The Complainant is Institut Merieux, France, represented by Cabinet Lavoix, France.
The Respondent is Super Privacy Service LTD c/o Dynadot, United States of America (“United States”). 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 13, 2020. On March 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 15, 2020, 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 23, 2020 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant submitted an amendment to the Complaint on March 24, 2020. 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 proceedings commenced on April 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2020. The Center appointed Antony Gold as the sole panelist in this matter on May 5, 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’s origins are in a medical analysis laboratory founded in Lyon, France by Marcel Mérieux in 1897. The Complainant now employs almost 15,000 people and operates in the field of public health. It has a presence in numerous countries and generates annual sales in excess of EUR 2.5 billion. Whilst the Complainant is known as “Institut Mérieux”, it owns a series of subsidiary companies which use “Merieux” as part of their name, such as Mérieux Développement, Mérieux NutriSciences and Fondation Mérieux. The Complainant has secured trade mark registrations in many countries for both INSTITUT MERIEUX and MERIEUX. These include, by way of example only: - Word only mark for INSTITUT MERIEUX, registered in Norway on July 16, 2012 (registration number 151460), in classes 1, 5 and 10; - Word only mark for MERIEUX, registered in France on November 9, 2015 (registration number 154224302) in classes 1, 5, 9, 10, 35, 36, 37, 41, 42 and 44. The disputed domain name was registered on November 27, 2019. There is not an active website at the site of the disputed domain name. However, Internet users seeking the Respondent’s website are redirected to a third party website. This comprises a single page which refers to “RARBG Alternatives: TOP Best Torrent Sites”, beneath which is commentary which explains that “RARBG is considered one of the best torrent site to download movies, TV shows, games, music and everything else”. 5. Parties’ Contentions A. Complainant The Complainant refers to its portfolio of trade marks for INSTITUT MERIEUX and MERIEUX and says that the disputed domain name is confusingly similar to its trade marks. For the purpose of the comparison, the disputed domain name extension “.org” is disregarded as inconsequential. The disputed domain name reproduces identically, or at least with confusing similarity, the sequence MERIEUX of the Complainant’s trade marks. The additional term “fond” is purely descriptive as it comprises merely a shortened version of “fondation”, which is the French word for “foundation”. The Complainant says that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The disputed domain name is being used to redirect Internet users to a malicious website for accessing torrents to download movies. This activity constitutes an unfair use of the disputed domain name. It does not comprise a bona fide offering of goods and services in that it infringes the intellectual property of the owner of the movies. The Respondent has not been commonly known by the disputed domain name. Moreover, the Respondent is not a licensee of the Complainant, nor is it authorized to use the Complainant’s marks. Nor is the Respondent making a legitimate, noncommercial or fair use of the disputed domain name. To the Respondent’s knowledge, there is no plausible explanation for the Respondent’s registration of the disputed domain name. Lastly, the Complainant says that the disputed domain name was registered and is being used in bad faith. The disputed domain name is being used to redirect Internet users to a malicious website, from which Internet users can download movies which infringe the intellectual property rights of their owners. By registering and using the disputed domain name the Respondent 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 its website or location or of a product or service on the Respondent’s website or location. Moreover, Internet users seeking information about the Complainant are re-routed to a fraudulent website used in relation to torrents for online streaming. This kind of website abuses the trust of Internet users by trying to extract personal information for improper purposes, that is phishing, and potentially infecting their machines with viruses. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Dealing, first, with the Respondent’s failure to file a response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the Panel shall be entitled to draw such inferences from this omission as it considers appropriate. Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint: (i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has provided details of the many registered trade marks it owns for both INSTITUT MERIEUX and MERIEUX. These establish the Complainant’s rights in both marks although, for the purpose of considering the first element under the Policy, it is sufficient to do so solely by reference to the Complainant’s marks for MERIEUX. As a technical requirement of registration, the generic Top Level Domain (that is “.org” in this case) is disregarded when assessing confusing similarity. The disputed domain name comprises the word “fond”, followed by a hyphen, and the Complainant’s MERIEUX trade mark. The hyphen is of no significance for the purposes of the comparison. The inclusion of the word “fond” does not prevent the disputed domain name from being confusingly similar to the Complainant’s mark. As explained at section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”): “ While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” The Complainant’s MERIEUX trade mark is clearly recognizable within the disputed domain name and the Panel accordingly finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides, without