WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BioMérieux v. Robert Sloan

Case No. D2019-2865

1. The Parties

The Complainant is BioMérieux, France, represented by Cabinet Plasseraud, France.

The Respondent is Robert Sloan, United States of America (“United States”), represented by O’Brien LLP, United States.

2. The Domain Names and Registrar

The disputed domain names <shortbiomérieux.com> and <shortingbiomérieux.com> (the “Disputed Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 21, 2019. On November 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On November 22, 2019, 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 and contact information for the Disputed Domain Names.

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 November 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 18, 2019. On December 18, 2019, the Respondent’s representative sent an email communication to the Center, requesting an extension of the decision due date. The decision due date was extended to December 22, 2020. The Respondent submitted a Response on December 23, 2019.

The Center appointed John Swinson as the sole panelist in this matter on January 8, 2020. 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 bioMérieux, a company incorporated in France. According to the Complaint, the Complainant is a well-known microbiology company that provides diagnostic and analysis solutions worldwide. The Complainant has been operating for over 55 years, is present in over 40 countries and serves more than 160 countries.

The Complainant is the owner of approximately 200 trade marks, across numerous countries, including United States registered trade mark number 3906321 for BIOMÉRIEUX, registered on January 18, 2011 (the “Trade Mark”).

The Complainant is the owner of the registered company name BIOMÉRIEUX in numerous countries, including United States (bioMérieux Inc.), United Kingdom (bioMérieux UK Limited), and France (bioMérieux SA). The Complainant also owns numerous domain names incorporating the Trade Mark, including <biomerieux.com>, registered on May 31, 1996.

The Respondent is Robert Sloan, an individual of the United States. According to the Respondent, the Disputed Domain Names were registered on behalf of S3 Partners, a United States financial technology and data power company. It is not clear how the Respondent is related to S3 Partners. The Disputed Domain Names were registered on August 9, 2018. The Disputed Domain Names resolve to parking pages containing pay-per-click (“PPC”) links.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions.

Identical or Confusingly Similar

The Complainant is the owner of registered company names for BIOMÉRIEUX in most countries worldwide. The Complainant owns approximately 200 trade marks for BIOMÉRIEUX across numerous countries. The Complainant, or its subsidiaries, is also the owner of many domain names incorporating the Trade Mark.

The Complainant’s rights precede the registration of the Disputed Domain Names. The Disputed Domain Names are confusingly similar to the Trade Mark because they integrate the Trade Mark in its entirety as a dominant element. The addition of generic words “short” and “shorting” are descriptive. The addition of the generic Top-Level Domain (“gTLD”) suffix “.com” should be ignored.

Consumers who are exposed to the Disputed Domain Names will be confused in regard to the origin of the owner of the domains/websites and will assume the Complainant owns/operates the Disputed Domain Names.

Rights or Legitimate Interests

The Complainant has not found any registered trade marks or trade names corresponding to the Disputed Domain Names in the name of the Respondent. To the best of the Complainant’s knowledge, the Respondent has not been known under the Disputed Domain Names, and has never been given permission by the Complainant to use the Trade Mark.

There is no evidence of any fair or noncommercial or bona fide use, because the websites at the Disputed Domain Names are a parking page. The parking pages include PPC links related to the Complainant’s core business of microbiologic and diagnostic activities.

The Respondent acts to mislead consumers. The PPC websites seek to take unfair advantage of the value of the Trade Mark. The Respondent has used the Disputed Domain Names in a manner to falsely suggest an association with the Complainant. The Respondent is likely earning PPC revenue from advertising links on the website at the Disputed Domain Name.

The Complainant is using the Complainant’s Trade Mark to attract Internet users to its website for commercial gain.

Registered and Used in Bad Faith

The Disputed Domain Names were registered on August 9, 2018. The Respondent was not acting with a bona fide intent because:

- The Trade Mark is highly distinctive, rare, and a fanciful designation, and is well-known.

- The Trade Mark has been registered in numerous countries well before the registration of the Disputed Domain Names.

- The Complainant is a worldwide company present in more than 160 countries through its 43 subsidiaries. The Complainant has been a leader in the field of in vitro diagnostics for more than 50 years. The Complainant’s well-known character has been recognised by panels on several occasions.

- The Respondent was fully aware of the Complainant when registering the Disputed Domain Names.

