WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AGFA-Gevaert N.V. v. Marjorie Secrest
Case No. D2018-0753
1. The Parties
The Complainant is AGFA-Gevaert N.V. of Mortsel, Belgium, represented by Novagraaf Belgium NV/SA, Belgium.
The Respondent is Marjorie Secrest of Austin, Texas, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <agfa-be.com> (the “Domain Name”) 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 April 4, 2018. On April 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 6, 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 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 1, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 2, 2018.
The Center appointed Gareth Dickson as the sole panelist in this matter on May 18, 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 in the graphics and photographic sector. It is the proprietor of numerous trade mark registrations around the world for AGFA. These registrations include European Union trade mark registration 3353463 for AGFA, which was filed with the European Union Intellectual Property Office (“EUIPO”) on September 16, 2003 and was registered on January 24, 2005 (the “Mark”).
The Domain Name was registered on November 21, 2017. The Domain Name resolves to a website which displays a “Page Not Found” message.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Mark since it incorporates the Mark in its entirety and adds to it only “-be”, which two letters represent the two letter country code for Belgium, where the Complainant is incorporated.
The Complainant also asserts that the Respondent has no rights or legitimate interests in the Domain Name since it is not, so far as the Complainant is aware or the WhoIs data reveals, commonly known as AGFA or AGFA-BE, nor has the Respondent been authorized by the Complainant to use the Mark in the Domain Name.
Finally, the Complainant argues that the Respondent must have been aware of the Complainant’s rights in the Mark when it registered the Domain Name given the fame of the Mark and the fact that the Domain Name is comprised exclusively of the Mark and the geographical indicator for the country in which the proprietor of that mark is incorporated. It also submits that the Domain Name is being used in bad faith since it does not resolve to an active website and the Respondent did not respond to the Complainant’s efforts to contact the Respondent prior to filing the Complaint.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of them means the Complaint must be denied
A. Identical or Confusingly Similar
The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark.
The Panel also accepts that the Domain Name is confusingly similar to the Mark. In particular, AGFA is the dominant and distinctive part of the Domain Name and the addition of the geographical designation “be” for Belgium and the gTLD suffix “.com”, does not alter that conclusion in any way. Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) permits a finding of confusing similarity in circumstances such as this, stating that: “Where the relevant trade mark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”
Accordingly, the Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, this does not mean that it has to prove a negative to succeed in its complaint.
As explained in section 2.1 of the WIPO Overview 3.0, the consensus view is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In the current proceeding, the Complainant has established its prima facie case, having alleged that the Respondent has not been licensed or authorized to use its AGFA mark, whether in the Domain Name or otherwise. Furthermore, there is no evidence that the Respondent has acquired any common law rights to use AGFA or that it is commonly known as AGFA. Finally, it is not making any use of the Domain Name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it.
The Panel therefore finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
The Panel accepts that the Domain Name was chosen by reference to the Mark and the Complainant’s connection to Belgium. “agfa” and “agfa-be” are not phrases that have any inherent meaning aside from the Complainant. As a result, and in the absence of evidence from the Respondent that the similarity of the Domain Name to the Mark is coincidental or unintended, the Panel must conclude that the Respondent knew of the Complainant’s rights in the AGFA trade mark when it registered the Domain Name. The Panel therefore finds that the Respondent’s registration of the Domain Name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorization of the Complainant, rights in the Complainant’s AGFA trade mark.
On the basis of the information available to it, the Panel finds that the Respondent’s passive holding of the Domain Name, in the absence of any rights or legitimate interests in respect of it, amounts to use of the Domain Name in bad faith.
As a result of the above, the Panel finds that the Domain Name was registered and is 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 Domain Name <agfa-be.com> be transferred to the Complainant.
Date: June 1, 2018