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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BioMérieux v. Chy Dutex

Case No. D2018-1763

1. The Parties

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

The Respondent is Chy Dutex of Uisken, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <biomarieux.com> is registered with Internet Domain Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2018. On August 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 6, 2018, 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 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2018.

The Center appointed Jonas Gulliksson as the sole panelist in this matter on September 13, 2018. 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 active within the field of microbiology, providing diagnostic solutions which determine the source of disease and contamination to improve patient health and ensure consumer safety. Furthermore, the Complainant is the holder of, inter alia, the international trademark registration for BIOMÉRIEUX, (registration number 912430), registered on January 3, 2007.

The disputed domain name was registered on June 16, 2018. The disputed domain name does not resolve to an active website. According to the Complaint, the disputed domain name was used for a fraudulent email scheme.

5. Parties’ Contentions

A. Complainant

The Complainant is present in more than 150 countries, by means of its 43 subsidiaries around the world. In 2017, its revenues reached EUR 2.3 billion with 90% sales outside of France.

The disputed domain name is confusingly similar to the Complainant’s BIOMÉRIEUX trademark. The only difference between BIOMÉRIUX and the disputed domain name – the substitution of the letter “e” by the letter “a”- is a minor alteration. The present case is a case of so-called typosquatting.

The Respondent has no rights or legitimate interests in respect of the disputed domain name. The disputed domain name does not correspond to the name of the Respondent. The Complainant has not found that the Respondent is the holder of any trademark or trade name registrations corresponding to the disputed domain name.

To the best of the Complainant’s knowledge, the Respondent has not been known under the disputed domain name. The Complainant has not given the Respondent any permission to use the Complainant’s BIOMÉRIUEX trademark in any way.

The disputed domain name does not resolve to any active website. The Respondent is neither using the disputed domain name in connection with a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the disputed domain name.

The disputed domain name was registered and used only with the purpose to create “spoof” emails. Spoofing is a new fraudulent technique according to which the fraudster hides its identity and creates email messages with a forged sender address reflecting a domain really owned by the Complainant, to mislead the recipient about the origin of the message. The result is that the email recipient sees the email as having come from the real address in “From”-header. In the case at hand, the emails were sent from an email address issued from the disputed domain name, but the recipients received them with the appearance of emails reflecting the Complainant’s domain name <biomerieux.com>. The emails were sent to the Complainant’s distributor to request bank transfers.

The trademark BIOMÉRIEUX is highly distinctive. It is a fanciful designation and, to the best of the Complainant’s knowledge, it does not constitute an existing word in the dictionaries. It is unlikely that the Respondent, without any knowledge of the Complainant should have chosen the word “biomarieux” for the disputed domain name. This is all the more unlikely as the Complainant has been well known in the medical fields for decades.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is the holder of several trademark registrations for BIOMÉRIEUX. The disputed domain name incorporates the Complainant’s trademark in its entirety, apart from the fact that the letter “e” has been replaced with an “a”, and with the addition of the generic Top-Level Domain (“gTLD”) “.com”. As noted by previous UDRP panels, the gTLD is typically not distinguishing for the purposes of establishing identity or confusing similarity.

The Panel finds that the differences between the disputed domain name and the Complainant’s trademarks do not prevent a finding of confusing similarity under the first element of the Policy. The relevant trademark is clearly recognizable within the disputed domain name.

In accordance with the findings above, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademarks within the meaning of the Policy, paragraph 4(a)(i), and the first element of the Policy is thus fulfilled.

B. Rights or Legitimate Interests

In cases when a respondent fails to present a response, the complainant is still required to make at least a prima facie case that the respondent lacks rights or legitimate interests in the domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”), section 2.1. Further, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

The Complainant has stated that the Respondent has no rights of its own or legitimate interests in the disputed domain name, which incorporates – with the above-mentioned minor difference – the Complainant’s trademark.

Having considered the submissions of the Complainant, and the absence of a Response from the Respondent, the Panel finds that the Respondent is not connected with the Complainant nor authorized to use the Complainant’s trademarks in the disputed domain name. Neither does the Panel find any other indications that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, or that the Respondent is using the disputed domain name for a bona fide offering of goods or services.

In the light of what is stated above, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this case with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled.

C. Registered and Used in Bad Faith

The disputed domain name was registered on June 16, 2018. This is, for example, more than 11 years after the Complainant’s international trademark registration for BIOMÉRIEUX as a word mark. The Complainant has furthermore submitted evidence showing its wide range of trademark and domain name registrations. In the light thereof, and considering that the disputed domain name is nearly identical with the Complainant’s trademark, it is in the Panel’s view apparent that the disputed domain name was registered with knowledge of the Complainant’s trademark rights and business.

Furthermore, the evidence provided by the Complainant shows that the Respondent has been using an email address associated with the disputed domain name, and in connection thereto attempted to pass itself off as one of the Complainant’s employees. These circumstances strongly support the fact that the disputed domain name was registered and is being used in bad faith.

All in all, the Panel finds that the disputed domain name was registered and is being used in bad faith. The third element of the Policy is thus fulfilled.

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 <biomarieux.com>, be transferred to the Complainant.

Jonas Gulliksson
Sole Panelist
Date: September 27, 2018

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