The Respondent has also been involved in at least two other UDRP cases with similar factual circumstances. This indicates the Respondent is engaged in a pattern of bad faith behavior.

The PPC links on the websites at the Disputed Domain Names are related to the Complainant’s business and refer to competitors of the Complainant. Internet users accessing the websites may be easily confused and believe the websites are held and controlled by the Complainant or somehow affiliated to it.

The Respondent’s goal in registering the Disputed Domain Names was to profit from or exploit the Trade Mark. This is bad faith use as described by paragraph 4(b)(iv) of the Policy.

B. Respondent

The Respondent makes the following submissions.

The Disputed Domain Names were registered on behalf of S3 Partners, a United States financial technology and data power company. S3 Partners is in the business of providing information to investors. S3 Partners acquired the Disputed Domain Names for the purpose of providing and aggregating commentary, data and analytics concerning the Complainant’s stock. S3 Partners provides all NASDAQ listed companies with short interest analytics. S3 Partners has the fundamental free speech right to comment on the Complainant.

The Complainant and S3 Partners are involved in entirely different businesses and there is no likelihood that the public will be confused by the Disputed Domain Names. The Complainant has not provided any evidence of actual confusion.

The terms “short” and “shorting” are obvious indicators for “short selling”, which is the process by which a trade profits when a security’s price declines. It is absurd for the Complainant to argue that the public is likely to be confused and believe the Complainant is the source of information pertaining to short selling of its own stock. It is also absurd for the Complainant to argue that members of the public would conduct a search for “short” or “shorting” when searching for the Complainant’s services. The Complainant has provided no evidence that there is a short name for the Complainant.

Although the Disputed Domain Names do not currently resolve to active webpages of S3 Partners, all currently active S3 webpages contain prominent intellectual property disclaimers in their terms and conditions, so there is no confusion as to sponsorship.

Neither the Respondent nor S3 Partners (or any person controlled or affiliated by them) receives any compensation from the Registrar for the parked websites. Due to the following circumstances and previous panel decisions, the Panel must find that the Complainant has failed to establish bad faith on behalf of the Respondent:

- S3 Partners has never offered to sell the Disputed Domain Names to the Complainant or anyone else, and has no intention of doing so.

- S3 Partners has responded to the Complaint.

- The Disputed Domain Names were not registered anonymously.

- The Disputed Domain Names are not confusingly similar to the Trade Mark, and resolve to a parked page over which the Respondent has no control.

Should S3 Partners decide to sell its data and analytics concerning the short selling of the Complainant’s stock, this would be nominative fair use.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and

(iii) the Disputed Domain Names have been registered and are being used in bad faith.

The onus of proving these elements is on the Complainant, even though the Respondent did not file the Response in time.

A. Procedural Issues

Late Response

The Respondent filed the Response one day after the extended due date for Response. It is therefore in the Panel’s discretion as to whether to consider it (paragraph 14 of the Rules, Internationale Spar Centrale B.V. v. Scientific Process & Research, Inc., WIPO Case No. D2005-0603). Taking into account that the Response was only one day late, and was filed before the commencement of the decision-making process by the Panel, the Panel will allow the late Response and take it into consideration.

Multiple domain names

The Complaint is in relation to two domain names. Paragraph 3(c) of the Rules states that “the complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”.

Paragraph 10(e) of the Rules gives the Panel discretion to decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and the Rules.

In this case, the Disputed Domain Names are both registered by the Respondent. The Panel is satisfied that the Disputed Domain Names are under common control and that it is procedurally efficient to consolidate to the proceedings.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to the Trade Mark.

The Disputed Domain Names incorporate the entirety of the Trade Mark, with the word “short” and “shorting” respectively. Where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark (see section 1.7 the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). The addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) do not prevent a finding of confusing similarity under the first element (see section 1.8 of WIPO Overview 3.0). In this case the terms “short” and “shorting” do not dispel the similarity.

The Disputed Domain Names are confusingly similar to the Trade Mark. The Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.

The Panel considers the Complainant has made out a prima facie case. This finding is based on the following:

- The Respondent is not using (and as discussed below, has not made sufficient demonstrable preparations to use) the Disputed Domain Names in connection with a bona fide offering of goods or services. The Complainant has provided evidence that the Disputed Domain Names each resolve to a parking page containing PPC links related to the Complainant’s industry and competitors. This is not in the circumstances a bona fide offering (see section 2.9 of WIPO Overview 3.0).

