WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Institut Merieux v. Summit Services LLC
Case No. D2011-0974
1. The Parties
The Complainant is Institut Merieux of Lyon, France, represented by Cabinet Lavoix, France.
The Respondent is Summit Services LLC of Wilmington, Delaware, United States of America.
2. The Domain Name and Registrar
The disputed domain name <alainmerieux.info> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2011. On June 8, 2011, the Center transmitted by email to GoDaddy.com a request for registrar verification in connection with the disputed domain name. On June 9, 2011, GoDaddy.com, Inc. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2011.
On July 7, 2011, the Respondent sent an e-mail to the Center requesting an extension for his Response due to technical power outages. Later, on the same date, the Respondent sent another e-mail informing that he would be able to have Internet access on June 8, 2011 in order to assess the situation. On June 8, 2011 another e-mail was sent by the Respondent to the Center, asking if it is possible to avoid any unnecessary fees and or proceedings. Thus, on July 14, 2011, the Center informed the Complainant of Respondent’s intentions and proposed a settlement.
On July 19, 2011, the Complainant asked the Center to suspend the proceedings for 30 days. The Center notified the suspension of proceeding on July 20, 2011. Since the Respondent never replied Complainant’s proposal to settle, on August 12, 2011, the Complainant requested the Center to re-institute the proceedings. On August 15, 2011, the Center confirmed the re-instatement of the proceedings.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on August 19, 2011. 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 Institut Mérieux has a long tradition in the field of medicine and diagnostic services and is currently one of the world leaders in human and veterinary vaccines.
The Complainant operates on the Internet under the domain names <institute-merieux.com> and <foundation-merieux.org>.
The disputed domain name <alainmerieux.info> was registered in March 6, 2011.
Alain Mérieux is the chairman and president of the Complainant Institut Mérieux.
The Panel accessed the website displayed at the disputed domain name on September 1, 2011 and there was a pay per click page with several links for medical diagnostics services.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) The Complainant is notably the owner of several trademarks/applications composed by the INSTITUT MÉRIEUX expression in France, Germany, Austria, Benelux, Spain, Hungary, Italy and in the European Union, which have been validly used for many years. Those marks are not descriptive of the designated goods for which they are registered. The Complainant has spent substantial time, effort and money advertising and promoting INSTITUT MÉRIEUX trademarks throughout the world. The addition of gTLD “.info” is required for the registration of the domain and, for that, is non-distinctive. The domain name corresponds to the patronymic of the Company’s President Alain Mérieux. Within the Complainant’s trademarks, the distinctive and dominant element is the name MÉRIEUX, which is identical to the distinctive element from the disputed domain name. The disputed domain name devolved to the active website http://www.alainmerieux.info that consists in a commercial website with sponsored links to companies selling and advertising competitor’s goods. It is likely to cause confusion, mistake or deception as to the source, origin, sponsorship or approval of products mentioned in the Respondent’s website in that consumers and other are likely to believe that the Complainant authorizes or controls the Respondent businesses, or that the Respondent’s domain name is associated with or related to the Complainant.
(ii) The Respondent has no rights or legitimate interests in respect of the domain name. The Respondent is the owner and is currently using the disputed domain name for a commercial website with sponsored links to companies selling and advertising goods such as pharmaceutical preparations, which are identical or similar as those covered by the Complainant’ s trademarks without its authorization. The Respondent is not a licensee of the Complainant nor is authorized to use the Complainant’s marks. The domain name is been used for unfair commercial purposes.
(iii) The disputed domain name is currently being used to post links and advertisements that direct visitors to other websites that are in competition with the Complainant. The disputed domain name reproduces the name of Alain Mérieux, the Complaint's president. The choice of the disputed domain name by the Respondent cannot be fortuitous. By using the domain name the Respondent intentionally attempted to attract for commercial gain Internet users to his 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 Respondent’s website or location or of products or services on the Respondent’s website or location.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel has no doubt that “merieux” is a term directly connected with the Complainant’s activities.
Annex 6 to the Complaint demonstrates registrations of the INSTITUT MERIEUX trademark in Europe since at least 1970.
The core, distinctive and dominant element of the Complainant's trademark (MERIEUX) is encompassed within the disputed domain name, where this term is preceded by the name “alain”.
In the present case the addition of the term "alain" makes the disputed domain name even more confusingly similar to the Complainant's trademark, as this result the exact - and well known - name of the Complainant's chairman and president.
While the UDRP does not specifically protect personal names, in situations where a personal name, or a dominant part of it, is also registered as a trademark and is used as a distinctive identifier of goods or services - such as MERIEUX - the protection is undeniable (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition).
As a result, the Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark, and that the Complainant has proven the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following facts:
(i) Before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) The respondent has been commonly known by the domain name; or
(iii) The respondent 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 at issue.
Based on the Respondent default and on the prima facie evidence in the Complaint, the Panel finds that the above circumstances are not present in this particular case and that the Respondent has no rights or legitimate interests in the disputed domain name.
The Panel notes that the present record provides no evidence to demonstrate the Respondent’s intent to use or to make preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Indeed, the webpage that is published at the disputed domain name basically hosts pay-per-click links to competitor’s websites.
The Complainant has not licensed or authorized the use of its trademark to the Respondent, and it does not appear from the present record that the Respondent is commonly known by the disputed domain name.
Consequently, the Panel is satisfied that the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) The respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
When the disputed domain name was registered the Complainant’s trademark INSTITUT MERIEUX was already well known in the field of medical diagnostics worldwide. Therefore, it is not feasible that the Respondent could have been unaware of the Complainant’s reputation and business.
This conclusion is emphasized by the fact that the disputed domain name also reproduces the name of the Complainant's chairman and president and by the contents published there, related to medical diagnostics and vaccines.
Actually, the disputed domain name is being used as a pay-per-click landing page, displaying sponsored links for third party websites that offer competing products. Therefore, in doing so, the Respondent:
(i) create a likelihood of confusion with the Complainant’s trademark;
(ii) obtain click-through revenue from this practice; and
(iii) deprive the Complainant from selling its products to prospective clients who are clearly looking for the Complainant and, at the same time, promote products offered by competitors.
In situations like this, former UDRP decisions have considered this type of use of a domain name enough to demonstrate bad faith. For reference on the subject, see Serta Inc. v. Charles Dawson, WIPO Case No. D2008-1474, or also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415.
Accordingly, the Panel finds that the Complainant has proved that the disputed domain name was registered and is being used in bad faith, satisfying the third element of the Policy.
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 <alainmerieux.info> be transferred to the Complainant.
Dated: September 2, 2011