WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Agfa-Gevaert N.V. v. Bruce C. Whitehurst, Xray Eye & Vision Clinics
Case No. D2020-1105
1. The Parties
The Complainant is Agfa-Gevaert N.V., Belgium, represented by Novagraaf Belgium NV/SA, Belgium.
The Respondent is Bruce C. Whitehurst, Xray Eye & Vision Clinics, Slovenia.
2. The Domain Name and Registrar
The disputed domain name <agfa-com.com> 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 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 6, 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 7, 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 8, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2020.
The Center appointed Andrea Mondini as the sole panelist in this matter on June 12, 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.
4. Factual Background
The Complainant is active in the graphics and photographic sector and its trademark AGFA is known worldwide.
The Complainant owns numerous registrations for the trademark AGFA, including European Union registration no. 003353463 for the word mark AGFA, which was registered on January 24, 2005 in several classes, including class 9 for photographic apparatus.
The disputed domain name was registered on February 17, 2020, and does not resolve to an active website.
5. Parties’ Contentions
The Complainant in essence contends the following:
The AGFA mark is famous worldwide.
The disputed domain name incorporates the AGFA mark in its entirety. The addition of the ending “-com” is not relevant, as it merely duplicates the Top-Level Domain.
The Respondent is not commonly known by the disputed domain name. The Complainant has not licensed or otherwise authorized the Respondent to use the AGFA trademark. The Respondent therefore has no rights or legitimate interests in the disputed domain name, or any rights in the AGFA trademarks, or association with the Complainant whatsoever.
The disputed domain name has been registered in bad faith because, given the worldwide reputation of the Complainant’s AGFA trademark, the Respondent must have known the AGFA mark prior to registering the disputed domain name.
The Respondent has used the disputed domain name in bad faith by passively holding it without a legitimate purpose.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, in order to succeed, a complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the 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 disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has shown that it holds the European Union registration no. 003353463 for the word mark AGFA.
The Panel finds that the disputed domain name is confusingly similar to the Complainant’ trademark, because it incorporates in its entirety the trademark AGFA. The addition of the ending “-com” in the second level domain merely duplicates the (non-distinctive) Top-Level Domain and does not dispel confusing similarity between the disputed domain name and the Complainant’s trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant contends, credibly, that it has not authorized the Respondent to register or use any domain name incorporating the Complainant’s trademark AGFA, and that there is no relationship whatsoever between the Parties. In the absence of any Response, the Panel concludes that the Respondent was not authorized or licensed to use the Complainant’s trademark in the disputed domain name and that there is no indication of any bona fide offering of goods or services under the disputed domain name nor any legitimate noncommercial or fair use of the disputed domain name. Further, there is no evidence showing that the Respondent has been commonly known by the disputed domain name. Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The AGFA mark is distinctive and well known throughout the world for photographic products. The Panel thus concludes that the Respondent must have been aware of this trademark and its reputation when it registered the disputed domain name, so that the disputed domain name was registered in bad faith (see e.g. Accenture Global Services Limited v. Domains By Proxy LLC/ Norman Shaaban, WIPO Case No. D2018-0731).
Considering the distinctiveness and worldwide reputation of the Complainant’s trademark AGFA and the failure of the respondent to submit a response, the inactive use of the disputed domain name without a legitimate purpose, under the circumstances of this case, does not prevent a finding of bad faith under the doctrine of passive holding. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 3.3.
Accordingly, the Panel concludes that the disputed domain name has been registered and used in bad faith.
The Panel therefore finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy.
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 <agfa-com.com> be transferred to the Complainant.
Date: June 24, 2020