Westmore · UDRP DecisionAgfatics.com
The Panel ordered transfer of <agfatics.com>. It found the domain confusingly similar to the Complainant’s AGFA trademark because AGFA remained the dominant and recognizable element despite the addition of “tics.” The Complainant established an unrebutted prima facie case that the Respondent lacked rights or legitimate interests. The Panel further found that the Respondent had the AGFA mark in mind when registering the domain and that the domain’s passive holding constituted bad-faith use in the circumstances.
The timeline behind agfatics.com
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The decision illustrates that adding an ambiguous suffix to a recognizable trademark will not avoid confusing similarity where the mark remains dominant. It also demonstrates how an unrebutted prima facie case can satisfy the rights-or-legitimate-interests element and how passive holding may support bad-faith use when the circumstances indicate trademark targeting.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Agfa-Gevaert N.V. v. Registration Private, Domains By Proxy, LLC / Alvaro Diego Vesga Case No. D2019-0697 1. The Parties The Complainant is Agfa-Gevaert N.V. of Mortsel, Belgium, represented by Novagraaf Belgium NV/SA, Belgium. The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Alvaro Diego Vesga of Bogotá, Colombia. 2. The Domain Name and Registrar The disputed domain name <agfatics.com> is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2019. On March 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 29, 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 April 1, 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 April 2, 2019. 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 April 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2019. The Center appointed George R. F. Souter as the sole panelist in this matter on May 13, 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 has traded internationally for many years in the photographic, medical imaging, and medical software sectors, under its trademark AGFA, and has acquired a significant reputation. Details of widespread registration of the Complainant’s AGFA mark have been supplied to the Panel, including details of the Complainant’s European Union trademark registration number 008820979, registered on July 7, 2010. The disputed domain name was registered on November 18, 2018. The disputed domain name does not resolve to an active webpage. 5. Parties’ Contentions A. Complainant The Complainant alleges that the disputed domain is confusingly similar to its AGFA trademark, continuing the AGFA trademark in its entirety, with the mere addition of the suffix “tics”. The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that, so far as the Complainant can gather, the Respondent is not generally known by the disputed domain name, and the Respondent has received no authorization whatsoever from the Complainant to use its AGFA trademark in connection with a domain name or otherwise. The Complainant alleges that the disputed domain was registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant: (i) the disputed domain name is 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 name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar It is well-established in prior decisions under the UDRP, with which the Panel agrees, that the mere addition of a generic Top-Level Domain (“gTLD”) indicator is basically irrelevant when comparing a trademark with a disputed domain name. Accordingly, the Panel finds that the gTLD indicator “.com” is irrelevant when comparing the disputed domain name with the Complainant’s trademark in the circumstances of the present case. In the Panel’s opinion, the suffix “tics” either gives the general meaning of “related to” and in which case is a descriptive element added to the Complainant’s AGFA trademark or is meaningless; in either event and the dominant and recognizable element of the disputed domain name is the Complainant’s AGFA trademark. It is well-established in prior decisions under the Policy, with which the Panel agrees, that the mere addition of a descriptive or non distinctive element to a trademark in which the Complainant has rights is insufficient to avoid a finding of confusing similarity between the Complainant’s AGFA trademark and the disputed domain name. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s AGFA trademark. B. Rights or Legitimate Interests It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with rebuttal evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy. The Panel considers the submissions put forward by the Complainants as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case. Accordingly, the Panel finds that the Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. In the circumstance of the present case, in which the Panel believes that the Respondent has clearly had the Complainant’s trademark in mind when registering the disputed domain name, the Panel regards it as appropriate to find that the disputed domain name was registered in bad faith, and so finds. The Panel was not provided with details as to the use to which the disputed domain name has been put, if any. In its discretion, the Panel has, however, conducted a brief investigation, from which it appears that the disputed domain name is not in use and the disputed domain name is being passively held. The Panel agrees with the Panel in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 , that there are circumstances in which passive holding of a disputed domain name can constitute use in bad faith. The Panel is of the opinion that the circumstances of the present case render it appropriate to find that the disputed domain name is being used in bad faith, and so finds. 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 <agfatics.com> be transferred to the Complainant. George R. F. Souter Sole Panelist Date: May 27, 2019
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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