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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AGFA-Gevaert N.V. v. Ums United Medical System

Case No. D2018-0713

1. The Parties

The Complainant is AGFA-Gevaert N.V. of Mortsel, Belgium, represented by Novagraaf Belgium NV/SA, Belgium.

The Respondent is Ums United Medical System of Doral, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <agfaz.com> is registered with Gransy, s.r.o. d/b/a subreg.cz (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2018. On March 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 29, 2018, 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 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 6, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 27, 2018.

The Center appointed Steven A. Maier as the sole panelist in this matter on May 2, 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 is a limited liability company incorporated in Belgium. It trades under the name and trademark AGFA in the graphic and photographic sector.

The Complainant is the owner of various trademark registrations, including European Union Trade mark number 003353463 for the word mark AGFA, registered on January 24, 2005 for goods and services in a variety of classes.

The disputed domain name was registered on November 20, 2017.

On the evidence available to the Panel, the disputed domain name has not resolved to any active website.

5. Parties’ Contentions

A. Complainant

The Complainant states that it has been active in the graphic and photographic sector for many years and that its trademark AGFA enjoys a worldwide reputation. Regrettably, the Complainant provides no further information or evidence in support of this contention.

The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. It refers to its AGFA trademark and contends that the disputed domain name is identical to that trademark but for the addition of the letter “z”.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It says that it has never licensed or authorized the Respondent to use its trademark AGFA, that the Respondent has not been commonly known by a name corresponding to the disputed domain name and that the disputed domain name does not resolve to any website having content that could give rise to rights or legitimate interests.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. It contends that its AGFA trademark is so famous that the Respondent must have been aware of it when registering the disputed domain name. It states that the Respondent can only have chosen a domain name nearly identical to its trademark in order to create confusion and attract Internet users to its website. The Complainant also states that the Respondent failed to respond to correspondence regarding the disputed domain name, which submits further evidence of bad faith.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain name 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 disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

Even in a case where no response has been filed, the Complainant must still establish that each of the above elements is present.

A. Identical or Confusingly Similar

The Complainant is the owner of a registered trademark AGFA. The disputed domain name <agfaz.com> is identical to that mark but for the addition of the letter “z”. In the view of the Panel, that addition is not sufficient to distinguish the disputed domain name from the Complainant’s trademark. The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case for the Respondent to answer that it has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not participated in this proceeding and has provided no explanation for its registration and use of the disputed domain name. There being no other evidence available to the Panel upon which to conclude that the Respondent has any rights or legitimate interests in the disputed domain name, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant asks the Panel to infer that the Respondent must have registered the disputed domain name in the knowledge of the Complainant’s trademark and with the intention of taking unfair advantage of the goodwill attaching to that mark. However, while the Complainant asserts that its AGFA trademark is famous worldwide, it has produced no evidence of its trading or of the reputation of its trademark. A complainant should not expect a UDRP panel to have knowledge of the reputation of its trademark and the Complainant in this proceeding has taken a significant risk by failing to exhibit the evidence in question. However, the Complainant includes in its exhibits (if not the Complaint itself) reference to its website at “www.agfa.com” and having reviewed that website the Panel accepts that the mark AGFA is likely to have a substantial reputation internationally in the graphics and photographic sectors. In the light of this, and of the Respondent having failed to dispute the Complainant’s claims or offer any alternative explanation for its registration of the disputed domain name, the Panel infers on balance that the Respondent registered the disputed domain name in the knowledge of the Complainant’s AGFA trademark and with the intention of taking unfair advantage of the goodwill attaching to that mark. The Panel does not consider it material that an active website has not to date been linked with the disputed domain name, as the Panel finds that the Respondent’s passive holding and the surrounding circumstances also establish use of the disputed domain name in bad faith (see e.g. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.

7. Decision

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 <agfaz.com>, be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: May 7, 2018

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