WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AGFA-Gevaert N.V. v. WhoisGuard Protected, WhoisGuard, Inc. / Wire Sultan, PGLOBAL
Case No. D2017-2126
1. The Parties
The Complainant is AGFA-Gevaert N.V. of Mortsel, Belgium, represented by Novagraaf Belgium NV/SA, Belgium.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc. of Panama, Panama / Wire Sultan, PGLOBAL of Atkinson, New Hampshire, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <agfa.pro> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2017. On October 31, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 31, 2017, 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 November 2, 2017, 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 November 2, 2017.
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 November 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 4, 2017.
The Center appointed Christopher J. Pibus as the sole panelist in this matter on January 8, 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 Agfa-Gevaert NV is a Belgian-based business that develops, produces, and distributes a range of analog and digital imaging systems and IT solutions, mainly for the printing industry and the healthcare sector, as well as for specific industrial applications.
The Complainant owns many trademark registrations around the world for its AGFA trademark, including European Union Trademark No. 3353463 for the word AGFA, registered on January 24, 2005. The Complainant has been active in the graphics and photographic sector for many years and enjoys a worldwide reputation with its AGFA mark.
The Respondent is identified as WhoisGuard Protected, WhoisGuard, Inc. / Wire Sultan, PGLOBAL. The disputed domain name was registered on May 14, 2017.
The Panel accessed the disputed domain name on January 16, 2018, which resolved to a parking page with links to third party websites.
5. Parties’ Contentions
The Complainant submits that it holds registered rights to the AGFA trademark as outlined above. The disputed domain name is alleged to be confusingly similar to this registered mark, as it is incorporates the same letters as the AGFA trademark. The Complainant contends that the risk of confusion is therefore extremely high, as consumers may believe that the disputed domain name refers to the Complainant.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant states that it has not licensed or otherwise authorized the Respondent to use its trademark or any domain name including the AGFA trademark. Further, the Respondent has not been commonly known by the name “agfa” and the disputed domain name is not linked to any active website showing use.
Finally, the Respondent is alleged to have registered and used the disputed domain name in bad faith for four reasons. First, the Complainant states that since its trademarks are famous, the Respondent could not have ignored the preexistence of its trademark rights and must have been fully aware of it when selecting the disputed domain name. The Complainant states that the fact that the Respondent chose a known trademark as a domain name is a clear indication that the registration of the disputed domain name was made in bad faith. Second, the Respondent failed to respond to the Complainant’s invitation to voluntarily proceed with the transfer of the disputed domain name. Third, the Respondent’s concealment of its identity (due to the fact that the disputed domain name is held by an anonymous party) suggests its bad faith. Fourth, the fact that the disputed domain name does not resolve to an active website also suggests the Respondent’s bad faith. The Complainant relies on previous panel decisions for its position: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246.
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, the 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 interest in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence that it has registered trademark rights in AGFA in connection with the graphics and photographic sector. The Panel is therefore satisfied that the Complainant has established relevant trademark rights.
The Respondent has incorporated the Complainant’s AGFA trademark in its entirety in the disputed domain name <agfa.pro>. Prior Panels have held that “when a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy.” See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
The Panel therefore finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has not licensed or otherwise authorized the Respondent to use any of its AGFA trademarks. There is no evidence that the Respondent is commonly known by the name “agfa” or is affiliated in any way with the Complainant’s business.
The Panel further finds that the Respondent is neither making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as the disputed domain name is not resolving to an active website. The evidence put forward by the Complainant in Annex 5 consists of a screen shot of the website associated with the disputed domain name that shows links diverting visitors to other content. The Complainant has not provided evidence as to the content of these links. When the Panel accessed the disputed domain name, it resolved to a parking page advertising scheme. This is a strong indication of the Respondent’s lack of rights or legitimate interests in the disputed domain name.
Having established a prima facie case, the burden of production shifts to the Respondent to prove that it holds rights or legitimate interests in the disputed domain name. The Panel notes that no response has been filed in this proceeding.
The Panel therefore finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
The uncontested evidence of the Complainant is that its AGFA trademarks are famous and far predate any of the Respondent’s activity. In the absence of evidence to the contrary, the Panel is prepared to infer that the Respondent was aware of the Complainant’s trademark rights in AGFA when the disputed domain name was registered. Further, the disputed domain name is identical to the Complainant’s well-known AGFA trademark. As stated in section 3.1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.”
The disputed domain name resolves to a parking page advertising scheme. Using the disputed domain name to host a pay-per-click parking page creates a likelihood of confusion with the Complainant’s trademark and allows the Respondent to potentially obtain revenue from this practice, contrary to paragraph 4(b)(iv) of the Policy. Previous Panel decisions have considered this type of use of a domain name sufficient to demonstrate bad faith. For reference on the subject, see Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyGuardian.org / George Ring, DN Capital Inc., WIPO Case No. D2017-0302; Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474; and Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
In this case, the Panel finds that the overall circumstances of the case support the conclusion that the Respondent’s use of the disputed domain name is in bad faith. These circumstances include the well-known character of the Complainant’s AGFA trademark, the Respondent’s failure to reply to the letter sent by the Complainant or take part in the present proceedings, and the Respondent’s concealment of its identity through the use of an anonymous party.
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.pro> be transferred to the Complainant.
Christopher J. Pibus
Date: January 22, 2018