WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AGFA-Gevaert N.V. v. Bernard Kwanagw
Case No. D2017-2127
1. The Parties
The Complainant is AGFA-Gevaert N.V. of Mortsel, Belgium, represented by Novagraaf Belgium NV/SA, Belgium.
The Respondent is Bernard Kwanagw of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
2. The Domain Name and Registrar
The disputed domain name <ag-fa.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2017. On October 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 1, 2017, the Registrar 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 sent an email communication to the Complainant on November 2, 2017 requesting clarification of the Respondent information. The Complainant filed an amended Complaint on November 2, 2017.
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 November 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2017.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on January 8, 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
The Complainant Agfa-Gevaert NV is a Belgian-based business that develops, produces, and distributes a range of analog and digital imaging systems and IT solutions, mainly for the printing industry and the healthcare sector, as well as for specific industrial applications.
The Complainant owns many trademark registrations around the world for its AGFA trademark, including European Union Trademark No. 3353463 for the word AGFA, registered on January 24, 2005. The Complainant has been active in the graphics and photographic sector for many years and enjoys a worldwide reputation with its AGFA mark.
The Respondent is identified as Bernard Kwanagw. The disputed domain name was registered on May 17, 2017 and resolves to an inactive website.
5. Parties’ Contentions
The Complainant submits that it holds registered rights to the AGFA trademark as outlined above. The disputed domain name is alleged to be confusingly similar to this registered mark, as it is incorporates the same letters as the AGFA trademark. The Complainant contends that since the addition of a hyphen is not relevant, the risk of confusion is extremely high.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant states that it has not licensed or otherwise authorized the Respondent to use its trademark or any domain name including the AGFA trademark. Further, the Respondent has not been commonly known by the name “agfa” and the disputed domain name is not linked to any active website showing use.
Finally, the Respondent is alleged to have registered and used the disputed domain name in bad faith for three reasons. First, the Complainant states that since its trademarks are famous, the Respondent could not have ignored the preexistence of its trademark rights and must have been fully aware of it when selecting the disputed domain name. The Complainant states that the fact that the Respondent chose a known trademark as a domain name is a clear indication that the registration of the disputed domain name was made in bad faith. Second, the Respondent failed to respond to the Complainant’s invitation to voluntarily proceed with the transfer of the disputed domain name. Third, the fact that the disputed domain name does not resolve to an active website suggests the Respondent’s bad faith. The Complainant relies on previous panel decisions for its position: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided clear evidence that it owns registered trademark rights in AGFA in connection with the graphics and photographic sector. The Panel is therefore satisfied that the Complainant has established relevant trademark rights.
The Respondent has incorporated the Complainant’s AGFA trademark in its entirety (with the addition of a hyphen) in the disputed domain name <ag-fa.com>. The addition of a hyphen does not have the effect of reducing the confusing similarity. This minor change does not distinguish the disputed domain name from the trademark in question, and is in fact considered to constitute typo-squatting under the Policy.
The Panel therefore finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has not licensed or otherwise authorized the Respondent to use any of its AGFA trademarks. There is no evidence that the Respondent is commonly known by the name “ag-fa” or is affiliated in any way with the Complainant’s business.
The Panel further finds that the Respondent is neither making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as the disputed domain name is not resolving to an active website. The evidence put forward by the Complainant consists of a screen shot of the website associated with the disputed domain name that displays the message “Unable to display page […] The website you requested could not be found.” The Panel therefore finds that the Respondent’s lack of use of the disputed domain name is also consistent with a lack of rights or legitimate interests in the disputed domain name.
Having established a prima facie case, the burden of production shifts to the Respondent to prove that it holds rights or legitimate interests in the disputed domain name. The Panel notes that no response has been filed in this proceeding.
The Panel therefore finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The uncontested evidence of the Complainant is that its AGFA trademarks are famous and far predate any of the Respondent’s activity. In the absence of evidence to the contrary, the Panel is prepared to infer that the Respondent was aware of the Complainant’s trademark rights in AGFA when the disputed domain name was registered.
The disputed domain name does not resolve to an active website. The consensus view among panelists under the UDRP is that “the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.3. In this case, the Panel finds that the overall circumstances of the case suggests the Respondent’s non-use of the disputed domain name supports an inference of bad faith. These circumstances include the well-known character of the Complainant’s AGFA trademark and the Respondent’s failure to reply to the letter sent to the Complainant or take part in the present proceedings.
The Panel therefore finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) 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 <ag-fa.com> be transferred to the Complainant.
Christopher J. Pibus
Date: January 22, 2018