WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

bioMérieux v. Nish Patel - Ready Asset

Case No. D2014-0899

1. The Parties

The Complainant is bioMérieux, a company established under the laws of France (Société Anonyme à Conseil d’Administration) of Marcy L'Etoile, France, represented by Cabinet Plasseraud, France.

The Respondent is Nish Patel - Ready Asset of Xiamen, China.

2. The Domain Name and Registrar

The disputed domain name <biomerieuxnordic.com> (the “Domain Name”) is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2014, (the “Complaint”). On May 30, 2014, the Center transmitted the Complaint by email to the Registrar with a request for registrar verification in connection with the Domain Name. On June 4, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the registrant’s 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 June 5, 2014. In accordance with the Rules, paragraph 5(a), the due date for filing a response was June 25, 2014. The Respondent did not submit any response. Accordingly, the Center notified the parties of the Respondent’s default on July 4, 2013.

The Center appointed Marylee Jenkins as the sole panelist in this matter on July 4, 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 chemical products, reagents and media for medical and veterinary diagnostic purposes, scientific apparatus and instruments, and medical and veterinary diagnostic apparatus and instruments (individually and collectively the “Complainant’s Mark”). The Complainant has provided evidence of having over 100 trademark registrations for the Complainant’s Mark (i.e. BIOMERIEUX and BIOMERIEUX formative marks) in territories and countries throughout the world including in China, the European Union and the United States of America.

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-nordic.com> and other domain names that combine the Complainant’s Mark with geographically descriptive words. The Complainant’s own domain name <biomerieux-nordic.com> was registered on February 11, 2013 and links to a separate website promoting its goods and services in the Nordic region, specifically, in Denmark, Finland, Norway and Sweden.

With respect to this dispute, the Domain Name <biomerieuxnordic.com> was registered on May 6, 2013 to the Respondent and is set to expire on May 6, 2015. The web page accessible at the Domain Name provides links incorporating the Complainant’s Mark as well as the marks API and VITEK, which are both owned by the Complainant.

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 integrates the trademark BIOMERIEUX in its entirety as a dominant element. The Complainant also argues that the Domain Name differs from its trademark only in the addition of the geographic term “nordic” and the generic top-level domain “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-nordic.com>.

The Complainant 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 because of the Respondent’s registration of the Domain Name only three months after the Complainant’s registration of its domain name <biomerieux-nordic.com>, the Respondent cannot reasonably have ignored the Complainant and its rights in the trademark BIOMERIEUX.

The Complainant also argues that the Respondent’s website is a pay-per-click 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 VITEK. The use of the Domain Name by the Respondent further falsely suggests an association with the Complainant or its goods. The Complainant argues that “the only use of the [D]omain [N]ame by the Respondent is motivated by intention to make a commercial gain by misleading consumers on the source of the services offered on the website “www.biomerieuxnordic.com”, thereby inevitably tarnishing the service marks at issue.”

The Complainant 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, very rare and is very 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 also argues that the Respondent’s history of registering domain names incorporating the trademarks of other major and well-known companies is evidence of the Respondent’s bad faith in registering 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, VITEK, and API, and offers sponsored links to third party websites in the diagnostic field, some of which are for the Complainant’s competitors. The Complainant also submitted evidence showing that some of the links on the Respondent’s website link to the Complainant’s activity and refer to the Complainant. 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 file a response with respect to the proceeding.

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 comprises the Complainant’s Mark (i.e., BIOMERIEUX) in its entirety and in combination with the geographically descriptive term “nordic” as a suffix. The addition of the term “nordic” 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 this Domain Name. In addition, the Complainant’s many domain name registrations establish that it commonly uses its trademark BIOMERIEUX in combination with geographically descriptive terms, including in its own registered domain name <biomerieux-nordic.com>. The Panel’s observation from accessing the website at the Complainant’s domain name <biomerieux-nordic.com> shows that the Complainant is promoting its goods and services to Nordic countries on this site and that this domain name was registered by the Complainant well before the Respondent registered the Domain Name in dispute. 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 her 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 has well and long established rights to the BIOMERIEUX mark at the time of the Respondent’s registration of the Domain Name on May 6, 2013. 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 fashion.

The Complainant contends that it is well known in the diagnostic field of “providing diagnostic solutions (reagents, instruments, software) which determine the source of disease and contamination to improve patient health and ensure consumer safety” and has presented evidence in support of this contention. The Panel finds the Complainant’s contention that it is well-known in the diagnostic field to be founded and that the Complainant has established and that its mark BIOMERIEUX is well-known. 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, VITEK, and API to link to further parked pages with links to websites of the Complainant’s competitors. The evidence presented by the Complainant and the Panel’s observations show that the hierarchy of linked web pages accessible at the Domain Name cannot be interpreted as any type of bona fide offering of goods or services by the Respondent.

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 well 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 well after the first use in commerce by the Complainant of the Complainant’s Mark; (iv) the Respondent’s web site incorporates other trademarks owned by the Complainant; (v) the Domain Name comprises the Complainant’s Mark and the term “nordic” and is virtually identical to the Complainant’s own domain name <biomerieux-nordic.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 in combination with a geographically descriptive term, that direct to sites promoting the Complainant’s goods and services in various geographical regions. 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 alleges and 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.

The Complainant has also asserted and submitted uncontested evidence that the Respondent has a pattern of registering domain names comprising the trademarks of other major and well-known companies. Such evidence further establishes that the Respondent was aware of his actions when registering and using the Domain Name in dispute.

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 paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <biomerieuxnordic.com> be transferred to the Complainant.

Marylee Jenkins
Sole Panelist
Date: July 18, 2014