WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AGFA-Gevaert N.V. v. Nexperian Holding Limited / Sun Di Guo
Case No. D2018-0752
1. The Parties
The Complainant is AGFA-Gevaert N.V. of Mortsel, Belgium, represented by Novagraaf Belgium NV/SA, Belgium.
The Respondent is Nexperian Holding Limited of Hangzhou, Zhejiang, China / Sun Di Guo of Shenzhen, Guangdong, China.
2. The Domain Names and Registrars
The disputed domain names <agfaroyal.com> and <agfaroyal.net> are registered with HiChina Zhicheng Technology Ltd. (the "Registrar").
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on April 4, 2018. On April 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 8, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 9, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On the same day, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant filed an amended Complaint on April 12, 2018, including a request that English be the language of the proceeding. 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 Chinese of the Complaint, and the proceeding commenced on April 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 8, 2018.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on May 16, 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 company incorporated in Belgium and is the owner of numerous registrations in jurisdictions around the world for the trade mark AGFA (the "Trade Mark"), including European Union registration number 003353463, with a registration date of January 24, 2005.
The Complainant has been using the Trade Mark internationally for many years in the graphics and photographic sector.
The Respondent is apparently an individual resident in China.
C. The Disputed Domain Names
The disputed domain names were both registered on the same date, November 3, 2017.
D. Passive use of the Disputed Domain Names
The disputed domain names have not been used.
5. Parties' Contentions
The Complainant contends that the disputed domain names are identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests in respect of the disputed domain names and the disputed domain names have been registered and are being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
The language of the Registration Agreements for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.
Paragraph 11(a) of the Rules allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Complainant has requested that the language of the proceeding be English, for the following reasons:
(i) the Complainant does not communicate in Chinese and submitting all the documents in Chinese would entail significant translation expenses, which would impose a significant and undue burden on the Complainant;
(ii) English is one of the most popular languages in the world and is commonly used in international communication;
(iii) the disputed domain names comprise Latin script and the English word "royal". The Complainant therefore presumes that the Respondent knows English.
The Respondent, having received the Center's communication regarding the language of the proceeding in both Chinese and English, did not make any submissions regarding the language of the proceeding. Having received notice of the proceeding in both Chinese and English, the Respondent chose not to file a response.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties' ability to understand and use the proposed language, time and costs.
The Panel considers the factors relied upon by the Complainant do not support a conclusion that the Respondent is conversant in English. The Panel is however mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner.
In all the circumstances, including in particular the fact the disputed domain names have not been used, the Respondent's failure to submit any response, and the Respondent's failure to make any submissions on the language of the proceeding, the Panel therefore finds it is not foreseeable that the Respondent would be prejudiced, should English be adopted as the language of the proceeding. The Panel also notes that all of the communications from the Center in this proceeding have been sent to the Parties in both English and Chinese.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.
6.2. Substantive Elements of the Policy
The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration.
The disputed domain names incorporate the entirety of the Trade Mark (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7) together with the word "royal".
Where a relevant trade mark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview 3.0, section 1.8).
The Panel therefore finds that the disputed domain names are confusingly similar to the Trade Mark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to the respondent of the dispute, the respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Mark. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names have been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain names have not been used.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names; and there has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant's prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Given the notoriety of the Complainant and of its Trade Mark; the fact that, excluding the generic Top-Level Domains ".com" and ".net", the disputed domain names are identical; that the disputed domain names were registered on the same day; the lack of any explanation from the Respondent; and the passive use of the disputed domain names, the Panel has no hesitation in concluding the requisite element of bad faith registration and use have been made out. The Panel considers it is inconceivable the Respondent was not aware of the Trade Mark at the time it registered the disputed domain names.
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith.
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 names <agfaroyal.com> and <agfaroyal.net> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: May 30, 2018