WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

AGFA-GEVAERT N.V. v. Li Gang (李刚)

Case No. D2019-2208

1. The Parties

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

The Respondent is Li Gang (李刚), China.

2. The Domain Name and Registrar

The disputed domain name <agfadigital.net> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2019. On September 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 12, 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 September 18, 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 September 24, 2019.

On September 18, 2019, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding in the amended Complaint filed on September 24, 2019. 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 October 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 1, 2019.

The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on November 12, 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 an imaging and information technology business-to-business company headquartered in Mortsel, Belgium. Agfa-Gevaert maintains a presence in 40 countries, with 10,177 employees as of 2017 and multiple production facilities around the world.1

The Complainant is the owner of multiple trademark registrations for the AGFA mark.

Trademark	Jurisdiction	Reg. No.	Reg. Date	Classes
AGFA	European Union	3353463	January 24, 2005	1, 2, 7, 9, 10, 40, 42
AGFA	European Union	8820979	July 5, 2005	5
AGFA (logo)	European Union	15598113	February 27, 2017	1, 2, 3, 7, 9, 10, 17, 24, 42

Additionally, the Complainant holds multiple registered domain names incorporating the AFGA mark in order to promote its brand and services. As an example, the Complainant-held domain name <agfa.com> was registered on November 14, 1989.

The disputed domain name <agfadigital.net> was registered on May 29, 2019. According to the evidence provided by the Complainant, the disputed domain name resolved to a website displaying meaningless symbols with a Chinese subtitle on September 9, 2019. The disputed domain name resolved to a parking page leading to a Microsoft IIS website as of October 29, 2019, according to Google’s cache of the website. The disputed domain name resolved to a generic “lorem ipsum” placeholder page in mixed Chinese and English text as of November 15, 2019, and to a blank webpage with no content except a title in Chinese roughly translating to “Undocumented Blocking Prompt!” in English as of November 21, 2019.¹

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s AGFA mark, as it consists of the fantasy word “Agfa” (i.e. the AGFA mark) and the descriptive term “digital”, which relates to the products and services the Complainant provides. The Complainant asserts that by using the disputed domain name, the Respondent creates confusion 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 and that the Complainant has prior and exclusive rights. To the best of the Complainant’s knowledge, the Respondent has not been commonly known by the name “Agfa”. The Complainant has not licensed or otherwise authorized the Respondent to use its trademarks or any domain name including the AGFA mark.

Finally, the Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The AGFA mark is famous and far predates the registration of the disputed domain name. The AGFA mark is in fact so famous that the Respondent could not ignore the preexistence of the Complainant’s trademark rights and the Respondent must have been fully aware of it when selecting the disputed domain name. The fact that the Respondent has chosen to register a domain name with a known trademark is per se a clear indication that the registration of the disputed domain name was made in bad faith. The Complainant suspects that the Respondent has selected to register a domain name including the AGFA mark to draw the impression that the Respondent is affiliated with the Complainant, or endorsed by the Complainant.

B. Respondent

6. Discussion and Findings

The Policy provides for transfer or cancellation of the disputed domain name(s) if the complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:

(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. Language of the Proceeding

Pursuant to paragraph 11 of the UDRP Rules, unless otherwise agreed by the parties, the default language of the proceeding is the language of the registration agreement, subject to the authority of the Panel to determine otherwise.

The Complainant requested that English be the language of the proceeding in paragraph IV of the amended Complaint filed on September 24, 2019. The Complainant contends that it does not communicate in Chinese and submitting all documents in Chinese would entail substantial expenses on it for translation, therefore imposing a significant and undue burden on the Complainant. Moreover, the Complainant adds that English is one of the most popular languages in the world and is commonly used in international communication.

The Complainant further presents the disputed domain name as evidence of the Respondent’s fluency in English – the disputed domain name uses the Latin alphabet and the English word “digital”. This suggests that the Respondent understands English.

The Panel accepts the Complainant’s argument that conducting the proceeding in Chinese presents an undue burden, especially given that the Respondent has not filed a response to the Complainant’s contentions. The Panel further notes that since all communications from the Center to the Parties were transmitted in both Chinese and English, the Respondent cannot claim unawareness of the proceedings due to a language barrier. Accordingly, the Panel determines that English is the language of the proceeding.

B. Identical or Confusingly Similar

The Complainant has rights to the AGFA mark. The Complainant has established that it is the registered owner of trademark registrations of the AGFA mark in various jurisdictions.

The disputed domain name <agfadigital.net> consists of the AGFA mark, the descriptive term “digital”, and the Top-Level Domain (“TLD”) “.net”. As a technical part of the domain name, the “.net” TLD may be disregarded in determining confusing similarity. See section 1.11 of the WIPO Overview 3.0. The disputed domain name consists entirely of the AGFA mark, except for the term “digital”, which serves as a descriptive suffix related to the Complainant’s business. The addition of the term “digital” does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview 3.0. The AGFA mark is recognizable within the disputed domain name.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

C. Rights or Legitimate Interests

As noted above, the Complainant has provided evidence of its prior rights in the AGFA mark. These rights precede the creation of the disputed domain name.

The disputed domain name <agfadigital.net> incorporates the Complainant’s trademark in its entirety. There is no evidence indicating that the Respondent is licensed to use the Complainant’s AGFA mark, that the Respondent is associated or affiliated with the Complainant, or that the Respondent has any other rights or legitimate interests in the string “agfadigital”, or variants thereupon. As such, the Complainant has made out its prima facie case, which the Respondent has not rebutted.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The Respondent must have been aware of the Complainant’s AGFA mark and its businesses when the Respondent registered the disputed domain name. Although the Complainant no longer operates in the public consumer sector, the AGFA mark still has a long and storied history of use as a consumer photography brand, among others. It is implausible to think that the Respondent failed to find the Complainant with even a single search.

The fact that the disputed domain name is not actively used at the time of this Decision does not hinder a finding of bad faith use under the Policy. Passive holding may equate with active use of a domain name. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Complainant’s AGFA mark is well known and the Respondent has provided no evidence of any good faith use. While the Panel can conceive of possible good faith uses of the disputed domain name, the Panel has determined that in the balance of probabilities, the Respondent is unlikely to have registered the disputed domain name in good faith. Evidence for this conclusion includes evidence relating to the standards set forth by Telstra Corporation Limited v. Nuclear Marshmallows, supra.

This and the Panel’s finding that the Respondent has no rights or legitimate interests in the disputed domain name suggest that the Respondent registered the disputed domain name in bad faith.

The Respondent has been actively updating and removing content from the website at <agfadigital.net>, none of it reflecting any legitimate use of the term “agfa” (or, for that matter, any use of the term “agfa” whatsoever). Throughout the timeframe of preparing this Decision, the Respondent has removed the website represented by the screen capture in the Complaint’s Annex, then allowed a generic IIS 7 page to appear on it, then uploaded a generic “lorem ipsum” website, then finally replaced the website with a completely blank page. This evidence suggests that the Respondent took down the website at the disputed domain name to avoid the Panel finding in favor of the Complainant, which stands as evidence that the Respondent is using the disputed domain name in bad faith.

On the balance of probabilities, the Panel concludes that the Respondent is most likely actively ignoring or pretending to be unaware of the existence of the Complainant and the Complaint, rather than possibly being a party with a legitimate interest in the “agfa” term. Accordingly, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith.

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 <agfadigital.net> be transferred to the Complainant.