- The Complainant has not authorised or licensed the Respondent to use the Trade Mark in the Disputed Domain Names.

- There is no evidence that the Respondent has been commonly known by the Disputed Domain Names or has registered or common law trade mark rights in relation to this name.

- The Respondent has not been making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain. The Disputed Domain Names resolve to parking pages containing PPC links.

According to the Respondent, the Disputed Domain Names were registered on behalf of S3 Partners, a United States financial technology and data power company. The Respondent states that the Disputed Domain Names were acquired for the purpose of providing and aggregating commentary, data and analytics concerning the performance of the Complainant’s stock, and in particular information relating to “shorting” the Complainant’s stock.

The Respondent had the opportunity to provide evidence of preparations to use the Disputed Domain Names in this manner, but did not do so beyond its statements in the Response. The Respondent has not provided any evidence of business plans or documents that reference this intended purpose, notwithstanding that almost one-and-a-half years has elapsed from when the Disputed Domain Names were registered. If not independently verifiable by the panel, preparations to use the domain name in connection with a bona fide offering of goods or services cannot be merely self-serving statements but should be inherently credible and supported by relevant pre-complaint evidence (see section 2.2 of WIPO Overview 3.0).

The Respondent argues that use of the Disputed Domain Names in connection with the above purpose would also constitute nominative fair use, and that the Respondent has a fundamental free speech right to comment on the Complainant. The Panel acknowledges that the use of a domain name for noncommercial free speech would in principle support a respondent’s claim to a legitimate interest under the Policy (see section 2.6 of WIPO Overview 3.0). However, the use proposed by the Respondent, to sell its data and analysis of shorting the Complainant’s stock, is clearly commercial.

As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the Disputed Domain Names in bad faith.

The Complainant and the Trade Mark are famous worldwide, having been in operation for over 50 years in numerous countries. The Complainant has developed a significant reputation in the Trade Mark. The Complainant’s registration of <biomerieux.com> predates the registration of the Disputed Domain Names by more than 20 years. The Complainant’s Trade Mark registrations also significantly predate the registration of the Disputed Domain Names. Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see section 3.1.4 of WIPO Overview 3.0).

The Respondent was aware of the Complainant and the Trade Mark when it registered the Disputed Domain Name. As discussed above, the Respondent states that the Disputed Domain Names were acquired for the purpose of providing and aggregating commentary, data and analytics concerning the performance of the Complainant’s stock. However, no evidence was provided to the Panel to support these assertions.

The Disputed Domain Names resolve to a webpage containing PPC links that are related to the Complainant’s business, and refer to competitors of the Complainant. Although the Respondent states that the Respondent has no control over the parking pages and does not receive compensation from the PPC links, the Respondent cannot disclaim responsibility for these links unless the Respondent can show some good faith attempt at preventing advertising relating to third party trade marks (see section 3.5 of WIPO Overview 3.0 and Accor v. Robert Sloan, WIPO Case No. D2019-0408). While the Respondent states that the Respondent includes prominent intellectual property disclaimers on the Respondent’s other websites (or the websites of S3 Partners), there is no such disclaimer here. Paragraph 3.5 of WIPO Overview 3.0 states that:

“Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.”

It is therefore not necessary for the Respondent to have profited from the PPC links for the Panel to find bad faith use. Presumably, the Registrant has made some profit or commercial gain from the PPC links on the websites at the Disputed Domain Names.

The Complainant has also provided evidence suggesting that the Respondent has engaged in a pattern of abusive registrations (see Accor v. Robert Sloan, WIPO Case No. D2019-0408 and LegalZoom.com, Inc. v. Robert Sloan, WIPO Case No. D2019-0359).

In the circumstances, it is reasonable for the Panel to conclude that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Trade Marks as to the source of the website. This is an indicator of bad faith under paragraph 4(b)(iv) of the Policy. The Panel considers it more likely than not that the Respondent registered and is using the Disputed Domain Name in bad faith.

The Complainant succeeds in establishing the third element of the Policy.

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 Names, <shortbiomérieux.com> and <shortingbiomérieux.com>, be transferred to the Complainant.

John Swinson
Sole Panelist
Date: January 22, 2020