WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

bioMérieux v. Registration Private, Domains By Proxy, LLC / John Bunn

Case No. D2016-1353

1. The Parties

The Complainant is bioMérieux of Marcy L’Etoile, France, represented by Cabinet Plasseraud, France.

The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / John Bunn of Mays Landing, New Jersey, United States of America.

2. The Domain Name and Registrar

The disputed domain name <uk-biomerieux.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2016. On July 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 5, 2016, 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 July 6, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on July 7, 2016.

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 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 1, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2016.

The Center appointed Isabel Davies as the sole panelist in this matter on August 9, 2016. 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, who operates in the field of microbiology and diagnostic solutions, has companies whose names include the term “Biomerieux”. The Complainant’s first registered companies in the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) in 1972 and in France in 1988.

The Complainant has innumerable registered trademarks all over the world, which are or include the term “Biomerieux”. For instance, International trademark no. 933 598 BIOMERIEUX, registered on June 12, 2007, in classes 1, 5, 9 and 10.

The Complainant is the owner of many domain names including the mark BIOMERIEUX the earliest of which has been registered since 1996.

The Disputed Domain Name was registered on November 29, 2015. It does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The Complainant states that it is the owner of rights in the mark BIOMERIEUX as a company name, as trademarks and as domain names.

The Complainant states that it owns registered company names including the mark BIOMERIEUX in most countries of the world, including for example United Kingdom (bioMérieux UK Limited) established in 1972, Greece (bioMérieux Hellas S.A.) and France (bioMérieux SA) registered in 1988.

The Complainant states that it is the owner of many trademarks BIOMERIEUX (word and/or device) all over the world including:

International trademark no. 933,598 BIOMERIEUX, registered on June 12, 2007, in classes 1, 5, 9 and 10, under priority of the French trademark no. 6.3470.357 dated on 1st June, 2007. This registration designates Antigua and Barbuda, Bahrain, Bonaire, Saint Eustatius and Saba, Curaçao, the European Union, Georgia, Iceland, Japan, the Republic of Korea, Norway, Singapore, Sint Maarten, Syrian Arab Republic, Turkmenistan, Turkey, Uzbekistan, Zambia, Albania, Armenia, Azerbaijan, Bosnia and Herzegovina, Bhutan, Belarus, Switzerland, China, Cuba, Egypt, Croatia, Islamic Republic of Iran, Kenya, Kyrgyzstan, Democratic People’s Republic of Korea, Kazakhstan, Liechtenstein, Liberia, Lesotho, Morocco, Monaco, the Republic of Moldova, Montenegro, The former Yugoslav Republic of Macedonia, Mongolia, Mozambique, Namibia, Serbia, the Russian Federation, Sudan, Sierra Leone, San Marino, Swaziland, Tajikistan, Ukraine, Viet Nam and Algeria.

The Complainant states that it, or its subsidiaries, is also the owner of many domain names including the mark BIOMERIEUX alone or combined with other elements, dated between 1996 and 2014 including <biomerieux.co.uk> registered on May 22, 2001, and <biomerieux.uk> registered on June 20, 2014.

The Complainant states that it conducts business on the Internet on which its trademarks BIOMERIEUX have a strong presence. It operates corresponding websites notably at “www.biomerieux.com” and at local websites in numerous countries where it is present as, for example, “www.biomerieux.co.uk” for the United Kingdom.

The Complainant states that the Disputed Domain Name was created on November 29, 2015, and that the Complainant’s rights (trademarks, company name and domain names) precede the Disputed Domain Name.

The Complainant states that the Disputed Domain Name is confusingly similar to the trademarks BIOMERIEUX owned by it because it integrates the trademark BIOMERIEUX in its entirety as a dominant element. It only differs from the registered BIOMERIEUX trademarks by the addition of:

- a prefix (“uk”) followed by a hyphen;

- and the generic Top-Level Domain (“gTLD”) “.com”.

The Complainant states that the addition of the geographical word “uk”, which is the diminutive of the United Kingdom, is not able to distinguish or differentiate the Disputed Domain Name from the Complainant’s trademarks: it contends that the most prominent element in the Disputed Domain Name is the term “biomerieux” which is identical to its trademark BIOMERIEUX. The term “uk” is generic and/or descriptive in nature and the addition of this word to the trademark BIOMERIEUX is non-distinctive. On the contrary, it asserts, this addition increases the confusion as Internet users will be led to think that the Disputed Domain Name is associated with the Complainant, which has a long established trading operation based in the United Kingdom, and will believe that it may belong and refer to the genuine business subsidiary of the Complainant in the United Kingdom.

