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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AGFA-Gevaert N.V. v. WhoisGuard Protected, WhoisGuard, Inc. / Goezde Tatli

Case No. D2018-0723

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama / Goezde Tatli of Hessen, Germany.

2. The Domain Name and Registrar

The disputed domain name <agfasolution.com> is registered with NameCheap, Inc. (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 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 April 4, 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 April 4, 2018.

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 April 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 30, 2018.

The Center appointed Steven A. Maier as the sole panelist in this matter on May 4, 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 graphics and photographic sectors.

The Complainant is the owner of various trademark registrations, including European Union Trademark no. 003353463 for the word mark AGFA, registered on January 24, 2005 for goods and services in numerous classes.

The disputed domain name <agfasolution.com> was registered on January 23, 2018.

The disputed domain name appears to have resolved to a website offering e-commerce solutions under the heading "Agfa Solution Next Generation Commerce."

5. Parties' Contentions

A. Complainant

The Complainant states that it has been active in the graphics and photographic sector for many years and that its trademark AGFA enjoys a worldwide reputation.

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 inclusion of the term "agfa" as the distinctive element of the disputed domain name inevitably creates confusion.

The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant 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 and conceals its identity behind a privacy shield, both of which the Complainant submits are 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.

In this case, 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 trademark AGFA is likely to have a substantial reputation internationally in the graphics and photographic sectors.

A. Identical or Confusingly Similar

The disputed domain name <agfasolution.com> incorporates the Complainant's trademark AGFA in its entirely together with the dictionary term "solution". In the view of the Panel, the addition of that term is not effective 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.

The Panel notes that, while the Complainant states that the disputed domain name has not resolved to any active website, the screen captures annexed to the Complaint reflect what purports to be an active e-commerce website. However, based on the Panel's own review of the website in question, the Panel finds the contents of that website to be highly generic and vague in nature and, further, that the website fails to disclose any explanation for its use of the name and trademark AGFA. The Panel infers in the circumstances that the website does not represent a bona fide commercial offering, although that inference would also be open to the Respondent to rebut.

However, the Respondent has not participated in this proceeding and has provided no information concerning the website in question and its use of the name and trademark AGFA or any other 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 on balance that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

As indicated above, the Panel accepts that the Complainant is the owner of substantial commercial goodwill based on the reputation of its AGFA trademark. 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 the Respondent's website may not as yet have monetized Internet traffic diverted to it, since in the view of the Panel the disputed domain name constitutes an instrument of deception enabling the Respondent to do so in the future.

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 <agfasolution.com> be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: May 14, 2018

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