The Complainant is bioMérieux of Marcy-l’Étoile, France, represented by Cabinet Plasseraud, France.
The Respondent is P, Inc Privacy ID# 769296 of Cheyenne, Wyoming, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Sea Wasp, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2018. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 4, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 1, 2018.
The Center appointed Marilena Comanescu as the sole panelist in this matter on June 11, 2018. 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 biotechnology company incorporated in France since 1988, currently having 43 subsidiaries in more than 150 countries worldwide. The Complainant claims it is a global leader in microbiology providing diagnostic solutions which determine the source of disease and contamination to improve patient health and ensure consumer safety.
The Complainant is the owner of about 200 trademarks for or including BIOMERIEUX or BIOMÉRIEUX such as the following:
(1) French Trademark Registration no. 3198902 for BIOMÉRIEUX filed on December 11, 2002, covering goods in classes 1, 5, 9 and 10; and
(2) International Trademark Registration no. 933598 for BIOMERIEUX registered on June 12, 2007 in many countries worldwide, covering goods in classes 1, 5, 9 and 10.
At the time the disputed domain name was registered, the Complainant held, inter alia, a United States of America trademark registration for BIOMÉRIEUX, registration no. 1357453 covering goods in classes 1, 5, 9, 10 filed on January 25, 1983, registered on September 3, 1985, and canceled on June 16, 2006.
The Complainant owns an extensive number of domain name registrations incorporating its trademark, among others the domain names registered on May 31, 1996, registered on October 20, 2000, registered on June 4, 1996, and registered on March 31, 2000.
Previous UDRP panels have found that the Complainant’s mark is distinctive and well-known in its field of activity. See bioMérieux v. Nish Patel - Ready Asset,WIPO Case No. D2014-0899; bioMérieux v. Domain Administrator - Dvlpmnt Marketing, Inc.,WIPO Case No. D2014-1795; or bioMérieux v. Registration Private, Domains By Proxy, LLC / John Bunn,WIPO Case No. D2016-1353.
The disputed domain name was registered on December 6, 2005. At the time of filing the Complaint, the Respondent was using the disputed domain name to resolve to a parking page displaying a number of sponsored links, related to, inter alia, activities directly connected with the Complainant’s area of business and also links about the Complainant itself. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its trademark, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances. A. Identical or Confusingly Similar
The Complainant holds rights in the BIOMERIEUX and BIOMÉRIEUX trademarks.
The disputed domain name incorporates the Complainant’s trademark BIOMERIEUX in its entirety, with a minor alteration, the second letter “e” being replaced with the letter “o”. However, such alteration does not eliminate the confusing similarity and the dominant and distinctive part of the disputed domain name remains the Complainant’s trademark.
Numerous UDRP panels have considered that a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered to be confusingly similar to the relevant trademark for purposes of the first element. See section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g., “.com”, “.info”, “.net”, “.org”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name.
Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark BIOMERIEUX, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Complainant asserts that the Respondent does not hold any trademark rights in the term “biomerieux”, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.
Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of the WIPO Overview 3.0.
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name.
The Respondent is using the disputed domain name in connection with commercial activities for pay-per-click (“PPC”) pages. Section 2.9 of the WIPO Overview 3.0 clarifies that UDRP panels have found that the use of a domain name to host a page comprising PPC links would be permissible where the domain name consists of dictionary words and does not trade off the complainant’s trademark.
Applying UDRP paragraph 4(c), panels have found that the use of a disputed domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links for example capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.
Here, the Complainant’s trademark is well known in its field of activity, the Respondent did not provide any explanation for its use of the disputed domain name and the Panel cannot find anything in its favor, therefore the Panel concludes that the Respondent has registered and used the disputed domain name trying to capitalize on the Complainant’s goodwill in the mark in order to mislead Internet users.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Complainant holds trademark rights since at least 1985. The disputed domain name was created in 2005 and incorporates the Complainant’s mark with an obvious common misspelling.
According to the records in the file, the Respondent has used the disputed domain name in relation to a website listing sponsored links in relation to, inter alia, the Complainant’s field of activity and trademark BIOMERIEUX.
In the present case, the above circumstances are cumulated with the fact that the Respondent has registered the disputed domain name incorporating the Complainant’s distinctive mark which is registered and used worldwide for at least twenty years, the Respondent appears to have registered the disputed domain name under a proxy service and refused to participate in the present proceeding in order to put forward relevant arguments in its support. Accordingly, the Panel concludes that the provisions of paragraph 4(b)(iv) of the Policy which provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] 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” applies in the present case and is evidence of registration and use in bad faith.
Internet users searching for the Complainant would acces the website corresponding to the disputed domain name believing it belongs or is somehow associated with or endorsed by the Complainant.
Further, as mentioned, the Respondent has apparently registered the disputed domain name under a proxy service. Although the use of privacy and proxy services can be legitimate, the circumstances in which such services are used, including whether the Respondent is operating a commercial and trademark-abusive website, can impact a panel’s assessment of bad faith. Accordingly, the Panel finds that the use of a privacy service in the present case is indicator of bad faith. See section 3.6 of the WIPO Overview 3.0.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 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.
Marilena Comanescu
Sole Panelist
Date: June 21, 2018
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