The Complainant is Compagnie Merieux Alliance of Lyon, France, represented by Cabinet Lavoix, France.
The Respondent is Jeremy Tang of North Sydney, Australia. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2016. On March 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 7, 2016, 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 March 10, 2016 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 amendment to the Complaint on March 15, 2016.
The Center verified that the Complaint together with the amendment to 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 proceeding commenced on March 18, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 7, 2016. On March 15 and April 8, 2016, the Center received two informal emails from the Respondent. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on April 8, 2016.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on April 25, 2016. 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, based in France, has a long history in the biomedical field. The name Mérieux traces back over 100 years to Marcel Mérieux, who was the grandfather of Alain Mérieux, the current President of the Institut Mérieux.
Entities related to the Complainant include Institut Mérieux, bioMérieux, Foundation Mérieux, Mérieux Développement, Mérieux Nutrisciences, lMAccess and Mérieux Alliance. Mérieux entities have been associated particularly with human and veterinary vaccines, the production of vaccines by in vitro techniques, biological diagnostics and tests, immunotherapy, health and nutrition.
The scale of Institut Mérieux is that it employs nearly 10,000 people in numerous countries and generates sales of over EUR 1.4 billion annually.
The Complainant holds registered trademarks for MERIEUX ALLIANCE in France, the European Union, India, China and Japan. The following trademarks are representative for the purposes of this proceeding:
MERIEUX ALLIANCE, National Institute of Industrial Property, France, filed on December 22, 2005, registration number 3399345, classes 5, 42;
MERIEUX ALLIANCE, Community Trade Mark, Office for Harmonization in the Internal Market, filed on May 25, 2007, registration number 5141684, classes 5, 42.
The disputed domain name was registered to the Complainant on August 30, 2012, and lapsed on October 24, 2015, after which it was acquired by the Respondent.
Nothing of significance is known about the Respondent except for the information provided for the purposes of registration of the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant has produced copies of registration documents in respect of the MERIEUX ALLIANCE trademarks listed in section 4 above and contends that the trademark is not descriptive of the goods or services to which it applies.
The Complainant contends that the disputed domain name is identical or confusingly similar to the trademark MERIEUX ALLIANCE in which it has rights.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a licensee of the Complainant and is not authorised to use the Complainant’s trademarks. In the terms of paragraph 4(c) of the Policy the Complainant asserts that there is no evidence the Respondent has used or intended to use the disputed domain name in connection with a bona fide offering of goods or services; or has been commonly known by the disputed domain name; or has made a legitimate noncommercial or fair use of it.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The trademarks cited by the Complainant have been registered since at least as early as 2005. The Complainant says that by registering the disputed domain name soon after the Complainant’s registration of it expired, the Respondent could not have ignored the existence of the Complainant’s prior rights.
The Complainant contends that at the date of the Complaint, the corresponding website to which the disputed domain name resolved was in use for the sexually explicit purpose of providing advice on the selection of escort girls, thereby tarnishing the image of the Complainant. The Complainant says this shows that the disputed domain name was registered by the Respondent with intent to attract Internet users for commercial gain by a likelihood of confusion with the Complainant’s trademark.
The Complainant has cited a number of previous decisions under the Policy that it considers should support its position, including two cases decided in its favour.
The Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply formally to the Complainant’s contentions.
The Panel has read and taken into consideration two informal communications from the Respondent, effectively denying the Complaint.
The substance of the Respondent’s email to the Center dated March 15, 2016, was: “Just catching up with these emails. Can you help explain to me what exactly the issue is?”
The Respondent’s email dated April 8, 2016, addressed to the Center, the Complainant and the Registrar, said: “I don’t understand what the issue is. I legitimately bought a domain that had expired on a well known expired domain auction site. I am not responsible for the expiring of the domain concerned. I have no intent on using the domain for purposes that would conflict with any trademarks or even copyright the original owners may have. Nor am I attempting to mislead people that I am the organisation concerned.” 6. Discussion and Findings A. Procedural Matters
The Complaint initially cited a privacy service as the Respondent. After the identification details provided by the registrant were revealed by the Registrar, the Complainant submitted an Amendment to the Complaint, stating “... please note that we would like to direct our complaint against M. Jeremy Tang, whose details are above-mentioned. M. Jeremy Tang is the new Respondent in our complaint”. The Panel understands that Jeremy Tang is to be the sole Respondent and has amended the intituling accordingly.
