The registrant of several domains that begin with “AGFA” denied he targeted the famous brand AGFA; instead, the letters represent his and his son’s initials.
Agfa-Gevaert N.V., Belgium filed a UDRP involving the domains agfachelseapartners.com, agfachelseapartners.store, agfachelseapartners.tech, and agfachelseapartners.world.
The Respondent isn’t targeting AGFA, or the Chelsea football club for that matter. He has formed a UK company under the name “Agfachelseapartners Ltd.” and also provided a company logo, and a copy of his and his son’s IDs to prove his case.
A very bizarre victory for the Respondent, but a victory regardless as the sole panelist at the WIPO ordered the domains to remain with the Respondent, Fabrice Akakpo.
The domain transfer was denied.
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Agfa-Gevaert N.V. v. Fabrice Akakpo
Case No. D2020-14321. The Parties
The Complainant is Agfa-Gevaert N.V., Belgium, represented by Novagraaf Belgium NV/SA, Belgium.
The Respondent is Fabrice Akakpo, United Kingdom.
2. The Domain Names and Registrar
The disputed domain names <agfachelseapartners.com>, <agfachelseapartners.store>, <agfachelseapartners.tech>, and <agfachelseapartners.world> (the “Domain Names”) are registered with Infomaniak Network SA and Key-Systems GmbH (the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2020. On June 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On June 5, 2020, the Registrar Key-Systems GmbH transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. On June 8, 2020, the Registrar Infomaniak transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. On June 8, 9, 10, and 11, 2020, the Center received six email communications from the Respondent. The Center sent an email communication to the Complainant on June 29, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint or to file a separate complaint for each of the Domain Names. The Complainant filed an amended Complaint on June 30, 2020 removing from the Complaint the Domain Name <agfachelseapartners.art>.
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 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 27, 2020. The Respondent submitted a Response on July 8, 2020.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on August 12, 2020. 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.
On August 20, 2020, the Panel issued an Administrative Panel Order, pursuant to paragraph 12 of the UDRP Rules, requesting, inter alia, more information and documentation of the Respondent’s business and website, predating the dispute. The Respondent filed a supplemental filing at August 21, 2020 confirming his contentions in the Response, and adding explanations as to the incomplete nature of his web page, and offering a more detailed explanation as to his choice of domain names. The Complainant filed its supplemental filing on August 25, 2020, in which it did not comment on the Respondent’s supplemental filing beyond requesting the domain name <agfachelseapartners.art> be reinserted in its Complaint. Due to the Panel’s findings below, the Panel will not decide on the request to add the domain name to the Complaint.
4. Factual Background
The Complainant is a multinational corporation that develops, manufactures, and distributes analogue and digital imaging products, software, and systems. The Complainant is active in the graphics and photographic sector since many years and enjoys a worldwide reputation.
The Complainant owns numerous trademarks containing the word AGFA, for example European Union registration nos. 003353463, 008133167, 009440801, and 011649803, all registered between 2005 and 2013.
The Domain Names were registered on April 16, 2020. At the time of drafting the Decision, three Domain Names resolved to error pages. The fourth, <agfachelseapartners.tech>, resolved to a basic web page with text in various languages that on its face seems to offer web and other design services (i.e., in addition to what appear to be webpage mock ups, there is an image of a t-shirt and what looks to be a poster or flyer of some sort) possibly for the tourist industry but which also contains “lorem ipsum” placeholder text.
5. Parties’ Contentions
A. Complainant
The Complainant provides evidence of trademark registrations. The Complainant argues that the Domain Names are very similar to the Complainant’s trademark as the trademark AGFA is contained in the Domain Names.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Complainant asserts that there is no evidence of any use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with bona fide offering of goods or services. The Respondent has not been commonly known by the Domain Names. The Respondent is not making a legitimate noncommercial or fair use of the Domain Names. On the contrary, at the time of filing the Complaint, only <agfachelseapartners.com> resolved to a website, and at it there was very limited content.
The Complainant believes the Respondent knew he incorporated a well-known trademark in the Domain Names. By using at least two of the Domain Names, 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location. The Complainant believes that the Respondent has selected its reputed trademark AGFA to draw the impression that it is affiliated with the Respondent, or endorsed by it.
B. Respondent
The Respondent argues that Agfachelseapartners Limited (Ltd) is the name of his company registered in England and Wales with registration number 12559498. The Respondent explains the company name that the first four letters represent his and his son’s initials. The Respondent also provides a company logo, and a copy of his and his son’s IDs, and asserts that he is not trying to target the Complainant’s trademark.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark AGFA.
The test for confusing similarity involves the comparison between the Complainant’s trademark and the Domain Names. In this case, the Domain Names incorporate the Complainant’s trademark, with the addition of “chelseapartners”.
Due to the Panel not finding bad faith below, the Panel need not decide under the first element.
B. Rights or Legitimate Interests
The Respondent may establish a right or legitimate interest in the Domain Names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent has filed evidence of Agfachelseapartners Limited (Ltd) being registered in the company register since April 16, 2020, the same day as the Domain Names were registered. The Respondent’s evidence on pre-complaint preparations seems to be restricted to registration of the company name and the Domain Names. The content of the active web page is limited. The Panel notes that such registration of domain names and company names normally undergo no prior examination in relation to third party trademark rights.
Even if the Panel notes a slight inconsistency in the Respondent’s explanation behind the choice of his company name, the Panel is not, based on the case file, able to ascertain if the explanation is false. Therefore, the Panel has some hesitation in deciding whether the Respondent is making a legitimate noncommercial or fair use of the Domain Name. Be that as it may, as the Complaint does not meet the third element of the Policy, the Panel need not decide under the second element of the Policy.
C. Registered and Used in Bad Faith
Even if the Complainant is well-known, the Panel is not convinced based on the rather limited evidence before it that the Respondent had the intention to attract Internet users by creating a likelihood of confusion with the Complainant’s mark. The Respondent has offered passport copies with his and his son’s name, a copy of the Respondent’s company registration Agfachelseapartners Limited and a seemingly plausible explanation of why the Respondent registered the Domain Names and the company name. In the supplemental filing, the Respondent elaborates on his intentions to avoid collision with a known brand whether it would be AGFA, or Chelsea Football club. The explanation may be a strained attempt to justify that he has added a famous trademark as the first part of the company name, or it may be true. The Complainant has offered no arguments or documentation as to the Respondent’s explanation despite the opportunity to do so following the Panel Order. The Panel in this administrative proceedings is obliged to decide on the case file and the Policy. The Panel does not have the possibility to examine the parties in an oral hearing. Based on the case file, the Panel does not find sufficient evidence of bad faith. As the case stretches what is considered a regular cybersquatting case the Policy is designed to handle, the parties may consider whether the dispute could be decided by a conventional national court that offers discovery and examination of the parties.
For the reasons set out above, the Panel concludes that the third element of the Policy is not met.
7. Decision
For the foregoing reasons, the Complaint is denied.
Mathias Lilleengen
Sole Panelist
Date: August 27, 2020
