WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
bioMérieux v. Name Redacted
Case No. D2017-1595
1. The Parties
The Complainant is bioMérieux of Marcy L'Etoile, France, represented by Cabinet Plasseraud, France.
The Respondent is Name Redacted1.
2. The Domain Name and Registrar
The disputed domain name <biomerieuxgroup.com> is registered with Domain.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 16, 2017. On August 16, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 16, 2017, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 22, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 11, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 12, 2017.
The Center appointed Zoltán Takács as the sole panelist in this matter on September 29, 2017. 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 language of this administrative proceeding is English, that being the language of the Registration Agreement.
4. Factual Background
The Complainant, by means of its 42 subsidiaries in more than 150 countries worldwide, is a global leader in microbiology providing diagnostic solutions which determine the source of disease and contamination to improve patient health and ensure consumer safety.
The Complainant owns, among others, the International Trademark Registration No. 933598 for the word mark BIOMERIEUX designating great number of countries throughout the world. This trademark has been registered since June 12, 2007, for goods of Classes 1, 5, 9 and 10 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of the Registration of Marks.
The Complainant owns extensive number of domain name registrations incorporating its BIOMERIEUX trademark, among others the domain names <biomerieux.com> registered on May 31, 1996, <biomerieux.org> registered on October 20, 2000, <biomerieux.fr> registered on June 4, 1996 and <biomerieux.eu> registered on March 28, 2006.
The disputed domain name was registered on March 31, 2017, and at both the time of filing of the Complaint and rendering of this decision redirected to a parking page including sponsored links.
5. Parties' Contentions
A. Complainant
The Complainant contends that the disputed domain name <biomerieuxgroup.com> is confusingly similar to its BIOMERIEUX trademark since it reproduces its trademark in its entirety and the generic word "group" added to its trademark is not sufficient to distinguish the disputed domain name from the Complainant's trademark.
The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy.
The Complainant claims that the Respondent has registered and is using the disputed domain name in bad faith. Taking into account the unique character and reputation of the Complainant's BIOMERIEUX trademark the Respondent was most likely aware of it when registering the disputed domain name.
The Complainant states that redirection of the disputed domain name to a parking page including sponsored links of third parties' websites is clear evidence of registration and use of the disputed domain name in bad faith.
B. Respondent
On September 29, 2017, the Center received an email communication from an individual (the alleged Respondent) that the Registrar of the disputed domain name confirmed as the registrant of record for the disputed domain name, to which email that individual attached copy of its identity card.
This individual (the alleged Respondent) alleged that its personal data had been hijacked and fraudulently used in registering the disputed domain name and requested the Center to correct this error and remove the disputed domain name from the record.
The Panel will address and discuss circumstances surrounding the alleged identity theft in relation to registration of the disputed domain name in Section C of this decision.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel's decision be made "on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
As noted in many previous UDRP panel decisions, a respondent's default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent's default is not necessarily an admission that the complainant's claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
A complainant must prove each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark.
As noted by many UDRP panels, if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.
The Complainant produced satisfactory evidence that it holds registered rights in the trademark BIOMERIEUX, and for the purpose of this proceeding the Panel establishes that the Complainant's International Trademark Registration No. 933598 for the word mark BIOMERIEUX satisfies the requirement of having trademark rights for the purpose of the Policy.
Having determined that the Complainant has trademark rights in the BIOMERIEUX mark, the Panel next assessed whether the disputed domain name <biomerieuxgroup.com> is identical or confusingly similar to the BIOMERIEUX trademark of the Complainant.
According to section 1.7 of the WIPO Overview 3.0 "[t]he standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant's trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name."
According to section 1.8 of the WIPO Overview 3.0 "[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element."
According to section 1.9 of the WIPO Overview 3.0 "[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for the purpose of the first element."
According to section 1.11.1 of the WIPO Overview 3.0 "[t]he applicable Top Level Domain (ʻTLDʼ) in a domain name (e.g., ʻ.comʼ, ʻ.clubʼ, ʻ.nycʼ) is viewed as a standard registration requirement and as such is disregarded under the first element confusingly similar test."
The disputed domain name contains the Complainant's BIOMERIEUX trademark in its entirety. The applicable gTLD suffix in the disputed domain name ".com" should in relation to this administrative proceeding be disregarded.
The only element in the disputed domain name that differs from the BIOMERIEUX trademark of the Complainant is addition of the term "group" which is not sufficient to prevent finding of confusing similarity under the first element of the Policy.
On the basis of facts and circumstance discussed above the Panel finds that the disputed domain name <biomerieuxgroup.com> is confusingly similar to the BIOMERIEUX trademark of the Complainant and that the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services;
(ii) it has been commonly known by the domain name;
(iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds
well-established rights in the trademarks BIOMERIEUX.
The Complainant has never authorized the Respondent to use its BIOMERIEUX trademark in any way, and the Complainant's prior rights in the BIOMERIEUX trademark long preceded the date of registration of the disputed domain name.
According to section 2.1 of the WIPO Overview 3.0 while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of "proving a negative", requiring information that is often primarily within the knowledge or control of the respondent.
As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights of legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant's prima facie case.
The Panel does not consider the Respondent's use of the disputed domain name in connection with a parking page displaying sponsored links to be bona fide within the meaning of the Policy.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of factors which, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes:
"(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location."
Following receipt of the Center's written notice of this administrative proceeding the individual listed in the WhoIs as the registrant of the disputed domain name notified the Center in writing that the disputed domain name was registered without its knowledge, by someone who hijacked its identity.
It is beyond the scope of this administrative proceeding as well as the Panel's authority to investigate these identity theft allegations.
However, the fact that the individual listed in the WhoIs as the registrant of the disputed domain name came forward on time with its statement, provided the Center with copy of its identity card and offered its full cooperation suggest to the Panel that its claim is probable, and that it was not the individual who registered the disputed domain name.
The Panel decided that there is no reason to include the name of the Respondent in this decision and has redacted the Respondent's name from the caption and body of this decision.
The facts and circumstances which suggest that a third party deliberately used the identity of the individual listed in the WhoIs as registrant of the disputed domain alone are undisputed evidence of bad faith registration and use.
The Complainant's BIOMERIEUX trademark is unique and highly distinctive, and in view of the Panel whoever in reality registered the disputed domain name must have been aware of it, which in this case is also indicative of bad faith conduct.
Using the disputed domain name incorporating a third-party trademark to divert Internet users to pay-per-click websites generating revenue for either the Respondent (or anyone else) is activity within paragraph 4(b)(iv) of the Policy.
The Panel finds that paragraph 4(a)(iii) of the Policy is 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 <biomerieuxgroup.com> be transferred to the Complainant.
Zoltán Takács
Sole Panelist
Date: October 11, 2017
1 As it appears that the named Respondent's identity may have been used by an unauthorized third party when registering the disputed domain name. In light of this potential identity theft, the Panel has decided to redact the Respondent's name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated that Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case.