WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
bioMérieux v. Domain Administrator - Dvlpmnt Marketing, Inc.
Case No. D2014-1795
1. The Parties
The Complainant is bioMérieux, of Marcy L'Etoile, France, represented by Cabinet Plasseraud, France.
The Respondent is Domain Administrator - Dvlpmnt Marketing, Inc., of Charlestown, Nevis, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") <biomeriux.com> is registered with DNC Holdings, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 15, 2014. On October 15, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 22, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 11, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 12, 2014.
The Center appointed Daniel Kraus as the sole panelist in this matter on November 17, 2014. 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 bases the Complaint on company name registrations and trademark registrations in numerous jurisdictions throughout the world for BIOMERIEUX for use in connection with products in classes 1, 5, 9 and 10. Several of these trademarks have already been registered in the '80s and '90s. These include word as well as combined trademarks.
The Complainant has presented evidence that the Complainant's mark is well-known and has been recognized as such in other UDRP decisions. The Complainant, along with its subsidiaries also owns multiple domain name registrations for domain names incorporating the Complainant's mark, including <biomerieux.com>, <biomerieux.fr>, <biomerieux-usa.com>, <biomerieux.net>, etc. The Complainant's own domain name <biomerieux.com> was registered on May 31, 2006 and links to its principal website.
With respect to this dispute, the Domain Name <biomeriux.com> was registered on October 1, 2005, but was acquired by the Respondent in August 2013. The web page accessible at the Domain Name provides pay-per-click ("PPC") links incorporating the Complainant's mark as well as the trademark API, owned by the Complainant, and refers to microbiology testing and other medical products and services.
5. Parties' Contentions
A. Complainant
The Complainant asserts that the Domain Name is identical or confusingly similar to the Complainant's mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith by the Respondent to create a likelihood of confusion with the Complainant's mark and with the Complainant as to the source, sponsorship, affiliation or endorsement of the Respondent's website. Particularly, the Complainant alleges that the Respondent is using the Domain Name intentionally to attract for commercial gain Internet users to the Respondent's website.
The Complainant argues that the Domain Name is confusingly similar to the Complainant's BIOMERIEUX trademarks because the Domain Name merely left out one letter out of BIOMERIEUX (the "e") and is a typical case of typosquatting. The Complainant also argues that the Domain Name differs from its trademark only in the addition of the generic top-level domain ("gTLD") "com". Citing prior UDRP decisions, the Complainant argues that these differences are not sufficient to distinguish the Domain Name from the Complainant's mark. The Complainant argues further that the risk of confusion is strengthened because of the very close similarity of the Domain Name to the Complainant's domain name <biomerieux.com>.
The Complainant further argues that the Respondent has no rights or legitimate interests in the Domain Name because the Domain Name does not correspond to the name of the Respondent; the Respondent has never been known under the Domain Name and has never asked for or been given permission by the Complainant to register or use any domain name incorporating the Complainant's mark BIOMERIEUX; and the Respondent has no relationship with the Complainant. Nor is there evidence of any fair, noncommercial, or bona fide use of the Domain Name by the Respondent. The Complainant argues that the Respondent cannot reasonably have ignored the Complainant and its rights in the trademark BIOMERIEUX.
The Complainant also contends that the Respondent's website is a PPC website seeking to take unfair advantage of the value of the Complainant's mark because it displays links related to the activity of the Complainant and to the products that the Complainant offers under its marks BIOMERIEUX and API. The use of the Domain Name by the Respondent further falsely suggests an association with the Complainant or its goods. The use of the Domain Name by the Respondent is hence motivated by its intention to make a commercial gain by misleading consumers on the source of the services offered on the website "www.biomeriux.com".
The Complainant also argues that the Domain Name was registered and is being used in bad faith. The Complainant attests that the mark BIOMERIEUX is inherently highly distinctive, rare, and is well-known in the medical field. In view of this, the Complainant argues that the registration of the Domain Name could not have been a coincidence and that the Respondent was well aware of the existence of the Complainant and its rights in the mark BIOMERIEUX at the time of the registration of the Domain Name.
The Complainant argues that the Respondent is using the Domain Name in bad faith. The Complainant submitted evidence showing that the Respondent's website accessible at the Domain Name uses the Complainant's marks BIOMERIEUX and API, and offers sponsored links to third party websites in the diagnostic, biotech, and medical field, some of which are for the Complainant's competitors. The Complainant argues that this would cause Internet users accessing the website at the Domain Name to be confused and believe that the website is held and controlled by the Complainant or somehow affiliated or related to it. In view of the above, the Complainant argues that it is an inevitable conclusion that the Respondent registered the Domain Name solely to attract Internet users to the Respondent's website for commercial gain by creating a likelihood of confusion with the Complainant's mark. The Complainant also argues that the Respondent is infringing upon the Complainant's prior exclusive rights in its mark, company name, and domain names, to the detriment of the Complainant and consumers.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the domain name holder is to submit to a mandatory administrative proceeding in the event that a third party (complainant) asserts to an ICANN-approved dispute resolution service provider that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name holder has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under the Rules, paragraph 14(b), the Panel shall draw such inferences from the Respondent's default as it considers appropriate. Nevertheless, the Panel may rule in the Complainant's favor only after the Complainant has proven that the above-listed elements are present.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, the Complainant is required to establish that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights. The Panel finds that the Complainant has provided sufficient evidence to establish that it is the owner of and has rights in and to the Complainant's mark.
