The Complainant is BioMérieux, France, represented by Cabinet Plasseraud, France.
The Respondent is Oneandone Private Registration, 1&1 Internet Inc. / Name Redacted.1
The disputed domain name <biomerjeux.com> is registered with 1&1 IONOS SE. (the “Registrar”).
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned names and Numbers (ICANN) on August 26, 1999 (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on September 28, 2013 and in effect as of July 31, 2015 (“the Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“the Supplemental Rules”) of the WIPO Arbitration and Mediation Center (“the Center”) in effect as of July 31, 2015.
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2019. On October 18, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 21, 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 October 22, 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 October 23, 2019. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 23, 2019.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Policy, the Rules, and the Supplemental Rules.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in English, and the proceedings commenced on October 25, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 14, 2019. The Respondent did not submit any response. However a third party communication was received by email on October 31, 2019, by the Center. Accordingly, the Center notified the Commencement of Panel Appointment Process on November 15, 2019.
The Center appointed Haig Oghigian as the sole panelist in this matter on November 27, 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.
The administrative Panel finds the following as uncontested facts:
- The Complainant is the owner of the BIOMERIEUX company name (the French company was first registered on October 28, 1988) and various other forms since in multiple jurisdictions, including United States of America and United Kingdom.
- The Complainant is the owner of about 200 trademarks BIOMERIEUX (word and/or device) in most countries of the world, for example:
- European Union trademark number 17912668, registered on October 20, 2018;
- International trademark number 1478156, registered on June 4, 2018;
- French trademark number 4416795, registered on January 3, 2018;
- International trademark number 912430, registered on January 3, 2007;
- International trademark number 933598, registered on June 12, 2007;
- United States trademark number 3906321, registered on January 18, 2011;
- United States trademark number 3787782, registered on May 11, 2010.
- The Complainant, or its subsidiaries, is the owner of many domain names including BIOMERIEUX alone or combined with other elements, such as:
- <biomerieux.com> registered on May 31, 1996;
- <biomerieux.fr> registered June 4, 1996;
- <biomerieux.ch> registered June 7, 2000;
- <biomerieux-usa.com> registered March 31, 2000;
- <biomerieux.net> registered October 20, 2000;
- <biomerieux.org> registered October 20, 2000;
- <biomerieuxusa.com> registered April 4, 2001;
- <biomerieuxindusty.com> registered March 10, 2006;
- <biomerieux.eu> registered March 28, 2006;
- <biomerieux-nordic.com> registered February 11, 2003;
- <biomerieuxconnection.com> registered August 16, 2013;
- <biomerieuxdirect.com> registered June 6, 2016;
- <biomerieuxgroup.com> registered March 31, 2017;
- <biomerieux-jp.net> registered September 14, 2017.
The Complainant has used these trademarks in association with the manufacturing, producing, making, packaging, distributing, selling, buying, importing and exporting all products and devices and all techniques and know-how used in particular for diagnosis, prevention, and therapy purpose especially in the field of health, supply all services about the organization of Biomérieux systems including notably automation of lab, purchase of equipment, assembly and adapted software, offer of trainings for all professional in the field of health in relationship with the main area of industrial and medical biology.
- The Respondent registered the disputed domain name <biomerjeux.com> on October 10, 2019. The disputed domain name does not have any active website.
The Complainant claims the Respondent’s use of the <biomerjeux.com> constitutes a classic case of typosquatting because the disputed domain name is confusingly similar to its own trademarks and ownership rights. It further claims the Respondent has no rights or legitimate interests in the disputed domain name. It argues that the use of the disputed domain name by the Respondent is in bad faith and, therefore, requests the disputed domain name be transferred to the Complainant accordingly.
The Respondent did not reply to the Complainant’s contentions.