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute. B. Identical or Confusingly Similar
The Panel has perused the trademark registration evidence produced by the Complainant and is satisfied that the Complainant has the requisite rights in the trademark MERIEUX ALLIANCE for the purposes of paragraph 4(a)(i) of the Policy.
The disputed domain name is . The generic Top Level Domain (gTLD) designation “.com” may generally be disregarded in the determination of confusing similarity. What remains in this case is “merieux-alliance”, which, since spaces cannot be incorporated into a “.com” domain name, is found to be effectively identical to the Complainant’s trademark. The Panel finds for the Complainant under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The Complainant has asserted that the Respondent has no rights or legitimate interests in respect of the disputed domain name, is not a licensee of the Complainant and is not authorised to use the Complainant's trademarks.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(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 not responded formally and has not asserted rights or legitimate interests in the disputed domain name with reference to paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise.
In an informal communication, the Respondent pleaded that the disputed domain name had been bought legitimately after its registration had been allowed to expire, and that it would not be used in conflict with any trademark.
There can be no obligation upon the holder of a trademark, whether registered or otherwise, to register and maintain every conceivable domain name manifestation of the trademark, or to register any domain name at all. The availability of the disputed domain name for purchase or registration had no bearing on the obligations of a potential registrant under paragraph 2 of the Policy, which governs the Respondent’s representations at the time of registration, and which reads:
“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that
(a) the statements that you made in your Registration Agreement are complete and accurate;
(b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party;
(c) you are not registering the domain name for an unlawful purpose; and
(d) you will not knowingly use the domain name in violation of any applicable laws or regulations.
It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights”.
Accordingly it was the Respondent’s responsibility to take reasonable steps to ensure, before registration of the disputed domain name, that the registration did not infringe upon or otherwise violate the Complainant’s rights. The Panel can find no grounds upon which the Respondent may have acquired rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel. In the present case, however, paragraph 4(b)(iv) of the Policy is pertinent.
The Complainant has produced a screen capture of the website to which the disputed domain name resolved on February 23, 2016. One page displays “Merieux Alliance” in large type with windows marked “Search” and “Subscribe”. Another page has the heading “3 things a professional escort would expect you to know”. The text purports to give general advice to persons wishing to hire escorts in certain Australian cities or regions, with liberal citations of links to other websites through which it appears that hiring of escorts may be facilitated. The Complainant has produced screen captures of some of these other websites. All exhibit a similar pattern, exemplified by the entry for Melbourne. This opens with “124 found near melbourne - Best match for Escorts Agencies in melbourne”. There follows a sequence of escort agencies or providers, each having a few lines to state its name, telephone number, location, the beginning of a description, and the beginning of a client review.
Thus, in overview, the disputed domain name comprising the Complainant’s trademark resolves to the Respondent’s website which in turn offers to direct visitors to escort agencies and escorts. It may reasonably be concluded, on the balance of probabilities, that the Respondent’s website at the disputed domain name has not been established for altruistic purposes but is designed with intent to derive revenue for the Respondent or others, directly or indirectly, from the referral of at least some of the website’s visitors to the businesses of escort agencies or escorts. On the evidence, the Respondent’s operation with the disputed domain name is found to be commercial.
The escort business may well be legitimate in the places in question. The referral of potential clients from one website to others for reward, in and of itself, is widely practised on the Internet and in many circumstances may be entirely legitimate. It cannot be legitimate, however, to use another’s trademark without authorisation as the substance of a domain name in order to attract Internet visitors for purposes unrelated to the business associated with the trademark. It may reasonably be concluded that at least some Internet users looking for or recognising the Complainant’s trademark in the disputed domain name could be misled by confusion, at least initially, into visiting the associated website in the expectation of its being owned or endorsed by the Complainant, and that their experience on arrival at the website could be detrimental to the Complainant’s image and goodwill. On the evidence and on the balance of probabilities the Panel finds under paragraph 4(b)(iv) of the Policy that the Respondent has used the disputed domain name in bad faith with intent to attract Internet visitors by confusion with the Complainant’s trademark for commercial gain.
On the totality of the evidence the Panel finds it more probable than not that the disputed domain name was registered by the Respondent for the bad faith purpose for which it has been used. Registration and use of the disputed domain name in bad faith are found in the terms of paragraph 4(a)(iii) of the Policy. 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 be transferred to the Complainant.
Dr. Clive N.A. Trotman
Sole Panelist
Date: May 4, 2016
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