WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

bioMérieux v. Privacy Protect, LLC (PrivacyProtect.org) / Site Matrix LLC

Case No. D2019-3086

1. The Parties

The Complainant is bioMérieux, France, represented by Plasseraud IP, France.

The Respondent is Privacy Protect, LLC (PrivacyProtect.org), United States of America (“United States”) / Site Matrix LLC, Puerto Rico.

2. The Domain Name and Registrar

The disputed domain name <biomelieux.com> (the “ Domain Name”) is registered with Sav.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2019. On December 13, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 26, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Center received an informal email communication from the Respondent on December 26, 2019. On December 27, 2019, the Center invited the Parties to explore settlement negotiations. The Complainant filed an amended Complaint on December 27, 2019. On January 7, 2020, the Complainant indicated to the Center that it did not want to suspend the proceeding and wished to continue the proceeding.

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 13, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 2, 2020. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties on February 3, 2020, that it would proceed to panel appointment.

The Center appointed Ian Lowe as the sole panelist in this matter on February 14, 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 French company established in 1963 with its headquarters in Marcy L’Etoile, France. For over 50 years, it has been a leading international enterprise in microbiology, providing diagnostic solutions (reagents, instruments and software) that determine the source of disease and contamination to improve patient health and ensure consumer safety. It operates in more than 160 countries through 43 subsidiaries around the world. Its revenues were EUR 2.4 billion in 2018, with over 90% of its sales outside France.

The Complainant is the proprietor of very many registered trademarks around the world comprising the BIOMERIEUX mark, including International trademark number 933598 BIOMERIEUX registered on June 12, 2007 designating many territories including the European Union, China and the Russian Federation, and United States trademark number 3906321 BIOMERIEUX registered on January 18, 2011 (the “BIOMERIEUX Mark”) .

The Domain Name was registered on October 27, 2019. It resolves to a parking page with a list of “in vitro diagnostics” links to other web pages, each comprising several links to third party websites of a range of entities concerned with diagnostics, including competitors of the Complainant. The Domain Name has been offered for sale on the SEDO marketplace for USD 1,275. MX records have been set up using the Domain Name enabling email messages to be sent using the Domain Name.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its BIOMERIEUX Mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions. In an email to the Center dated December 26, 2019, it stated:

“Our client doesn’t want this name. If the Complainant would like they name, they can have it. There is no reason to complain.”

6. Discussion and Findings

For this Complaint to succeed in relation to the Domain Name, the Complainant must prove 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 Respondent 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.

A. Identical or Confusingly Similar

The Complainant has uncontested rights in the BIOMERIEUX Mark, both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through its use of the BIOMERIEUX Mark over very many years. Ignoring the generic Top-Level Domain (“gTLD”) “.com”, the Domain Name comprises a slightly misspelt version of the BIOMERIEUX Mark – with the letter “l” substituted for the letter “r”. In the view of the Panel, this difference does not detract from the confusing similarity between the Domain Name and the BIOMERIEUX Mark. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Name. The Respondent has used the Domain Name not in connection with a bona fide offering of goods or services, but, directly or indirectly, for webpages featuring pay-per-click links to third party websites offering diagnostic services similar to or connected with those provided by the Complainant. There is no suggestion that the Respondent has ever been known by the Domain Name. The nature of the Domain Name suggests that it was registered for the purpose of what is commonly known as typosquatting. The Respondent has chosen not to respond formally to the Complaint or to take any steps to counter the prima facie case established by the Complainant. On the contrary, the Respondent has merely stated that its client has no interest in the Domain Name. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

In light of the use to which the Domain Name has been put, and since the Domain Name comprises what the Panel considers clearly to be a misspelt version of the BIOMERIEUX Mark, the Panel is in no doubt that the Respondent had the Complainant and its rights in the BIOMERIEUX Mark in mind when it registered the Domain Name. The Respondent has used the Domain Name for pay-per-click links to third party websites. In the Panel’s view, the legitimate inference is that the Respondent undertook such activity with a view to commercial gain, intending to attract Internet users mistyping “biomerieux” to the webpages to which the Domain Name resolves, by creating a likelihood of confusion with the BIOMERIEUX Mark and as to the affiliation or endorsement of that webpage. Accordingly, the Panel considers that this amounts to paradigm bad faith registration and use for the purposes 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 Domain Name <biomelieux.com> be transferred to the Complainant.

Ian Lowe
Sole Panelist
Date: February 28, 2020