AGFA is a famous brand and trademark, and the company provides goods and services involving photography, medical imaging and medical software globally.
A Chinese individual registered the following .ICU domains, presumably paying less than $2 each:
agfaa.icu
agfab.icu
agfac.icu
agfad.icu
agfae.icu
agfaf.icu
agfag.icu
agfah.icu
agfai.icu
agfaj.icu
agfak.icu
agfam.icu
agfan.icu
agfao.icu
agfap.icu
agfaq.icu
agfar.icu
agfas.icu
agfat.icu
agfau.icu
agfav.icu
agfaw.icu
agfax.icu
agfay.icu
agfaz.icu
This set of 25 .ICU domains was challenged via the UDRP process at the WIPO. They were all found to be infringing on the AGFA trademark, and the sole panelist ordered them to be transferred to the Complainant.
Full details of this decision follow:
Agfa-Gevaert N.V. v. 伍重翔 (Wu zhong xiang)
Case No. D2020-10961. The Parties
The Complainant is Agfa-Gevaert N.V., Belgium, represented by Novagraaf Belgium NV/SA, Belgium.
The Respondent is 伍重翔 (Wu zhong xiang), China.
2. The Domain Names and Registrar
The disputed domain names <agfaa.icu>,<agfab.icu>, <agfac.icu>,<agfad.icu>, <agfae.icu>, <agfaf.icu>, <agfag.icu>, <agfah.icu>, <agfai.icu>, <agfaj.icu>, <agfak.icu>, <agfam.icu>,<agfan.icu>, <agfao.icu>, <agfap.icu>, <agfaq.icu>, <agfar.icu>, <agfas.icu>, <agfat.icu>, <agfau.icu>, <agfav.icu>, <agfaw.icu>, <agfax.icu>, <agfay.icu>, <agfaz.icu> are registered with Eranet International Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2020. On May 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 6, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 May 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2020.
The Center appointed Evan D. Brown as the sole panelist in this matter on June 16, 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.
4. Factual Background
The Complainant provides goods and services involving photography, medical imaging and medical software and is known around the world. It owns many trademarks for the word AGFA, including European Union Registration No. 3353463, registered on January 24, 2005. The Respondent registered the disputed domain names on January 7, 2020. The disputed domain names do not resolve to active web pages.
5. Parties’ Contentions
A. ComplainantThe Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly SimilarThe incorporation of a trademark in its entirety is sufficient to establish that a disputed domain name is identical or confusingly similar to the complainant’s registered mark. See, Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. In this case, the disputed domain names contain the Complainant’s trademark AGFA in its entirety. The addition of a single letter to the mark within each of the disputed domain names, and the Top-Level Domain “.icu” to the disputed domain names do not avoid confusing similarity.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See, Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights because it has shown that it is the owner of the registered mark AGFA as noted above.
Accordingly, the Complainant has shown that the disputed domain names are identical or confusingly similar to a trademark in which the Complainant has rights and has prevailed on this first element of the Policy.
B. Rights or Legitimate Interests
The Complainant will be successful under this element of the Policy if it makes a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain names, and if that prima facie showing remains unrebutted by the Respondent. The Complainant asserts, among other things, that the Respondent is not commonly known by the words comprising the disputed domain names and is not licensed by the Complainant to use the AGFA mark within the disputed domain names. The Complainant also asserts that the Respondent does not use the disputed domain names in connection with a bona fide offering of goods or services (i.e., using the disputed domain names to redirect Internet users to websites that resolve to blank pages that lack content). See, Philip Morris USA Inc. v. Leonard Gabriel Jr, WIPO Case No. D2019-0230. These assertions establish the Complainant’s prima facie case. The Respondent has not responded to the Complaint, and, seeing no other basis in the record to overcome the Complainant’s prima facie showing, the Panel finds that the Complainant has satisfied this second Policy element.
C. Registered and Used in Bad Faith
Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s trademark rights and, nevertheless registered a domain name in which it had no rights or legitimate interest. See Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320. The Complainant is well known and has registered trademarks. The Respondent has registered the disputed domain names imitating the Complainant’s trademark. This is probably not a coincidence. The Panel finds, based on the information in the record, that it is more likely than not that the Respondent knew about the Complainant and its trademarks at the time of registration of the disputed domain names.
Given these circumstances, taking into account all of the above, the Panel does not conceive of any plausible actual or contemplated active use of the disputed domain names by the Respondent that would not be illegitimate. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Complainant has succeeded on this third element of the UDRP.
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 names, <agfaa.icu>,<agfab.icu>, <agfac.icu>,<agfad.icu>, <agfae.icu>, <agfaf.icu>, <agfag.icu>, <agfah.icu>, <agfai.icu>, <agfaj.icu>, <agfak.icu>, <agfam.icu>,<agfan.icu>, <agfao.icu>, <agfap.icu>, <agfaq.icu>, <agfar.icu>, <agfas.icu>, <agfat.icu>, <agfau.icu>, <agfav.icu>, <agfaw.icu>, <agfax.icu>, <agfay.icu>, and <agfaz.icu> be transferred to the Complainant.
Evan D. Brown
Sole Panelist
Date: June 30, 2020
