v. Mr. Igor Mihailov
Case No. D2011-0889
1. The Parties
Complainant is Agfa-Gevaert NV & Co KG of Köln, Germany, represented by Novagraaf Belgium NV/SA, Belgium.
Respondent is Mr. Igor Mihailov of Novgorod, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <agfadigital.info> (the “Domain Name”) is registered with GoDaddy.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2011. On May 24, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 25, 2011, the Registrar transmitted by email to the Center its verification response confirming that 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 June 7, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was June 27, 2011. The Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 1, 2011.
The Center appointed Assen Alexiev as the sole panelist in this matter on July 19, 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.
4. Factual Background
Complainant is part of the Agfa-Gevaert Group, which develops, produces and distributes an extensive range of analog and digital imaging systems and consumables, proofing systems and IT solutions, mainly for the printing industry and the healthcare sector, as well as for specific industrial applications.
Complainant is the owner of a number of trademarks, containing the word AGFA (the “AGFA Trademarks”) registered in various countries around the world, including the following:
- the International trademark AGFA (combined), with registration No. IR 608334, registered on September 25, 1993 for goods and services in International Classes 1, 7, 9,10, 16, 37 and 40, for the territories of various countries, including the Russian Federation; and
- the Community trademark AGFA (combined), with registration No. CTM 008133167, registered on February 17, 2010 for goods and services in International Classes 1, 2, 7, 9, 10 and 42.
The Domain Name was registered on February 8, 2011.
5. Parties’ Contentions
According to Complainant, the Domain Name is confusingly similar to Complainant's AGFA Trademarks. The word element “agfa” of the Domain Name is identical to the Complainant's AGFA Trademarks. Both the design element and word element of the AGFA Trademarks are reproduced on the website at the Domain Name. The website associated to the Domain Name uses the official logo of Complainant and offers print and digital services as does Complainant. Therefore, there is a serious risk of confusion, as consumers may think that the Domain Name and the website linked to it are affiliated to Complainant.
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. Respondent does not own any trademark or trade name containing the word AGFA and has no other prior right of the terms “agfa” or “agfa digital”. Complainant has not licensed or otherwise authorized Respondent to use its trademark or any domain name containing the trademark AGFA. Respondent has not been commonly known by the Domain Name, and is not making any legitimate noncommercial or fair use of the Domain Name. Rather, the intention of Respondent is to misleadingly divert consumers for commercial gain or to tarnish the AGFA Trademarks.
Complainant alleges that Respondent has registered and is using the Domain Name in bad faith. The AGFA Trademarks are famous and far predate Respondent's activity. Respondent could not ignore the existence of the AGFA Trademarks and was fully aware of them when registering the Domain Name, especially as he is using the logo AGFA on the website at the Domain Name. On this website Respondent offers various products and services to its own account. Due to the look and feel of the website at the Domain Name and of the products or services being sold there and the confusing similarity between the AGFA Trademarks and the Domain Name, it is likely that potential customers of Complainant will visit Respondent's site and be under the false impression that they have reached an official site of Complainant. Therefore, Respondent has intentionally attempted to attract Internet users to the Domain Name by creating a likelihood of confusion with Complainant's AGFA Trademarks, with the apparent purpose to profit from the reputation and goodwill associated with Agfa's Trademarks.
Prior to the commencement of this proceeding, Complainant had contacted Respondent with an invitation for a voluntary transfer of the Domain Name, and received no response.
Complainant requests the transfer of the Domain Name.
Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), Complainant must prove each of the following to justify the transfer of the Domain Name:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Respondent has registered and is using the Domain Name in bad faith.
Pursuant to the Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to Respondent, in compliance with Rules, paragraph 2(a), and Respondent was given a fair opportunity to present his case.
In the event of a default, under Rules, paragraph (14)(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”
As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the panel in Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant…” In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this administrative proceeding, Respondent has chosen not to submit a Response. His default entitles the Panel to conclude that Respondent has no arguments or evidence to rebut the assertions of Complainant. The Panel has to take his decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
A. Identical or Confusingly Similar
Complainant has provided evidence and has thus established its rights in the AGFA Trademarks, registered for the territories of various jurisdictions around the world, including the Russian Federation.
It is a common practice under the Policy to disregard gTLDs such as the “.info” for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the Domain Name is its “agfadigital” element. Its first part – “agfa” - is identical to Complainant’s AGFA Trademarks, and the second part – “digital” – is a descriptive word related to Complainant’s business. In the Panel’s view, the combination is dominated by the “agfa” element, which makes it confusingly similar to Complainant’s AGFA Trademarks.
Therefore, the Panel finds that the Domain Name is confusingly similar to trademarks in which Complainant has rights.
B. Rights or Legitimate Interests
Complainant claims that Respondent has no rights or legitimate interests in the Domain Name, stating various arguments in this regard. Thus, Complainant establishes a prima facie case under Policy, paragraph 4(a)(ii).
It is well established that once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the showing by providing evidence to the contrary.
Respondent has chosen not to present to the Panel any allegations or documents in his defense despite the burden under the Rules, paragraph 5(b)(i) and 5(b)(ix) or the consequences that a panel may extract from the fact of a default (Rules, paragraph 14). If Respondent had any justification for registering or using the Domain Name, he could have provided it. In particular, Respondent has not contended that any of the circumstances described in the Policy, paragraph 4(c) — or any other circumstance — is present in his favor.
The only information available about Respondent are those in the publicly-available WhoIs information, provided by the Registrar, and the content of the website, associated to the Domain Name.
The WhoIs information contains no evidence of rights or legitimate interests of Respondent in the Domain Name. In this proceeding, Respondent makes no claims for having rights or legitimate interests in respect of the Domain Name and provides no explanation whatsoever for its registration and use, and has not done so in response to the demand letter sent to it by Complainant. As submitted by Complainant and not denied by Respondent, the website associated to the Domain Name displays the AGFA logo and offers products and services similar to the products and services of Complainant’s, without providing any disclaimer of an association with Complainant or of endorsement by the latter. In the absence of consent by Complainant for the above activities by Respondent, the Panel is of the view that Respondent’s actions cannot be regarded as establishing rights or legitimate interests of Respondent in the Domain Name.
In the Panel’s view, the above circumstances appear to confirm Complainant’s prima facie case. In the absence of any evidence or allegations to the contrary, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name within the meaning of the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
For the purposes of Policy, paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’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 your website or location or of a product or service on the holder’s website or location.
In the present case, the Domain Name is confusingly similar to Complainant’s AGFA Trademarks, and Respondent has been found to have no rights or legitimate interests in it. Respondent also appears to have registered the Domain Name being aware of Complainant and of the significant commercial value of its trademarks, and to have used the Domain Name for a website offering products and services similar and complementary to Complainant’s products and services. In the Panel’s view, such conduct by Respondent illegitimately exploits with a commercial purpose the reputation of Complainant and its trademarks.
Taking into account all above, and the absence of any allegation to the contrary by Respondent, the Panel is prepared to accept that the Domain Name has been registered and is used by Respondent in an attempt for commercial gain to attract Internet users to the Domain Name by creating a false association with Complainant and its trademarks. These actions amount to bad faith registration and use of the Domain Name under 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 <agfadigital.info> be transferred to the Complainant.
Dated: August 2, 2011