WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AGFA-Gevaert N.V. v. long hang
Case No. D2018-0721
1. The Parties
The Complainant is AGFA-Gevaert N.V. of Mortsel, Belgium, represented by Novagraaf Belgium NV/SA, Belgium.
The Respondent is long hang of Hunan, China.
2. The Domain Name and Registrar
The disputed domain name <agfaphoto-idv.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 30, 2018. On April 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 4, 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 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 30, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 1, 2018.
The Center appointed Jonathan Agmon as the sole panelist in this matter on May 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
The Complainant, AGFA-GEVAERT N.V, is a limited liability company incorporated in Belgium ("AGFA") which dates back to 1867. The Complainant is a renowned global company active in the photography sector and enjoys worldwide reputation.
The Complainant claims it is the owner of numerous trademarks worldwide among which are:
- International trademark AGFAPHOTO No. 910367, dated June 13, 2006;
- European Union graphic trademark AGFA No.008133167, dated February 17, 2010;
- European Union trademark AGFA No.003353463, dated January 24, 2005; and
- European Union graphic trademark AGFA No.009440801, dated March 20, 2010.
The disputed domain name <agfaphoto-idv.com> was registered on December 16, 2016.
5. Parties' Contentions
The Complainant argues that the disputed domain name is confusingly similar to the Complainant's famous and registered marks AGFA and AGFAPHOTO because it contains the Complainant's mark in its entirety. In addition, "agfa" is not a dictionary term and has no meaning and it is significant only as the Complainant's trademark. The addition of the word "photo" in the disputed domain name adds to the confusion and aims to capitalize on the Complainant's reputation. To the best of the Complainants' knowledge the addition of the hyphen and the three letters "idv" in the disputed domain name hold no meaning.
The Respondent's website does not appear to relate to photography.
The Complainant also argues that the Respondent is not known under the disputed domain name and is not authorized or licensed by the Complainant to use the disputed domain name, which is associated with the Complainant.
The Complainant argues that the Respondent started using the disputed domain name long after the Complainant began using its mark and did so due to the international reputation it has acquired in the marks AGFA and AGFAPHOTO.
On January 19, 2018, the Complainant sent the Respondent a cease-and-desist letter and requested the transfer of the disputed domain name. The Respondent did not answer.
The Complainant claims that the Respondent registered and used the disputed domain name in bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of trademark registrations for the AGFA and AGFAPHOTO marks. The disputed domain name <agfaphoto-idv.com> integrates the Complainant's AGFA and AGFAPHOTO trademark in their entirety. The disputed domain name and the Complainant's trademark differ in the addition of a hyphen, the component "idv" and the addition of the generic Top-Level Domain ("gTLD") ".com".
The additional hyphen and the component "idv" do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's trademarks. The term "idv" has no discernable meaning and is not likely to avoid confusion. Previous UDRP panels have ruled that the mere addition of a generic element does not serve to avoid a finding of confusing similarity between the domain name and the registered trademark (see Merck Sharp & Dohme Corp. v. GlobalCom, Henry Bloom, WIPO Case No. D2011-0700), the same is true for the addition of other terms especially when they are meaningless under the context of the disputed domain name (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.8).
The addition of the gTLD ".com" to the disputed domain name does not avoid confusing similarity (see Accor v. Noldc Inc., WIPO Case No. D2005-0016; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; L'Oréal v. Tina Smith, WIPO Case No. 2013-0820; Titoni AG v. Runxin Wang, WIPO Case No. D2008-0820; and Alstom v. Itete Peru S.A., WIPO Case No. D2009-0877). Therefore, the gTLD ".com" iswithout significance in the present case since the use of a TLD is technically required to operate a domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights.
B. Rights or Legitimate Interests
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. See WIPO Overview 3.0, section 2.1.
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard. In previous decisions, panels have found that in the absence of any license or permission from the complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed (Groupe Auchan v. Gan Yu, WIPO Case No. D2013-0188; LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138). Due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant's trademarks or a variation thereof and in view of the fact that the mark AGFA is not a dictionary term or a common term, that the Respondent's website does not offer goods related to photography and its intention is merely to benefit from the Complainant's reputation, the Panel is convinced that the evidence indicates that the Respondent is not engaged in a bona fide offering of goods or services.
The Respondent has not submitted any Response to the Complaint and did not provide any explanation or evidence to show any rights or legitimate interests in the disputed domain name sufficient to rebut the Complainant's prima facie case.
Accordingly, the Panel finds 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 must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the AGFA and AGFAPHOTO trademarks since the years 2005 and 2006, respectively. In addition, the evidence submitted by the Complainant indicates that the names Agfa and especially Agfaphoto are well known and associated with the Complainant. In view of the evidence filed by the Complainant, that the trademark was registered long before the registration of the disputed domain name suggests the Respondents' bad faith (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).
Furthermore, the disputed domain name includes the Complainant's trademarks in their entirety with the addition of a hyphen and the meaningless term "idv". Previous UDRP panels ruled that "a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant's site to the Respondent's site" (see Edmunds.com, Inc. v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP. In the circumstances of this particular case, where the AGFA mark is so associated with the Complainant, the Panel finds that the Respondent is attempting to attract, for commercial gain, Internet users to its website with the intent of creating a likelihood of confusion with the Complainant's trademarks and its affiliation with the Respondent's website, which falls under paragraph 4(b)(iv) of the Policy.
On January 19, 2018, the Complainant sent the Respondent a cease-and-desist letter and requested the transfer of the disputed domain name. The Respondent did not answer. The Respondent's failure to express any denial or explanation despite the opportunity offered to it reinforces the inference of bad faith registration and bad faith use (see Sanofi-aventis v. Above.com Domain Privacy/ Transure Enterprise Ltd, Host Master, WIPO Case No. D2009-1634).
Based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of the Complainant's marks, the confusing similarity between the disputed domain name and the Complainant's mark, the Respondent's use of the disputed domain name and the fame of the Complainant's trademark, and the fact that there is no conceivable good faith use the Respondent may make of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden 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 <agfaphoto-idv.com> be transferred to the Complainant.
Date: May 28, 2018