A review of the second-level domain of the Domain Name shows that it is almost identical to the Complainant's mark (i.e., BIOMERIEUX). The mere omission of the letter "e" to the Complainant's mark BIOMERIEUX does not distinguish the Domain Name from the Complainant's mark. Rather, based on the Complainant's many trademark registrations and long-term use of the Complainant's mark, Internet users will clearly associate the Complainant with the Domain Name. In addition, the Complainant's many domain name registrations establish that it commonly uses its trademark BIOMERIEUX in combination with different gTLDs. Based on these findings, the Panel determines that the Domain Name is confusingly similar to the Complainant's mark and that paragraph 4(a)(i) has been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out circumstances, in particular, but without limitation, which, if found by the Panel to be proven based on his evaluation of all of the evidence presented, can demonstrate the holder's rights to or legitimate interests in the Domain Name. These circumstances include:
(i) before any notice to the holder of the dispute, the holder's 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) the holder (as an individual, business, or other organization) has been commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; or
(iii) the domain name holder is 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 Complainant has shown that it had well and long established rights to the BIOMERIEUX mark at the time of the Respondent's registration of the Domain Name, be it at the time of registration or at the time of transfer, which according to previous UDRP decisions, is to be considered as time of registration. No evidence has been presented that, before any notice to the Respondent of this dispute, the Respondent had been using or was making demonstrable preparations to use the Domain Name in connection with any type of bona fide offering of goods or services. In addition, no evidence has been presented that the Respondent has ever been known under the Domain Name or has ever asked for or been given permission by the Complainant to register or use any domain name incorporating the Complainant's mark BIOMERIEUX in any way.
The Panel finds the Complainant's contention that its mark BIOMERIEUX is well-known – in particular in the diagnostic filed – to be founded and well-documented. The Complainant has presented evidence that the Respondent is using the Domain Name to link to a parked page that uses the Complainant's trademarks BIOMERIEUX and API to link to further parked pages with links to websites of the Complainant's competitors.
The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name and that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that evidence of registration and use in bad faith by the domain name holder includes, but is not limited to:
(i) circumstances indicating that the holder has registered or has 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 the holder's documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has 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 the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder'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 website or location or of a product or service on the holder's website or location.
Based upon the submitted evidence, the Panel finds that the Respondent had knowledge of the Complainant's mark and its rights therein at the time the Respondent registered the Domain Name. This finding is supported by the evidence showing that: (i) the Complainant's mark has a strong reputation and is widely known; (ii) the Complainant owns numerous trademark registrations used in connection with a variety of goods and services throughout the world; (iii) the Domain Name was registered and transferred well after the first use in commerce by the Complainant of the Complainant's mark; (iv) the Respondent's website incorporates other trademarks owned by the Complainant; (v) the Domain Name is virtually identical to the Complainant's own domain name <biomerieux.com>, which was registered well prior to the Respondent registering the Domain Name in dispute; and (vi) the Complainant owns several other domain names that include the mark BIOMERIEUX, that direct to sites promoting the Complainant's goods and services.
Along with the above finding that the Respondent has no rights or legitimate interests in the Domain Name, the Panel finds that the Respondent registered the Domain Name in bad faith.
The Complainant has further asserted that the Respondent acquired the Domain Name in bad faith primarily for the purpose of diverting Internet users looking for the Complainant to the Respondent's site for its own commercial benefit. The Complainant has submitted uncontested evidence that the Respondent's web site at the Domain Name makes use of the Complainant's mark via a hierarchy of linking web pages that incorporate the Complainant's mark so as to further delude Internet users into mistakenly believing that the Domain Name and the linked web pages are somehow sponsored by or related to the Complainant.
Based upon the above, the Panel concludes that the Respondent registered and is using the Domain Name to intentionally attempt to attract for apparent commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's site or of a product or service on the Respondent's site.
The Panel therefore finds the Respondent's actions constitute bad faith domain name registration and use and that paragraph 4(a)(iii) of the Policy has been satisfied.
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, <biomeriux.com> be transferred to the Complainant.
Daniel Kraus
Sole Panelist
Date: December 1, 2014