The Complainant states that the addition of the gTLD suffix “.com” has to be ignored. Indeed, according to prior UDRP decisions, the specific top level of a domain name such as “.com” does not avoid confusing similarity.

The Complainant contends that, as a consequence, the consumers who are exposed to the Disputed Domain Name will be confused in a direct and/or indirect manner in regard to the origin of the owner of the Disputed Domain Name or website and most likely will assume that the Complainant owns/operates the Disputed Domain Name.

The Complainant therefore submits that the Disputed Domain Name is confusingly similar to the Complainant’s trademark BIOMERIEUX.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name

The Complainant states that the Disputed Domain Name does not correspond to the name of the Respondent, nor to any trademark registered in the name of the Respondent.

Nor has the Complainant found any registered trademark or trade name corresponding to the Disputed Domain Name in the name of the Respondent. All the trademarks BIOMERIEUX belong to the Complainant or companies of its group.

The Complainant states that, to the best of its knowledge, the Respondent has not been known under the Disputed Domain Name nor has it ever asked for or been given, any permission by the Complainant to use the Complainant’s trademark BIOMERIEUX in any way.

The Complainant states that the Respondent has never granted him any licence or other rights, and has not otherwise permitted the Respondent to use the Complainant’s trademark BIOMERIEUX or to apply for any domain name incorporating this trademark.

The Complainant states that there is no evidence of any fair, noncommercial or bona fide use of the Disputed Domain Name as there is no active website.

The Complainant contends that the Disputed Domain Name was registered and used only with a fraudulent purpose: the Respondent pretended to be an employee of the English subsidiary of bioMérieux in order to book flight tickets by the travel agency used by the Greek subsidiary of the Complainant.

It states that, on December 11, 2015, the Greek subsidiary of the Complainant was first contacted by phone and by email by someone introducing himself as an employee from bioMérieux UK Limited claiming that the English travel desk was in maintenance and that he needed to use the Greek travel agency to book flight tickets.

The Complainant states that on same day, the individual sent emails, always with the same email address “[…]@uk-biomerieux.com”, to the travel agency of the Greek Complainant’s subsidiary in order to book flight tickets to Athens and annexes emails between the Respondent and the Greek travel agency. Then, on December 12, 2015, the Respondent sent another request to book flight tickets to Kuwait and Maryland, United States of America.

All the messages of the Respondent were always sent with the email address “[…]@uk-biomerieux.com” and with the use of the logo of the Complainant, which includes the mark BIOMERIEUX, at the end in the Respondent’s email signature.

The Complainant states that the name used by the Respondent is the name of a former employee of bioMérieux UK Ltd who retired in 2014. It was easy for the Respondent to find information about this former employee who has a profile on the LinkedIn social network which indicates notably his former job.

The Complainant states that the Greek travel agency got suspicious after the second request and then suspected an illegitimate action. But it was too late: the first flight tickets were already bought by the agency who tried to cancel them but the airline company explained that someone had already exchanged them for other flights, so they could not do a refund.

The United Kingdom subsidiary of the Complainant filed an action in relation to fraud, before the national reporting body for fraud cases in the United Kingdom, which is still pending.

The Complainant contends that, not only does the Respondent not have rights or legitimate interests in the Disputed Domain Name, but it took advantage of the Complainant’s rights as it used them in its own mails pretending being a member of bioMérieux’s staff and that such conduct not only show the absence of rights but also the breach of those of Complainant which have always been recognized by UDRP panels as distinctive and well-known.

The Complainant contends that the use of the mark BIOMERIEUX in the fraudulent emails and the usurpation of the identity of a former employee of the Complainant confirm that the Respondent knew the Complainant and its rights when it registered the Disputed Domain Name and that in similar cases (where the domain name was used for a fraudulent purpose), prior UDRP panels has found that the Respondent has no rights or legitimate interests in respect of the domain name

The Complainant concludes that the only use of the Disputed Domain Name which is made by the Respondent is motivated by a fraudulent purpose in order to make commercial gain by misleading people who reasonably believed that the emails sent by the Respondent were coming from the genuine company.

The Complainant submits that this behaviour thereby inevitably damages the Complainant and fears other such actions if the Disputed Domain Name remains in the name of the Respondent.

