WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AGFA-GEVAERT N.V. v. 黄凯超 (Huang Kaichao)

Case No. D2021-0146

1. The Parties

The Complainant is AGFA-GEVAERT N.V., Belgium, represented by Novagraaf Belgium NV/SA, Belgium.

The Respondent is 黄凯超 (Huang Kaichao), China.

2. The Domain Names and Registrar

The disputed domain names <agfa1.com> and <agfa2.com> are registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2021. On January 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 20, 2021, 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 January 20, 2021 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 in English on January 20, 2021.

On January 20, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On January 20, 2021, the Complainant confirmed its request that English be the language of the proceeding. 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 in English and Chinese of the Complaint, and the proceedings commenced on January 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 2, 2021.

The Center appointed Deanna Wong Wai Man as the sole panelist in this matter on April 8, 2021. 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 Belgian company active in the photographic sector, the medical imaging and medical software sector for many years. It supplies products and services under the brand “AGFA”.

The Complainant owns a portfolio of trademarks for AGFA, including, for example, European Union Trade Mark registrations number 003353463, registered on January 24, 2005 and number 008133167, registered on February 17, 2010. The Complainant also has various domain names containing the word “agfa”.

The disputed domain names were created on December 11, 2020. The Complainant submits evidence that the disputed domain names directed to pornographic websites. On the date of this decision, the disputed domain names still resolve to these websites.

5. Parties’ Contentions

A. Complainant

The Complainant essentially contends that its trademarks for AGFA are distinctive and used intensively, that the disputed domain names are identical or confusingly similar to its trademarks, that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and that the disputed domain names were registered, and are being used in bad faith.

The Complainant requests the transfer of the disputed domain names.

B. Respondent

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

6. Discussion and Findings

6.1. Preliminary Issue: Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, 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 language of the Registration Agreement is Chinese, and the Complaint is filed in English. On January 20, 2021, the Center notified the Parties that the language of the Registration Agreement is Chinese, and invited the Parties to comment on the language of the proceeding. The Complainant confirmed its request that the language of the proceeding be English on the same date. The Respondent did not make any comments on the language of the proceeding and did not submit any arguments on the merits.
The Panel has carefully considered all elements of this case, in particular, the Complainant’s request that the language of the proceeding be English; the fact that the disputed domain names consists of English words and Latin scripts; the fact that all communications from the Center have been sent in English and Chinese to the Parties, and the Respondent did not comment (or object) on the language of the proceeding and did not submit arguments on the merits (while he had the right to do so in Chinese or English); and the fact that Chinese as the language of the proceeding could lead to unwarranted delay and costs for the Complainant. In view of all these elements, the Panel rules that the language of the proceeding shall be English.

6.2. Discussion and Findings on the Merits

The Policy requires the Complainant to prove three elements:

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

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

(iii) the disputed domain names have been registered and are being used in bad faith.

Based on the evidence and arguments submitted, the Panel’s findings are as follows:

A. Identical or Confusingly Similar

The Panel finds that the Complainant has shown that it has valid rights in the mark AGFA based on its extensive use and registration of the same as a trademark.

As to the confusing similarity, the disputed domain names consist of the Complainant’s registered trademark AGFA in its entirety, followed by seemingly arbitrary numerals “1” and “2” respectively. The applicable generic Top-Level Domain (“gTLD”) “.com” in this case is viewed as a standard registration requirement, and may as such be disregarded by the Panel. See in this regard the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), section 1.11.1. Moreover, the WIPO Overview 3.0, section 1.7, states: “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing” (see also Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

The Panel concludes that the disputed domain names contain the entirety of the Complainant’s registered trademark AGFA, as its only distinctive feature. The addition of the non-distinctive numerals does not preclude a finding of confusing similarity. Accordingly, the Panel rules that the disputed domain names are confusingly similar to the Complainant’s registered trademark AGFA. The Complainant has satisfied the requirements of the first element under the Policy.

B. Rights or Legitimate Interests

On the basis of the evidence and arguments submitted, the Panel holds that the Complainant has made out a prima facie case that the Respondent is not, and has never been, an authorized reseller, service provider, licensee or distributor of the Complainant, and is not making legitimate noncommercial use or fair use of the disputed domain names. As such, the Panel finds that the burden of production regarding this element shifts to the Respondent (see WIPO Overview 3.0, section 2.1). However, no evidence or arguments have been submitted by the Respondent in reply.

Furthermore, the Panel notes that the nature of the disputed domain names, being confusingly similar to the Complainant’s trademarks, carries a risk of implied affiliation with the Complainant (see also WIPO Overview 3.0, section 2.5.1), and that the Respondent is not commonly known by the disputed domain names.
On the basis of the foregoing, the Panel considers that none of the circumstances of rights or legitimate interests envisaged by paragraph 4(c) of the Policy apply, and that the Complainant has satisfied the requirements of the second element under the Policy.

C. Registered and Used in Bad Faith

The Panel holds that the registration of the disputed domain names was clearly intended to take unfair advantage of the Complainant’s trademarks, by using such trademarks to mislead and divert consumers to the disputed domain names. Given the distinctiveness and prior registration of the Complainant’s trademarks, the Panel holds that the registration of the disputed domain names, clearly targeting the Complainant’s trademarks, was obtained in bad faith.

Furthermore, even a cursory Internet search at the time of registration of the disputed domain names would have made it clear to the Respondent that the Complainant owns the registered trademarks for AGFA and used these extensively. In the Panel’s view, the preceding elements clearly establish the bad faith of the Respondent in registering the disputed domain names.

As to use of the disputed domain names in bad faith, the disputed domain names link to pornographic websites, and that indicates the Respondent’s intention to use the Complainant’s trademarks and reputation to attract Internet users for the Respondent’s commercial gain. It further shows the Respondent knows the Complainant, its products, services and its trademarks.

The Panel has reviewed all elements of this case, and in particular: the confusing similarity of the disputed domain names to the Complainant’s trademarks; the distinctiveness and reputation of the Complainant’s trademarks; and the fact that the Respondent linked the disputed domain names to pornographic websites for commercial gain. On the basis of the foregoing elements, the Panel rules that it has been demonstrated that the Respondent is using the disputed domain names in bad faith.

Finally, the Respondent failed to provide any response or evidence to establish her good faith or absence of bad faith. The Panel therefore rules that the Complainant has satisfied the requirements of the third element under 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 names <agfa1.com> and <agfa2.com> be transferred to the Complainant.

Deanna Wong Wai Man
Sole Panelist
Date: April 16, 2021