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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Agfa-Gevaert N.V. v. WhoisGuard Protected, WhoisGuard, Inc. / Domain Admin

Case No. D2020-1098

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Domain Admin, United States of America.

2. The Domain Name and Registrar

The disputed domain name <agfafq.site> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2020. On May 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 4, 2020, 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 May 6, 2020 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 May 6, 2020.

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 May 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 4, 2020.

The Center appointed Alistair Payne as the sole panelist in this matter on June 17, 2020. 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.

The Panel issued a Panel Order on July 1, 2020 in the following terms:

“The Panel requests that the Complainant provide the complete version of Annex 6 to the Complaint, which according to section C. of the Complaint and amended Complaint and to the list of annexes, should include the “letter to the Respondent” and the “Printscreen from disputed website”.

The Complainant should submit the above-requested evidence by the end of July 3, 2020. The Respondent is invited to submit any comments to the Complainant’s submission by July 6, 2020.

Please be advised any submissions should only refer to and/or contain material relating to the above details specifically requested by the Administrative Panel.”

The Complainant filed its response in relation to this Panel Order on July 3, 2020. The Respondent sent an email to the Center on July 6, 2020 as follows:

“To Who It May Concern,

We just saw the emails regarding this issue today, this email account is not active, also this domain was bought by a mistake and was never used for any purpose.

We can transfer the ownership of this domain today if you would like and close this issue.

Thanks.”

4. Factual Background

The Complainant is a supplier of products and services in the photographic, medical imaging and medical software sectors. It owns numerous trade mark registrations worldwide for its AGFA trade mark including European Union Trade Mark registration no. 3353463 registered on January 24, 2005.

The disputed domain name was registered on December 15, 2019 and resolves to a webpage headed “New Message” and which includes a copyright notice in the form “© 2020” and includes in blue in an unusually prominent position on the page and obviously as hyperlinks, the terms “Privacy Policy” and “Terms and Conditions”.

5. Parties’ Contentions

A. Complainant

The Complainant submits that it owns registered trade mark rights for its AGFA mark as set out above. It says that the disputed domain name wholly incorporates the AGFA mark with the addition of the letters “fq” after it. It says that the disputed domain name is therefore confusingly similar to the Complainant’s AGFA trade mark.

The Complainant submits that the Respondent has not been commonly known by the name “Agfa” and that the Complainant has not licensed, or otherwise authorised the Respondent to use its trade mark or any domain name that includes the AGFA trade mark. As a result, the Complainant says that the Respondent has no rights or legitimate interests to register and use the disputed domain name.

As far as bad faith is concerned, the Complainant says that the AGFA trade marks are famous and predate the disputed domain name by many years. Based on the degree of fame attaching to the AGFA mark, the Complainant says further that the Respondent must have known of the Complainant’s trade mark rights when it selected the disputed domain name. It says that the fact that the Respondent chose as a domain name a known trade mark is an indication per se that the registration of the disputed domain name was in bad faith.

The Complainant maintains that the Respondent has chosen the disputed domain name in order to create an impression that it is affiliated with or endorsed by the Complainant. It submits that this is a case that fulfills the criteria of paragraph 4(b)(iv) of the Policy and that this is evidence of use and registration in bad faith.

The Complainant initially indicated that it had sent a cease and desist letter to the Respondent and that it was annexed to the Complaint but in fact when responding to the Panel Order dated 1 July 2020, it confirmed that it had erroneously noted the existence of the letter in its Complaint as a result of using a precedent complaint. It confirmed that there was in fact no such letter because the Complainant did not have a contact address for the Respondent prior to commencing these proceedings.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has demonstrated that it owns European Union Trade Mark registration no. 3353463 registered on January 24, 2005 for its AGFA mark. The disputed domain name wholly incorporates the AGFA mark together with the letters “fq”. As a consequence, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s AGFA trade mark. The addition of the letters “fq” in the disputed domain name does not prevent a finding of confusing similarity. Accordingly, the Complaint succeeds under this element of the Policy.

B. Rights or Legitimate Interests

The AGFA mark is highly distinctive and very well known. The Complainant has submitted that the Respondent has not been commonly known by the name “Agfa” and that the Complainant has not licensed, or otherwise authorised the Respondent to use its trade mark or any domain name that includes the AGFA trade mark. It appears, as described under Part C below, that the Respondent has registered the disputed domain name in order to trade off the repute attaching to the AGFA mark and to divert Internet users to its website at the disputed domain name, which is not bona fide conduct.

The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not filed a formal response to these proceedings in rebuttal of the Complainant’s case under this element of the Policy and in its email of July 6, 2020 provided no explanation except to suggest that the disputed domain name was bought by mistake. As a consequence, the Panel finds that the Complaint succeeds under this element of the Policy.

C. Registered and Used in Bad Faith

The AGFA trade mark is highly distinctive and extremely well reputed. The Complainant’s trade mark predated the disputed domain name by many years. In the Panel’s view, it is very likely that the Respondent was well aware of the Complainant’s trade mark rights when it selected the disputed domain name that incorporated the AGFA mark and that it did so on purpose.

Even though the Respondent denies having used the disputed domain name, it is notable that in fact it redirects to a webpage headed “New Message” and which includes a copyright notice in the form “© 2020” and includes in blue in an unusually prominent position towards the top of the page the terms “Privacy Policy” and “Terms and Conditions” which are actually hyperlinks. This was the only page submitted by the Complainant as an indication of what was on the website at the disputed domain name and was confirmed by the Complainant’s response dated July 3, 2020 to the Panel Order dated July 1 2020.

The Panel checked the current web page to which the disputed domain name resolves and found that on clicking on “Privacy Policy” an Internet user arrives at what appears to be a valid privacy policy dated January 20, 2020. However when the Panel attempted using the “back button” to navigate back to the site the website automatically diverted to a website at the domain name <rewardspending.com> which is headed “Take A Spin” and contains a roulette wheel and the legend “paid participation required”. A pop-up notice invites the user to take what is presumably a free introductory spin.

It appears to the Panel that this is either a casino or gaming site or some type of phishing site. This amounts to the Respondent, or in the alternative a place holder service authorised by the Respondent, using the disputed domain name in order to attract Internet users and to confuse them into thinking that they are being re-directed to the Complainant’s website when they are in fact eventually led to the website noted above which is more likely than not for commercial gain. This conduct fulfills the criteria of paragraph 4(b)(iv) of the Policy and is evidence of registration and use in bad faith.

The fact that the Respondent used a privacy service to register the disputed domain name only reinforces the Panel’s view of its bad faith. As a result, the Panel finds that the Complaint also succeeds under this element of the Policy.

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 <agfafq.site> be transferred to the Complainant.

Alistair Payne
Sole Panelist
Date: July 9, 2020

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