(iii) The Disputed Domain Namewas registered and is being used in bad faith

The Complainant contends that, at that time, the Respondent was not acting with a bona fide intent, for the following reasons:

The trademark BIOMERIEUX is, inherently, highly distinctive and very rare. It is a fanciful designation and, to the best of the Complainant’s knowledge, it does not constitute an existing word in the dictionaries, nor even a suggestive term.

All of the trademarks BIOMERIEUX belong to the Complainant or companies of its group and some of these trademark registrations BIOMERIEUX exist since the 1980s, well before the registration of the Disputed Domain Name by the Respondent.

The trademark BIOMERIEUX has been well-known in the medical field for decades now.

The Complainant is a famous leader in microbiology, providing diagnostic solutions (reagents, instruments, software) which determine the source of disease and contamination to improve patient health and ensure consumer safety.

It is a worldwide Company present in more than 150 countries, by means of its 42 subsidiaries around the world. Its leadership in the field of in vitro diagnostics has continued for 50 years. In 2015, its revenues reached EUR 1.965 billion with 90% of sales outside France.

The Complainant reiterates that the well-known character has already been recognized by previous UDRP panels on several occasions.

Therefore, at the date of registration of the Disputed Domain Name by the Respondent, the Complainant owned many rights on the trademark BIOMERIEUX, and its trademark was well-known.

Under the circumstances, the Complainant submits, the registration of the Disputed Domain Name could not be a coincidence, and the Respondent was actually fully aware of the existence of the Complainant and its prior rights on BIOMERIEUXwhen it registered the Disputed Domain Name because:

- the Respondent pretended to be an employee of the English subsidiary of the Complainant; and

- the Respondent used the mark BIOMERIEUX in its emails.

This clearly shows that the Respondent knew the Complainant and its business and therefore registered the Disputed Domain Name in bad faith, and with the intention of conducting fraudulent activities, which it did as it obtained, by this means, free plane tickets.

The Respondent’s bad faith is also evidenced by the fact that the Respondent used anonymous data when it registered the Disputed Domain Name.

The Complainant states that it has doubt about the authenticity of the Respondent’s contact details given for the registration of the Disputed Domain Name because the Respondent gave a false name which does not correspond to the real name of the registrant.

It is generally accepted by UDRP panels that given fictitious information is evidence of bad faith.

The Complainant therefore submits that the Disputed Domain Name was registered in bad faith.

So far as use in bad faith is concerned the Complainant states that the Disputed Domain Name does not lead to an active website.

Moreover, it contends, the Disputed Domain Name was only used for fraudulent purpose by the Respondent to send emails in the name of the Complainant in order to obtain advantages.

The Complainant states that, in similar cases, UDRP panels have considered that this type of action is a bad faith use of domain names and cites, among other decisions, Tetra Laval Holdings & Finance v. Named Redacted, WIPO Case No. D2015-2034: “While the disputed domain name does not resolve to an active website, the Panel is of the view that the Respondent could not make any legitimate use of the disputed domain name due to its similarity with the Complainant’s well-known trademark TETRA PAK. This has been held to amount to registration and use in bad faith”; and “the Respondent is using the disputed domain name for fraudulent email communications for receiving personal and financial information and gives the impression in these emails that the Respondent is associated with the Complainant. […]It is well known that ‘phishing’ is a form of Internet fraud that aims to steal valuable and sensitive information such as credit card numbers, passwords, etc. It seems to this Panel that the registration and use of the disputed domain name by the Respondent was motivated by the intention to capitalize on the reputation of the Complainant’s trade name and trademark TETRA PAK.”

In the present case, the Complainant contends that the passive holding by the Respondent of the Disputed Domain Name constitutes a bad faith use because the Respondent registered it without intent to use it but only to harm the Complainant. Indeed, the only purpose of the Respondent is a fraudulent goal in order to gain money, by sending emails using the form of the Disputed Domain Name.

Therefore, the customers receiving these emails, containing the mark BIOMERIEUX, may easily be confused and believe that they are sent by the Complainant, or somehow affiliated or related to it.

The Complainant submits that all the circumstances of this case lead inevitably to the conclusion that the Disputed Domain Name was registered for the sole purpose to attract Internet users, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark. By doing so, the Respondent is infringing upon the Complainant’s prior exclusive BIOMERIEUX rights on trademarks, company names and domain names. Such an infringement is all the more detrimental to the Complainant (and to consumers) as the mark BIOMERIEUX is a well-known and unique trademark used in a field where quality and reputation is of the utmost importance: the medical field.