limitation examples of circumstances whereby a respondent might demonstrate that it has rights or legitimate interests in a domain name. In summary, these are if a respondent has used or prepared to use the domain name in connection with a bona fide offering of goods and services, if a respondent has been commonly known by the domain name, or if a respondent has made a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark in issue. How these provisions are usually applied in practice is explained at section 2.1 of the WIPO Overview 3.0. This explains that the consensus view of panelists is that “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ʻproving a negativeʼ, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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”. So far as the first circumstance is concerned, torrent files are used as part of the BitTorrent file distribution system. The BitTorrent system is a means by which large files can be transferred online, and is often used to enable copyright content such as films to be distributed in breach of the copyright of the content owners. However, it is not necessary for the Complainant to demonstrate whether the activity at the website to which the disputed domain name redirects is unlawful or not, in order for it to establish a prima facie case that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services under the paragraph 4(c)(i) of the Policy. The lack of any evidence which points to a legitimate connection between the Respondent’s activities and the MERIEUX trade mark suggests strongly that the reason for the Respondent’s use of the disputed domain name is to attract Internet users and derive pay-per-click (“PPC”) income when those Internet users are then redirected to the third party website. The use of the disputed domain name for these purposes is broadly analogous to circumstances where a domain name directly resolves to a website featuring PPC links. In that respect, see section 2.9 of the WIPO Overview 3.0; “Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”. In this respect, it should be noted that section 2.5.1 of the WIPO Overview 3.0, in the specific context of paragraph 4(c)(iii) of the Policy but of more general application, explains that; “Generally speaking, UDRP panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner”. The second circumstance can be dealt with briefly; there is no evidence that the Respondent has been commonly known by the disputed domain name. The third circumstance is also inapplicable; the nature of the disputed domain name carries a risk of implied affiliation, and such use as the Respondent has made of the disputed domain name is commercial in character in that the Respondent is likely to be deriving PPC income from those Internet users who visit the website to which they are taken after having typed the disputed domain name into their browser and clicked on the link to the list of the alternative sites to RARBG which the webpage contains. As explained at section 2.1 of the WIPO Overview 3.0, once a complainant has made out a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent to show that it does have such rights or legitimate interests. The Complainant has made out a prima facie case, and in the absence of any response from the Respondent to the Complaint, the Panel finds that the Respondent has no rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith The fact that the disputed domain name contains the Complainant’s MERIEUX mark in full together with the word “fond’ being the shortened form of “fondation” (this being the French word for “foundation”) points strongly to an awareness by the Respondent of the Complainant and/or its subsidiary Fondation Mérieux as at the time of its registration of the disputed domain name. The most likely explanation is that the Respondent registered the disputed domain name well-aware of the Complainant’s marks and intending, in some way, to take advantage of them. As the panel found in Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, “the registration of a domain name with the knowledge of the Complainant’s trade mark registration amounts to bad faith”. The use of the Complainant’s MERIEUX trade mark as the primary component of the disputed domain name, coupled with the word “fond” is prone to encourage Internet users to visit the website to which it resolves under the mistaken apprehension that it will have some connection with the Complainant. The fact that this is not the case does not negate the fact that the Respondent will intentionally have sought to attract visitors to it because of the similarities between the disputed domain name and the Complainant’s MERIEUX mark. This form of initial interest confusion has been found by other URDP panels to be sufficient to establish bad faith use (see, for example Philip Morris USA Inc. v. Arren Babayani,WIPO Case No. D2017-0724) and a similar view is taken by the Panel. Paragraph 4(b) of the Policy provides, without limitation, four circumstances which evidence a respondent’s bad faith registration and use of a domain name. The circumstance set out at paragraph 4(b)(iv) of the Policy is; “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 web site or location or of a product or service on your web site or location”. In the context of the Respondent’s registration and use of the disputed domain name, the words “on-line location” and “location” are particularly apposite because they accurately capture the fact that the Respondent does not have a live website and Internet users are immediately re-directed to a third party website. With that in mind, the Respondent’s registration and use of the disputed domain name falls within the circumstance set out at paragraph 4(b)(iv) of the Policy and is accordingly 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 Antony Gold
Sole Panelist
Date: May 20, 2020
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