WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Agfa-Gevaert N.V. v. Protection of Private Person / Martin Ulimo

Case No. D2019-2374

1. The Parties

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

The Respondent is Protection of Private Person, Russian Federation / Martin Ulimo, Australia.

2. The Domain Name and Registrar

The disputed domain name <agfahospital.com> is registered with Registrar of Domain Names REG.RU LLC. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2019. On September 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 1, 2019, 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 October 2, 2019, 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 October 4, 2019.

The Registrar confirmed that the language of the Registration Agreement for the disputed domain name is Russian. On October 2, 2019, the Center sent an email communication to the Parties in both English and Russian regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on October 4, 2019. The Respondent did not comment on the language of the proceeding.

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 in both English and Russian, and the proceedings commenced on October 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 31, 2019.

The Center appointed Assen Alexiev as the sole panelist in this matter on November 6, 2019. 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 active in the medical sector as a developer of medical software and manufacturer of medical imaging devices.

The Complainant owns the following trademark registrations for the sign AGFA (the “AGFA trademark”):

- the European Union trademark AGFA with registration No. 003353463, registered on January 24, 2005 for goods and services in International Classes 1, 2, 7, 9, 10, 40 and 42; and

- the European Union trademark AGFA with registration No. 008820979, registered on July 5, 2010 for goods in International Class 5.

The Complainant is also the registrant of the domain name <agfahealthcare.com>, registered on January 24, 2002.

The disputed domain name was registered on May 27, 2019. It resolves to a website that advertises in English, the services of a hospital in Dubai.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s AGFA trademark as it reproduces it in its entirety with the addition of the descriptive word “hospital”, which only adds to the risk of confusion, given the activities of the Complainant. The Respondent thus creates confusion as consumers may believe that the disputed domain name refers to the Complainant.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name, as the Respondent has not been commonly known by the name AGFA, and the Complainant has not licensed or otherwise authorized the Respondent to use the AGFA trademark or any domain name including the AGFA trademark.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Complainant submits in this regard that the AGFA trademark is famous and far predates the registration of the disputed domain name, so the Respondent must have been fully aware of the Complainant when selecting the disputed domain name, and has selected it in view of the attractiveness of the AGFA trademark to create the impression that it is affiliated with the Complainant, which is supported by the fact that the second part of the disputed domain name - the descriptive word “hospital”, refers to the Complainant’s activities. According to the Complainant, this shows that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s AGFA trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

B. Respondent

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

6. Discussion and Findings

6.1. Procedural issue – Language of the proceedings

In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the registration agreement for the disputed domain name is Russian. Under paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.

The Complainant submitted its Complaint in the English language, and requests the proceeding to be held in English. The Complainant argues that the translation of the Complaint into Russian would unreasonably burden the Complainant and delay the proceedings, and points out that the disputed domain name includes the English word “hospital”. The Center has sent all its messages to the Respondent in both English and Russian, and has invited the Respondent to express its views on the language of the proceeding. The Respondent has not responded to this invitation and has thus not objected to the Complainant’s request that the proceedings be held in English. The Panel also notes that the website at the disputed domain name is entirely in English.

Taking all the above circumstances into account, the Panel accepts that the Respondent would not be disadvantaged if the language of the proceeding is English, and is satisfied that using the English language in this proceeding would be fair and efficient.

Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding will be English.

6.2. Substantive Matters

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”

The Respondent has however not submitted a Response and has thus not disputed the Complainant’s statements and evidence in this proceeding.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the AGFA trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.

The relevant part of the disputed domain name is therefore the sequence “agfahospital”, in which the elements “agfa” and “hospital” are easily discernible. The “agfa” element is identical to the distinctive AGFA trademark and dominates in the disputed domain name, while the “hospital” element is a descriptive word that is related to the goods for which the AGFA trademark is registered and to the field of activity of the Complainant. In view of this, the inclusion of this element in the disputed domain name does not prevent a finding of confusing similarity between the disputed domain name and the AGFA trademark.

In view of the above, the Panel finds that the disputed domain name is confusingly similar to the AGFA trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out 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. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not affiliated with the Complainant and has not been authorized by the Complainant to register or use any domain name incorporating the AGFA trademark, and that the Respondent has no prior rights or legitimate interests in the disputed domain name, since the registration of the AGFA trademark preceded the registration of the disputed domain name for years. The Complainant also points out that the disputed domain name is being used in connection with a website of a hospital in Dubai. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not alleged that is has rights and legitimate interests in the disputed domain name and has not disputed the statements of the Complainant and the evidence submitted by it.

The disputed domain name is confusingly similar to the distinctive AGFA trademark, and resolves to an active website that offers hospital services. These services are related to the activities of the Complainant, which produces medical software and medical imaging devices. The website includes the copyright notice “© 2018 by Agfa Hospitals”.

In view of the above and in the lack of any explanation by the Respondent or evidence to the contrary, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the AGFA trademark, has registered and used the disputed domain name in an attempt to exploit the trademark’s goodwill by attracting Internet users to the Respondent’s website for commercial gain by confusing them that it is affiliated to the Complainant. In the Panel’s view, this conduct of the Respondent does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use, and therefore does not give rise to rights and legitimate interests of the Respondent in the disputed domain name.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

As discussed above, the disputed domain name is confusingly similar to the distinctive AGFA trademark and resolves to an active website that offers hospital services, which are related to the goods and services offered by the Complainant. The Complainant contends that the Respondent has not received any authorization for its activities by the Complainant, and the Respondent does not dispute the statements of the Complainant or offer any plausible explanation of its actions.

Taking the above into account, the Panel accepts as more likely than not that the Respondent has registered and used the disputed domain name with knowledge of the Complainant and targeting the AGFA trademark. It is likely that by creating a likelihood of confusion with the Complainant’s AGFA trademark, the Respondent has attempted to attract traffic to the disputed domain name and confuse Internet users that they are reaching an online location affiliated to the Complainant and then offer them hospital services for commercial gain.

Therefore, the Panel finds that the disputed domain name has been registered and 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 <agfahospital.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: November 18, 2019