Accordingly, the Complainant submits, the Respondent’s use of the Disputed Domain Name is a use of the type described by paragraph 4(b)(iv) of the Policy, and accordingly is evidence of the registration and use of the Disputed Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:

(i) The Disputed Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interest in respect of the Disputed Domain Name;

(iii) The Disputed Domain Name has been registered and is being used in bad faith.

Each of these elements will be addressed below.

The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of or requirement under, the Rules, including the Respondent’s failure to file a Response.

In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425, citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, the Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Disputed Domain Name.

A. Identical or Confusingly Similar

The Panel accepts that the Complainant is the owner of rights in the BIOMERIEUX trademarks, as detailed in section 5.A above. Various decisions have established the strong reputation of BIOMERIEUX, including bioMérieux v. Nish Patel – Ready Asset WIPO Case No. D2014-0899. In this decision, 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 that its mark BIOMERIEUX is well-known”, […] “the Complainant’s mark (BIOMERIEUX) has a strong reputation and is well-known”

The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademarks BIOMERIEUX because it integrates the trademark BIOMERIEUX in its entirety as a dominant element. The Disputed Domain Name only differs from the registered BIOMERIEUX trademarks by the addition of a prefix (“uk”) followed by a hyphen and the gTLD “.com”.

The Panel finds that the addition of the geographical element “uk”, is not able to distinguish or differentiate the Disputed Domain Name from the Complainant’s trademarks and that the most prominent element in the Disputed Domain Name is the term “biomerieux” which is identical to its trademark BIOMERIEUX. The Panel finds that this addition increases the confusion as Internet users will be led to think that the Disputed Domain Name is associated with the Complainant, which has a long-established, trading operation based in the United Kingdom, and will believe that it may belong and refer to the genuine business subsidiary of the Complainant.

The Panel refers to previous UDRP decisions where this has been accepted: Syngenta Participations AG v. Simon Laidler / Who Is Agent, WhoIs Privacy Protection Service, Inc., WIPO Case No. D2014-1702: “[…]The Disputed Domain Name incorporates the Complainant’s, trademark in its entirety with only the addition of the descriptive element ‘ uk-’. Such addition does not alter the fact that the Complainant’s trademark is the dominant element of the Disputed Domain Name”; and Statoil ASA v. Andrew May, WIPO Case No. D2013-2092: “Ignoring the generic Top Level Domain (gTLD) ‘.com’, the Domain Name consists of the term ‘statoil’ together with the addition of ‘uk’. The Panel accepts the Complainant’s submission that the addition of this descriptive geographical term does not serve to distinguish the Domain Name from the Complainant’s trademark and that it may add to the likelihood of confusion since the Complainant conducts business in the United Kingdom.”

The Panel cites the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0), paragraph 1.9, which states that “[T]he addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name”.

The Panel accepts that addition of the gTLD “.com” has to be ignored and that the specific top level of a domain name such as “.com” does not avoid confusing similarity.

The Panel therefore finds that the Disputed Domain Name is confusingly similar to the trademark BIOMERIEUX in which the Complainant has rights.

B. Rights or Legitimate Interests

The Panel accepts that the Disputed Domain Name does not correspond to the name of the Respondent, nor to any trademark registered in the name of the Respondent and that no registered trademark or trade name corresponding to the Disputed Domain Name can be found in the name of the Respondent. All the trademarks BIOMERIEUX belong to the Complainant or companies of its group.

The Panel accepts that the Respondent has not been known under the Disputed Domain Name nor has the Respondent ever asked for or been given, any permission by the Complainant to use the Complainant’s trademark BIOMERIEUX in any way and that the Complainant has never granted the Respondent any license or other rights, and has not otherwise permitted the Respondent to use the Complainant’s trademark BIOMERIEUX or to apply for any domain name incorporating this trademark.

The Panel accepts that there is no evidence of any legitimate or noncommercial or fair use of the Disputed Domain Name as there is no active website.

The Panel accepts that the Disputed Domain Name was registered and used only with a fraudulent purpose: the Respondent pretended to be an employee of the United Kingdom subsidiary of the Complainant in order to book flight tickets by the travel agency used by the Greek subsidiary of the Complainant. The Panel accepts the evidence of the Respondent’s fraudulent activities impersonating a former employee of the Complainant’s United Kingdom operation, as annexed to the Complaint.