The disputed domain name <biomerjeux.com> incorporates Complainant’s BIOMERIEUX trademark almost in its entirety. It differs from the Complainant’s trademark merely by one letter: letter “i” is replaced with letter “j”. The Panel finds that the use of only one different letter in a registered and well-known trademark does not avoid a finding of confusing similarity under the first element (see AB Electrolux v. ID Shield Service, Domain ID Shield Service CO., Limited / Maksim, Zanussi-shp.com, WIPO Case No. D2015-2027 and its progeny), nor does the addition of the generic Top-Level Domain “gTLD” suffix “.com” after the trademark (F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451). Previous UDRP panels have recognized a confusing similarity in similar cases, like bioMérieux v. Privacy.co.com, Inc Privacy ID# 769296, WIPO Case No. D2018-0972, where the disputed domain name in question was <biomerioux.com> (see also Costco Wholesale Membership Inc., Costco Wholesale Corporation v. Victor Venedictov, WIPO Case No. D2017-2420,where <costso.com> was confusingly similar to the trademark COSTCO; W.W. Grainger, Inc. v. Above.com Domain Privacy / Host Master, Transure Enterprise Ltd, WIPO Case No. D2017-2592, where<geainger.com> was confusingly similar to the trademark GRAINGER; Association des Centres Distributeurs E. Leclerc – A.C.D. Lec v. Jiang Li, WIPO Case No. D2017-2186,where <leclerk.com> was confusingly similar to the trademark LECLERC; Alfa Laval Corporate AB v. Contact Privacy Inc. Customer 0148561631 / Erin Dickey, EDickey Ltd, WIPO Case No. D2017-1617,where<alfelaval.com> was confusingly similar to the trademark ALFA LAVAL; Sanofi v. Domains By Proxy, LLC / domain admin, WIPO Case No. D2013-0368,where <sanifi.com> was confusingly similar to the trademark SANOFI.)
Under the principles set forth in section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), this Panel determines that the disputed domain name is confusingly similar to the Complainant’s BIOMERIEUX trademark and <biomerieux.com> domain name.
The Complainant indicates that the disputed domain name does not correspond to the name of the Respondent, nor to any trademark registered in its name. Furthermore, the Respondent is not commonly known by the disputed domain name. In addition, the Complainant has never authorized the Respondent to use the Complainant’s trademark BIOMERIEUX or to apply for any domain name incorporating this trademark. There is no business relationship between the Parties. Finally, no evidence of any fair or noncommercial or bona fide use of the disputed domain name exists.
Noting the nature of the disputed domain name, the uniqueness of Complainant’s name, and the fact that the disputed domain name does not have any active website, it negatively reflects on the Respondent’s conduct. The Respondent has not responded to provide any evidence of legitimate use. In addition, the Panel notes the Respondent’s use of the disputed domain name with a fraudulent purpose. Accordingly, based on the available record and Policy, paragraph 4(a)(ii), the Panel finds that the Complainant has made out a prima facie case, which has not been rebutted by the Respondent, and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Panel finds that the Complainant has established a global brand for its products and finds it difficult to believe that the Respondent was unaware of the brand, and just happened to register a confusingly similar disputed domain name <biomerjeux.com>. Based on:
(i) the nature of the disputed domain name;
(ii) the uniqueness of the Biomerieux name;
(iii) the fact that the Respondent only used the disputed domain name with a fraudulent purpose (to pretend to be the Executive Managing Director of BioMérieux, in order to ask the payment of an invoice);
(iv) the fact that the Respondent registered the disputed domain name using a privacy service and giving as registrant’s organization the name of the Complainant (as shown in the WhoIs submitted with the amended complaint), is a further evidence of the Respondent’s intention to mislead the Internet users, and to suggest that the contested domain name is owned by the Complainant;
(v) the fact that the Respondent has failed in any way to challenge the Complainant’s contentions leads the Panel to the conclusion that the Respondent’s registration and use of the disputed domain name has been done in bad faith as set forth under Policy, paragraphs 4(a)(iii) and 4(b)(iv) (see CBS Broadcasting Inc. v. Edward Enterprises, WIPO Case No. D2000-0242; and Confederation Nationale du Credit Mutuel v. Hardsoft, Inc./ Hilary Kneber, WIPO Case No. D2010-1352, in which the panelist has considered inaction and passive holding as evidence of bad faith use).
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 <biomerjeux.com> be transferred to the Complainant.
Date: December 11, 2019
1 The Panel decided to redact the name of the named Respondent, adopting the criterion of the panel in Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788 ("The Panel has decided that no purpose is to be served by including the named Respondent in this decision, and has therefore redacted its name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrars regarding transfer of the disputed domain names that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrars as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published based on exceptional circumstances").
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