The Complainant is bioMérieux, France, represented by Plasseraud IP, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Darius Rccg, 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 June 19, 2020. On June 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 19, 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 June 22, 2020 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 June 25, 2020. 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 July 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 23, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 24, 2020. The Center appointed Alistair Payne as the sole panelist in this matter on August 3, 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 is a biotechnology company registered in France in 1988. Its headquarters are located in France. The Complainant is the registered owner of a number of word and/or device mark registrations incorporating the mark BIOMERIEUX, including International word mark number 933 598, registered on June 12, 2007 for BIOMERIEUX which is protected in numerous jurisdictions, including, in particular, the European Union. The Complainant owns a number of domain names and its main company website is at “www.biomerieux.com”. This domain name was registered on May 31, 1996. The disputed domain name was registered on May 12, 2020. At the time of the filing of the Complaint, the disputed domain name resolved to a pay-per-click parking page. 5. Parties’ Contentions A. Complainant The Complainant asserts that it has registered rights in its word and/or device mark for BIOMERIEUX as described above. The Complainant submits that the disputed domain name is identical or confusingly similar to its trade mark. It explains that the disputed domain name The Complainant submits that this is a typical typosquatting case in which the disputed domain name contains sufficiently recognisable aspects of the Complainant’s trade mark, and in which there is a high degree of similarity between the disputed domain name and its trade mark. Moreover, it submits that previous panels have found that a disputed domain name which contains a common or obvious misspelling of a trade mark normally will be found to be confusingly similar where the misspelled trade mark remains the dominant or principal component of the disputed domain name. The Complainant claims that the Respondent has no rights or legitimate interest in the disputed domain name. It argues that it does not believe that the Respondent owns rights in “BIOMERIEUX”. It says that a search on SAEGIS reveals that only the Complainant and companies in its group are registered owners of the BIOMERIEUX trade mark. The Complainant asserts that there is no evidence that the Respondent is using the disputed domain name for a bone fide reason or noncommercial use as the website diverts to a parking page. It refers to the screenshot of “www.biomeriuex.co” which shows that the website redirects to a parking page containing commercial links offering sponsored links to third-party websites. The Complainant submits that the Respondent is probably earning pay-per-click revenue from the advertising links by using the Complainant’s well-known trade mark to attract Internet users to its website and to divert Internet traffic to its web page. It notes that in similar cases panels have found that use of a domain name in connection with a parking page displaying sponsored links is not bona fide use. The Complainant notes its trade mark for BIOMERIEUX is distinctive and well known, and that the Respondent could not have reasonably ignored the reputation of its trade mark. The Complainant further notes that its reputation has been acknowledged by previous panels. The Complainant submits that the Respondent’s sole intention is to make a commercial gain by misleading customers and by inevitably tarnishing its trade mark. Accordingly, the Respondent’s use of the disputed domain name is evidence that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant submits that the Respondent has registered the disputed domain name in bad faith. It notes that BIOMERIEUX is a highly distinctive and a rare trade mark. The Complainant notes that BIOMERIEUX is a made-up word and is not found in the dictionary. The Complainant says that it has already submitted evidence of its ownership of BIOMERIEUX, and it has proved that it is the sole owner of this trade mark. The Complainant also provides a print-out of a Google search which shows results with the proper spelling of the company and the incorrect spelling BIOMERIEUX. In both cases the results provide links confirming the Complainant’s ownership. The Complainant explains that the trade mark BIOMERIEUX has been well known in the medical field for decades. The Complainant is a leader in the field of microbiology. It trades in 160 countries. In 2019 its revenue reached EUR 2.7 billion with 90% of sales outside of France. The Complainant refers to section 3.