The Complainant is bioMérieux of Marcy L’Etoile, France, represented by Cabinet Plasseraud, France.
The Respondent is WhoisGuard, Inc. of Panama / angel heduro of Budapest, Hungary. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 21, 2019. On January 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 22, 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 January 23, 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 January 24, 2019.
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 January 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 14, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2019.
The Center appointed Christos A. Theodoulou as the sole panelist in this matter on February 26, 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 a biotechnology company registered in France and having its headquarters in France. It is present in more than 150 countries by means of its 43 subsidiaries around the world, according to the uncontested allegations of the Complainant. In 2017, its revenues reached EUR 2.3 billion. It owns registered company names “Biomerieux” in many countries of the world according to the uncontested allegations of the Complainant. The French Company of the Complainant is registered since 1988.
Further, it is the owner of many trademarks BIOMERIUX (word and/or device) all over the world among which:
- European Union Trademark No. 17912668, registered on October 20, 2018 in classes 1, 5, 9, 10, 35, 37, 41, 42 and 44;
- French Trademark Nos. 4416795 and 4416801, both registered on January 3, 2018 in classes 1, 5, 9, 10, 35, 37, 41, 42 and 44;
- International Trademark No. 912430, registered on January 3, 2007 in classes 1, 5, 9 and 10, covering European Union, Australia, etc.;
- International Trademark No. 933598, registered on June 12, 2007 in classes 1, 5, 9 and 10, covering many countries.
Further, the Complainant or its subsidiaries, according to the uncontested allegations of the Complainant is also the owner of many domain names including “biomerieux” such as registered on May 31, 1996, , registered on June 4, 1996, , registered on June 6, 2000. The Complainant conducts business on the Internet on which its trademarks BIOMERIEUX has a strong presence.
The disputed domain name was registered on December 10, 2018, long after the trademark and the domain name registrations of the Complainant. The disputed domain name resolves to a webpage showing the warning “Deceptive site ahead”, and directs to an inactive page when one proceeds to visit the website. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to trademarks or service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name and that 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
Before engaging in the threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue relating to the default of the Respondent. The implications of a default in this case are telling since the Complainant has the burden of proof, according to paragraph 4(a) of the Policy (“In the administrative proceeding, the complainant must prove that each of these three elements are present”). As such, the Panel cannot merely grant the Complainant’s request automatically due to the default, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy. See FNAC v. Gauthier Raymond,WIPO Case No. D2004-0881; Sonofon A/S v. Vladimir Aleksic,WIPO Case No. D2007-0668; Gaudi Trade SpA v. Transure Enterprise Ltd,WIPO Case No. D2009-1028.
The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant has presented evidence to demonstrate that it owns registered trademark rights in BIOMERIEUX.
The mere fact that the Respondent has added a new generic Top Level Domain suffix “.icu” does not to this Panel affect the essence of the matter: the disputed domain name is identical or confusingly similar to the trademark of the Complainant and, in the circumstances of this case, is by itself sufficient to establish the criterion of identity or confusing similarity for purposes of the Policy, as many previous UDRP panels have found. See e.g., Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Koninklijke Philips Electronics N.V. v. K. Harjani Electronics Ltd.,WIPO Case No. D2002-1021; DFDS A/S v. NOLDC INC,WIPO Case No. D2006-1070; American Automobile Association, Inc. v. Bladimir Boyiko and Andrew Michailov,WIPO Case No. D2006-0252.
In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain name is identical or confusingly similar to the Complainant’s trademark BIOMERIEUX. B. Rights or Legitimate Interests
The Respondent is “WhoisGuard, Inc. / angel heduro”. However, it does not seem that anyone else but the Complainant and its subsidiaries own rights on the trademark BIOMERIEUX, according to the uncontested allegations of the Complainant.
Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances which, if found by a panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant’s right to or legitimate interest in a domain name. These examples are discussed in turn below, with regard to the specific facts of this case:
(i) Use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute:
The Respondent is not making a bona fide offering of goods.
(ii) An indication that the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark rights:
In this case, there is no such indication from the present record.
(iii) Legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks at issue:
Again, in this case there is no such indication from the record.
Further, the disputed domain name does not have an active website and redirects to a default page. Moreover, the Respondent does not seem to have any trademark registrations including the term “biomerieux”. Additionally, it is to be noted that the Respondent did not present evidence of any license by the Complainant, with whom there seems to exist no relationship whatsoever.
As a conclusion on this point, the Panel finds that the Complainant has established an uncontested, prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraphs 4(b)(i) to 4(b)(iv) of the Policy mention circumstances in order to demonstrate bad faith registration and use of a disputed domain name.
According to the uncontested allegations of the Complainant, the Respondent registered the disputed domain name in bad faith, in order to capitalize on the goodwill of the trademark of the Complainant, and to attract commercial gain. The Respondent seems to want to create an impression of association with the Complainant without permission from the latter (paragraph 4(b)(iv) of the Policy). This is further evidenced by the warning of “Deceptive site ahead” on the website.
Furthermore, the Respondent knew or should have known of the existence of the mark because of, inter alia, its extensive promotion worldwide.
Finally, the default of the Respondent in the present circumstances seems to “reinforce the inference of bad faith registration and bad faith use” (The Hong Kong and Shanghai Banking Corporation Limited v. Bill Lynn,WIPO Case No. D2001-0915).
As a consequence of the above, the Panel finds that the Respondent registered and is using 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 be transferred to the Complainant.
Christos A. Theodoulou
Sole Panelist
Date: March 6, 2019
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