Westmore · UDRP DecisionA-gfa.com
The Panel ordered transfer of <a-gfa.com>. It found the domain confusingly similar to the Complainant’s registered AGFA mark because the inserted hyphen did not distinguish it; found no rights or legitimate interests because the Respondent was unauthorized, made no demonstrated bona fide or fair use, and did not respond; and found bad-faith registration and use under the passive-holding doctrine based on the well-known character of AGFA, the Respondent’s default, the absence of any explained good-faith purpose, and the lack of a plausible good-faith use.
The timeline behind a-gfa.com
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The decision is a straightforward example of transfer based on a hyphenated version of a well-known mark and passive holding. It illustrates that inactivity alone is not automatically bad faith, but inactivity combined with an established mark, inferred knowledge, respondent default, no explained good-faith purpose, and no plausible non-infringing use can satisfy the third UDRP element.
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. CONG TY TNHH Case No. D2019-1498 1. The Parties The Complainant is AGFA-GEVAERT N.V., Belgium, represented by Novagraaf Belgium NV/SA, Belgium. The Respondent is CONG TY TNHH, Switzerland. 2. The Domain Name and Registrar The disputed domain name <a-gfa.com> (“Disputed Domain Name”) 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 June 26, 2019. On June 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 28, 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 July 4, 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 July 5, 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 July 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 5, 2019. The Center appointed Gabriela Kennedy as the sole panelist in this matter on August 14, 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 is a reputable Belgian-based corporation that develops, manufactures and distributes digital imaging products and IT solutions, primarily focusing on the healthcare and printing industries. The Complainant owns numerous trade mark registrations for its AGFA mark, including European Union Trademark No. 3353463 for the word AGFA in classes 1, 2, 7, 9, 10, 40 and 42, registered on January 24, 2005. The Respondent is an individual based in Switzerland. The Disputed Domain Name was registered on March 21, 2019 and does not currently resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant’s primary contentions can be summarised as follows: (a) the Disputed Domain Name is identical or confusingly similar to the Complainant’s registered trade mark AGFA; (b) the Disputed Domain Name does not appear to have been used at all since registration and the Complainant has not licensed or otherwise authorised the Respondent to use its AGFA mark, therefore the Respondent has no rights or legitimate interest in the Disputed Domain Name; and (c) given the reputation of the Complainant’s AGFA trade mark, the Respondent’s passive holding of the Disputed Domain Name, combined with the fact that the Respondent incorporated the Complainant’s well-known AGFA mark into the Disputed Domain Name, supports the fact that the Respondent is acting in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. The fact that the Respondent has not submitted a response does not automatically result in a decision in favor of the Complainant. However, the Respondent’s failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complaint as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies , WIPO Case No. D2009-1437 and Charles Jourdan Holding AG v. AAIM , WIPO Case No. D2000-0403 ). 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements: (i) the Disputed Domain Name is identical or confusingly similar to a trade mark 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 by the Respondent in bad faith. A. Identical or Confusingly Similar The Panel accepts that the Complainant has rights in the AGFA trade mark, based on its various trade mark registrations. The Disputed Domain Name incorporates the Complainant’s AGFA mark in its entirety, with the addition of a hyphen between “a” and “gfa”. The mere addition of the hyphen does not have the effect of distinguishing the Disputed Domain Name from the Complainant’s AGFA mark and therefore does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trade mark. It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the generic Top-Level Domain (“gTLD”) extension “.com” may be disregarded. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition , (“WIPO Overview 3.0”). The Panel therefore finds that the Disputed Domain Name is identical or confusingly similar to the Complainant’s AGFA trade mark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Once a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0 . The Panel accepts that the Complainant has not authorised the Respondent to use the AGFA mark, and there is no relationship between the Complainant and the Respondent, which would otherwise entitle the Respondent to use the AGFA mark. Accordingly, the Panel is of the view that a prima facie case has been established and it is for the Respondent to show rights or legitimate interests in the Disputed Domain Name. As the Respondent has not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence. Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following: (1) before any notice to him of the dispute, the Respondent’s use of, or demonstrable preparations to use the Disputed Domain Name or a name corresponding to the Disputed Domain Name was in connection with a bona fide offering of goods or services; or (2) the Respondent has been commonly known by the Disputed Domain Name, even if he has acquired no trade mark or service mark rights; or (3) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue. No evidence has been provided to demonstrate that the Respondent has trade mark rights corresponding to the Disputed Domain Name, or that he has become commonly known by the Disputed Domain Name. The Disputed Domain Name does not currently resolve to an active website. There is therefore no evidence before the Panel that the Respondent has used, or has made any demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services or for noncommercial or fair use purposes. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith It is generally, recognised that the passive holding of a domain name does not as such prevent a finding of bad faith use. As stated in “ Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc. , WIPO Case No. D2017-0246 , “[t]he panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant’s concealment of its identity”. See section 3.3 of the WIPO Overview 3.0 . In this case, the Panel finds that the passive holding of the Disputed Domain Name by the Respondent amounts to bad faith use and registration due to the following: (i) the Complainant’s AGFA trade mark is well-known. A quick Internet search shows that the top search results returned for the keyword “AGFA” are the Complainant’s multiple websites for its various business units and affiliated social media pages, similar to the Internet search results provided by the Complainant in Annex 6. Therefore, the Panel accepts the Complainant’s argument that the Respondent must have known about the Complainant and that the Disputed Domain Name incorporated the Complainant’s AGFA mark; (ii) the Respondent failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Name, or any explanation as to the reasons why he chose to register a domain name that incorporates AGFA; and (iii) it is difficult to conceive of any plausible use of the Disputed Domain Name that would amount to good faith use, given the Disputed Domain Name is identical or at least confusingly similar to the Complainant’s AGFA mark. Any use of the Disputed Domain Name would likely result in misleading Internet users into believing the Disputed Domain Name is associated with the Complainant. In the circumstances, the Panel finds that the Respondent registered and has been using the Disputed Domain Name in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied. 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, <a-gfa.com> be transferred to the Complainant. Gabriela Kennedy Sole Panelist Date: August 26, 2019
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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