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and notes the fact that the Respondent has hidden its identity and contact information through a privacy service may be indicative of bad faith. The Complainant submits that the disputed domain name directs Internet users to third-party websites via sponsored links. It notes that the Google results provided show a high degree of similarity between its trade mark and the disputed domain name, and as a result, Internet users could easily make a mistake in the spelling of the Complainant’s trade mark. The Complainant provides evidence that the mail exchanger records, MX records have been set up on the disputed domain name. It explains that this allows the Respondent to send emails using “@biomeriuex.co”, and the Respondent may use the disputed domain name to send fraudulent emails such as messages containing spam, or phishing attempts. The Complainant notes that previous panels have found that use of MX records together with use of a reputed trade mark is considered to be indicative of bad faith use of the disputed domain name. The Complainant argues that this is a “typosquatting” case, the Respondent has chosen a domain name similar to the Complainant’s trade mark. The Complainant relies on a number of previous panel decisions that confirm that typosquatting constitutes bad faith registration and use under the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Complainant has established that it owns the international BIOMERIEUX word mark number 933 598 registered on June 12, 2007 in classes 1, 5, 9 and 10 and that this mark has been protected in the European Union. The Complainant’s BIOMERIEUX mark is wholly contained in the disputed domain name. In fact, the disputed domain name is identical to the Complainant’s trade mark apart from the inversion of the letters “eu”. The inversion of the letters does not prevent a finding of confusing similarity under the first element. In addition, the Panel disregards the TLD “.co” under the confusing similarity test. See section 1.11 of the WIPO Overview 3.0. Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark for the purposes of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant has submitted that the Respondent is not commonly known by the disputed domain name and that based on a SAEGIS search the Respondent does not own any registration for BIOMERIEUX. The Panel notes that that the disputed domain name resolves to a pay-per-click parking page. There is no evidence that the Respondent is making a bona fide use of the disputed domain name. In this case, using the disputed domain name to divert Internet users to a pay-per-click page is neither a bona fide use nor a legitimate or noncommercial fair use. The Panel infers that this is for the Respondent’s own commercial gain and does not represent a bona fide use or a noncommercial fair use. For these reasons the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has failed to rebut this case and also for the reasons set out under the “bad faith” section below, the Panel finds that the Complainant succeeds under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Complainant has demonstrated that it owns registered trade mark rights in the word mark BIOMERIEUX as described above. The disputed domain name was registered on May 12, 2020 more than a decade after the Complainant’s international word mark BIOMERIEUX was registered under number 933598 on June 12, 2007. The Complainant’s trade mark is a distinctive coined term which has been widely registered as a trade mark, is used in 160 countries and represents a business with a very substantial turnover. Considering the degree of distinctiveness and renown attaching to the BIOMERIEUX mark and based on the Complainant’s international reputation, it seems to the Panel more likely than not that that the Respondent was aware of the Complainant’s mark when it registered the disputed domain name. The disputed domain name which appears to be a classic example of a purposeful misspelling of a coined term and a typosquatting registration, which resolves to a pay-per-click parking website page. Under paragraph 4(b)(iv) of the Policy attracting Internet users intentionally for commercial gain to a website or other on-line location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a website, or location or of a product or service on a website is evidence of registration and use in bad faith. In this case the Respondent has used the disputed domain name to divert Internet users to a parking page that appears to have commercial links and in respect of which the Respondent is more likely than not to earn income. This conduct fulfils the requirements of paragraph 4(b)(iv) of the Policy and is evidence of registration and use in bad faith. In addition, the Complainant has provided evidence that the Respondent has set up “MX-records” for the disputed domain name. The Respondent can therefore use the disputed domain name to send fraudulent emails such as messages containing spam or phishing attempts. The fact that the Respondent has set up MX records is further evidence of the potential for the Respondent to use the disputed domain name in bad faith and reinforces the Panel’s view of the Respondent’s bad faith under this element of the Policy. Accordingly, the Panel finds that the Complainant has demonstrated that the disputed domain name was registered and used in bad faith and the Complainant succeeds under 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 Alistair Payne
Sole Panelist
Date: August 14, 2020
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