The Panel accepts that, not only does the Respondent not have rights or legitimate interests in the Disputed Domain Name, but that it has taken advantage of the Complainant’s rights as it used them in its own mails pretending being a member of the Complainant’s staff

The Panel accepts that the use of the mark BIOMERIEUX in the fraudulent emails and the usurpation of the identity of a former employee of the Complainant confirm that the Respondent knew of the Complainant and its rights when it registered the Disputed Domain Name and that in similar cases, where the domain name was used for fraudulent purpose, the UDRP panel has found that the Respondent has no rights or legitimate interests in respect of the domain name.

The Panel refers to Triple-S Management Corporation v. Whois Privacy Protection Services Inc. / Nathan Stringer, WIPO Case No. D2016-0008, where the panel found that: “Complainant submitted evidence that Respondent has used the Disputed Domain Name as a means to misappropriate funds from third parties by passing itself off as Complainant. Such use eradicates any possibility of a legitimate noncommercial or fair use of the Disputed Domain Name. Committing fraud upon customers who think that they are dealing with the Complainant is not a bona fide offering of goods or services.”

The Panel finds that the only use of the Disputed Domain Name which is made by the Respondent is motivated by a fraudulent purpose in order to make commercial gain by misleading people who reasonably believed that the emails sent by the Respondent were coming from the genuine company of the Complainant.

The Panel finds that this behaviour thereby damages the Complainant and that the Complainant’s fears of other such actions, if the Disputed Domain Name remains in the name of the Respondent, are justified.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

C. Registered and Used in Bad Faith

The Panel accepts that, at the date of the registration of the Disputed Domain Name, the Respondent was not acting with a bona fide intent as the trademark BIOMERIEUX is, inherently, distinctive and all the trademarks BIOMERIEUX, some dating back to the 1980s, belong to the Complainant or companies of its group.

The Panel accepts that the trademark BIOMERIEUX has been widely known in the medical field for many years.

The widely known character of the Complainant’s trademarks has been recognized by previous UDRP panels on several occasions including bioMérieux and bioMérieux, Inc. v. Holdings, Ozweb, WIPO Case No. D2010-0779.

The Panel therefore accepts that the registration of the Disputed Domain Name could not be a coincidence, and the Respondent must have been aware of the existence of the Complainant and its prior rights in BIOMERIEUXwhen it registered the Disputed Domain Name because it pretended to be an employee of the United Kingdom subsidiary of the Complainant and it used the mark BIOMERIEUX in its emails to obtain free plane tickets.

The Panel accepts that the Respondent’s bad faith is also evidenced by the fact that the Respondent used anonymous data when it registered the Disputed Domain Name.

As the Respondent gave false Whois information (i.e., a name which corresponds to a former employee of the United Kingdom subsidiary of the Complainant), the Panel accepts that the Respondent’s registration of the Disputed Domain Name was in bad faith

The Panel therefore finds that the Disputed Domain Name was registered in bad faith.

So far as use in bad faith is concerned the Panel accepts that the Disputed Domain Name does not lead to an active website.

Previous UDRP panels have already found that inaction (passive holding) can, in certain circumstances, constitute bad faith use (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).

Moreover, the Panel finds that the Disputed Domain Name was only used for fraudulent purposes by the Respondent to send emails in the name of the Complainant in order to obtain advantages.

In similar cases, the UDRP panels have found that this type of action characterizes a bad faith use of domain names for example Tetra Laval Holdings & Finance v. Named Redacted, supra: “While the disputed domain name does not resolve to an active website, the Panel is of the view that the Respondent could not make any legitimate use of the disputed domain name due to its similarity with the Complainant’s well-known trademark TETRA PAK. This has been held to amount to registration and use in bad faith”; And “the Respondent is using the disputed domain name for fraudulent email communications for receiving personal and financial information and gives the impression in these emails that the Respondent is associated with the Complainant. […] It is well known that “phishing” is a form of Internet fraud that aims to steal valuable and sensitive information such as credit card numbers, passwords, etc. It seems to this Panel that the registration and use of the disputed domain name by the Respondent was motivated by the intention to capitalize on the reputation of the Complainant’s trade name and trademark TETRA PAK”.

The Panel accepts that the non use by the Respondent of the Disputed Domain Name constitutes a bad faith use because the Respondent registered it without intent to use it in connection with any website, but only to harm the Complainant. However, in the light of the Respondent’s fraudulent use in order to gain money, by sending emails using the form of the Disputed Domain Name, the Panel does not need to rely on non use to make a finding of use in bad faith.

The Panel finds that the Disputed Domain Name was registered and used in bad faith.

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, <uk-biomerieux.com>, be transferred to the Complainant.

Isabel Davies
Sole Panelist
Date: August 16, 2016