WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AGFA-Gevaert N.V. v. Masato Shimokawa
Case No. D2018-1467
1. The Parties
The Complainant is AGFA-Gevaert N.V. of Mortsel, Belgium, represented by Novagraaf Belgium NV/SA, Belgium.
The Respondent is Masato Shimokawa of Isahaya, Japan, self-represented.
2. The Domain Name and Registrar
The disputed domain name <agfagrafico.com> (“Disputed Domain Name”) is registered with GMO Internet, Inc. d/b/a Discount-Domain.com and Onamae.com (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 2, 2018. On July 2, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 3, 2018, 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 July 5, 2018 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 the same day.
On July 5, 2018, the Center sent an email to the Parties in English and Japanese regarding the language of the proceeding. The Complainant confirmed its request that English be the language of the proceeding on the same day. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in English and Japanese that a Complaint has been filed against him, and the proceedings commenced on July 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2018. The Response was filed with the Center on July 28, 2018.
The Center appointed Haig Oghigian as the sole panelist in this matter on August 7, 2018. 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
After reviewing the Complaint and the Response, followings are the non-contested facts.
The Complainant is a Belgian company that consists of two divisions, namely Agfa Healthcare and Agfa Graphics.
The Complainant owns trademarks containing the word AGFA (the “Mark”), including the following registrations:
- European Union trademark registration No. 15598113 for the logo AGFA registered on February 27, 2017; and
- European Union trademark registration No. 3353463 for the word AGFA registered on January 24, 2005.
The Respondent, located in Isahaya, Japan, is the current registrant of the Disputed Domain Name.
The Disputed Domain Name is <agfagrafico.com>, and it was registered on September 9, 2015. The Disputed Domain Name resolves to a website regarding moving (“logistics”) which shows no link with the word “agfa” and/or “grafico” (the “Website”).
5. Parties’ Contentions
The Complainant seeks transfer of the Disputed Domain Name to the Complainant.
The Disputed Domain Name is confusingly similar to the Mark, as it consists of the fantasy word “agfa” and the more descriptive term “grafico”, which is nearly identical to the term “graphics”, used intensively by the Complainant. The Complainant is the owner of the Mark. Additionally, the Complainant’s Agfa Graphics division is represented on the website at <agfagraphics.com> owned by the Complainant.
The Respondent has no right rights or legitimate interests in respect to the Disputed Domain Name. The Complainant has not licensed or otherwise authorized the Respondent to use its Mark or any domain name including the Mark AGFA.
The Disputed Domain Name was registered and is being used in bad faith. The Mark AGFA is in fact so famous that the Respondent could not ignore the preexistence of the Complainant’s trademark rights, in particular in the graphics sector, and the Respondent must have been fully aware of it when selecting the Disputed Domain Name.
The Respondent contends that the Website is not confusingly similar to the Complainant’s website because the groups of reviewing users would be different due to different categories and different languages, so that none of users would be confused and there would be no room to cause actual troubles. He also contends that the Respondent has rights and legitimate interests in respect of the Disputed Domain name and has been operating the Website in good faith to date and that the Disputed Domain Name was not registered, has not been and will not be used in bad faith.
6. Discussion and Findings
Paragraph 11(a) of the Rules gives the Panel discretion to decide the language of this proceeding:
“(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
According to information the Center has received from the concerned Registrar, the language of the registration agreement for the Disputed Domain Name is Japanese.
The Complainant has submitted a request that English be the language of the proceedings, on which the Respondent did not comment.
Given the provided submissions and circumstances of this case, the Center has decided to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Japanese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The Complainant argued that to translate documents to Japanese would be an unreasonable burden upon the Complainant and would cause the inevitable delay. While the Panel does not agree with unreasonable burden or inevitable delay, the Respondent had ample opportunity to raise objections in relation to the language of the proceeding or make known his preference, but he did not and instead he filed the Response in Japanese. The content of the Response indicates that the Respondent is able to understand the Complaint which was filed in English. Accordingly, the Panel chooses to write the decision in English.
6.2 Substantive Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following elements:
(i) The respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The respondent’s domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Disputed Domain Name is made up of the Complainant’s registered and distinctive Mark AGFA with the addition of the descriptive term “grafico” and the generic Top-Level Domain (“gTLD”) “.com”. The addition of “grafico” does not avoid a finding of confusing similarity between the Disputed Domain Name and the Complainant’s registered Mark AGFA. The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s registered Mark AGFA.
The Panel notes that the Complainant does not have a registered trademark for AGFA in Japan. However, noting in particular the global nature of the Internet and Domain Name System, the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment under the first element (see section 1.1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Accordingly, the first part of paragraph 4(a) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Respondent has responded to the Complainant that the Respondent has rights and legitimate interests in respect of the Disputed Domain name and has been operating the Website in good faith to date but fails to show relevant evidence demonstrating any rights or legitimate interests in the Disputed Domain Name. Section 2.1 of the WIPO Overview 3.0 provides in pertinent part:
“While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name, which the Respondent has denied but without coming forward with any evidence.
Additionally, as noted above, the Respondent has no affiliation with the Complainant and has no license or authority to use the Complainant’s Mark and therefore has no legitimate rights to suggest or imply that he does. However, the Respondent’s unauthorized use of the Mark in the Disputed Domain Name misleadingly suggests affiliation to the Complainant, even though there is none, and appears to be used to mislead consumers about the relationship. The Disputed Domain Name points to a website mentioning collective assessment for logistics services but showing the automated warning of “Unknown Host”. Such use, the Panel finds, does not establish a legitimate interest in the Disputed Domain Name. Rather, absent any evidence that the Disputed Domain Name is used in connection with any actual business, the Panel finds that the Respondent’s use of the Disputed Domain Name is most likely to be pretextual.
Accordingly, the Panel thus finds the Respondent does not have rights or legitimate interests in the Disputed Domain Name and the Panel finds that the second part of the paragraph 4(a) of the Policy is therefore satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides various examples of bad faith registration, and in particular provides the following example in paragraph 4(b)(iv):
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location.
The Complainant has established sufficient evidence that strongly suggests that the Respondent intentionally attempted to attract for commercial gain Internet users to the Website by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Complainant. In particular, the Complainant alleges:
- The AGFA Mark is famous and far predates the domain name registration. The Mark AGFA is in fact so famous that the Respondent could not ignore the preexistence of the Complainant’s trademark rights, in particular in the graphic sector, and the Respondent must have been fully aware of it when selecting the Disputed Domain Name.
- The following overall circumstances of the case suggest the Respondent’s bad faith:
(1) the use of the Disputed Domain Name for activities which are unrelated to the graphics sector; and (2) the well-known character of the Complainant’s AGFA Mark incorporated in the Disputed Domain Name.
The Respondent has simply denied the allegation but provided no evidence to rebut these allegations such as any evidence of genuine use of the Disputed Domain Name. The fact that the meaning of the coined word “agfa” is not explained in the Website indicates that the Respondent was most likely aware of the Complainant and its Mark when he registered the Disputed Domain Name. In fact, noting that the Complainant operates a website at “www.agfagraphics.com”, it is more likely than not that the Respondent registered the Disputed Domain Name in an attempt to capture Internet traffic meant for the Complainant. Accordingly, The Panel finds that such registration and use of the Disputed Domain Name is bad faith as contemplated by paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that the third part of the paragraph 4(a) of the Policy is therefore satisfied.
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 <agfagrafico.com> be transferred to the Complainant.
Date: August 17, 2018