WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

bioMérieux v. WhoisGuard Protected, WhoisGuard, Inc. / John Martine

Case No. D2020-0399

1. The Parties

The Complainant is bioMérieux, France, represented by Plasseraud IP, France.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / John Martine, United States of America (“United States” or “US”).

2. The Domain Name and Registrar

The disputed domain name <biomerieuix.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2020. On February 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 19, 2020, 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 February 21, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 24, 2020.

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 February 26, 2020. In accordance with the Rules, paragraph 5, the due date for Response was March 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 18, 2020.

The Center appointed Reyes Campello Estebaranz as the sole panelist in this matter on April 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 a French company, which operates internationally in the field of microbiology and medical diagnosis solutions, producing and commercializing various products, devices and techniques (reagents, instruments and software) for diagnosis, prevention and immunotherapy purposes in the field of health. The Complainant is a family-owned company created in 1963, being nowadays present in 44 countries and operating in more than 160 countries with the support of a network of distributors and subsidiaries. It operates under the trademark BIOMERIEUX, which coincides with its company name. The Panel has consulted the Complainant’s website under the general powers of the Panel articulated inter alia in paragraphs 10 and 12 of the Rules.

The Complainant holds an extensive trademark portfolio for the mark BIOMERIEUX in many jurisdictions worldwide, alone or in combination with figurative elements, of which the following are sufficiently representative for the present proceeding:

European Union Trade Mark No. 017912668 BIOMERIEUX, figurative, registered on October 20, 2018, in classes 1, 5, 9, 10, 35, 37, 41, 42, and 44;

International Trademark No. 1478156 BIOMERIEUX, figurative, registered on June 4, 2018, in classes 1, 5, 9, 10, 35, 37, 41, 42, and 44, designating, among others, United States;

US Trademark No. 3,906,321 BIOMERIEUX, word mark, registered on January 18, 2011, in classes 1, 5, 9, and 10;

US Trademark No. 3,787,782 BIOMERIEUX, figurative, registered on May 11, 2010, in classes 1, 5, 9, and 10.

The Complainant further owns various domain names comprising its trademark BIOMERIEUX, alone or in combination with other terms, under various generic Top-Level Domains (“gTLDs”) and country code
Top-Level Domains (“ccTLDs”), which are linked to its corporate general and local websites in connection with its products and services. Among others, <biomerieux.com> was registered on May 31, 1996, <biomerieux.fr> was registered on June 4, 1996, <biomerieux.eu> was registered on March 28, 2006, <biomerieux-usa.com> was registered on March 31, 2000 and <biomerieuxusa.com> was registered on April 4, 2001.

The disputed domain name was registered on February 12, 2020, and, at the date of this decision, it resolves to a page with an Internet browser error message. However, according to evidence provided by the Complainant, the disputed domain name was linked to a parking page displaying pay-per-click (“PPC”) links.

5. Parties’ Contentions

A. Complainant

Key contentions of the Complainant may be summarized as follows:

The disputed domain name is confusingly similar to the Complainant’s trademark, being a clear typosquatting case. The disputed domain name contains almost identically the trademark BIOMERIEUX with the sole addition of the gTLD “.com”, which do not avoid confusing similarity, and a letter “i” between the letters “u” and “x” in the last syllable, which is a possible common misspelling, as the letters “u” and “i” are close to each other in computer keyboards.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name, nor holds any trademark or tradename corresponding to the disputed domain name. The Respondent is not a licensee of the Complainant, nor has he been otherwise authorized to register and use the Complainant’s trademark in the disputed domain name. Further, the disputed domain name is inactive, being linked to a parking website including PPC links.

The disputed domain name was registered and used in bad faith with a fraudulent purpose. The term “biomerieux” is a fanciful term, inherently distinctive, being the Complainant’s trademark notorious in the medical field for many years and at the time of the registration of the disputed domain name. The Respondent registered the disputed domain name targeting the Complainant’s trademark in a “typosquatting” case, in order to use it for a PPC parking website and to configure a fraudulent email address corresponding to the name of the Complainant’s executive managing director (“CEO”), allegedly usurping his identity. This email address was allegedly used, on the same day of the registration of the disputed domain name, to send an email to a Complainant’s employee requesting the payment of a false invoice. Information about the Complainant’s employees is accessible through social media, various press articles and UDRP decisions refer to the Complainant’s trademark BIOMERIEUX reputation, the fact that the Respondent has hidden his identity and contact information through a privacy service is indicative of bad faith, and a copy of the mentioned email is provided by the Complainant to this proceeding.

The Complainant has cited various previous decisions under the Policy that it considers to be supportive of its position.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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 divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(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.

The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has authority to decide the dispute.

Paragraph 15(a) of the Rules provides that “[a] Panel shall decide a complaint 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”. The Panel has taken into consideration all of the evidence, annexed material and submissions provided by the Parties, and has performed some limited independent research under the general powers of the Panel. See section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

A. Identical or Confusingly Similar

In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to that mark for purposes of the Policy. Further, the applicable gTLD in a domain name is considered a standard technical registration requirement and, as such, is generally disregarded under the first element confusing similarity test. See sections 1.7 and 1.11, WIPO Overview 3.0.

The Complainant indisputably has rights in the registered trademark BIOMERIEUX. The disputed domain name incorporates this mark in its entirety adding a letter “i” between the letters “u” and “x” in its last syllable’s diphthong. The Panel considers that this alteration does not avoid the direct recognition of the trademark in the disputed domain name, being, in addition, a possible common misspelling of the mark, as the letters “i” and “u” are next to each other in computer keyboards, and both letters are included in the same diphthong of the mark (“ieu”, instead of “ieui”). Further, the gTLD “.com” is a technical requirement, generally disregarded for the purpose of the analysis of the confusing similarity.

Accordingly, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and the first element of the Policy under paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

Although the Complainant bears the burden of establishing all three elements of paragraph 4(a) of the Policy, prior UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production of rights or legitimate interests in the disputed domain name to the Respondent, once the Complainant has made a prima facie showing indicating the absence of such rights or legitimate interests.

The Complainant’s assertions and evidence effectively shift the burden to the Respondent of producing evidence of rights or legitimate interests in the disputed domain name, providing paragraph 4(c) of the Policy the circumstances, without limitation, that may establish rights or legitimate interests in the disputed domain name in order to rebut the Complainant’s prima facie case. However, the Respondent has not replied to the Complainant’s contentions.

The Panel notes that the Respondent’s name does not correspond to the disputed domain name, corroborating that the Respondent does not hold any trademark rights including or consisting of the terms “biomerieux” or “biomerieuix”.

The evidence provided by the Complainant shows the disputed domain name was temporally linked to a parking page displaying PPC links, which presumably was created automatically by the Registrar, and, at the time of this decision, the website at the disputed domain name is inactive resolving to a page with an Internet browser error message. These circumstances do not show any bona fide use or intent to use the disputed domain name in connection to a legitimate noncommercial or fair use or to any bona fide offering of goods or services. See section 2.9, WIPO Overview 3.0.

The Panel further considers remarkable the Respondent’s attitude choosing not to reply to the Complaint, not providing any explanation connected to the circumstances included in paragraph 4(c) of the Policy or any other that may be considered as a fair use or legitimate interests in the disputed domain name.

Furthermore, a core factor in assessing fair use of the disputed domain name is that it does not falsely suggest affiliation with the Complainant’s trademark. See section 2.5, WIPO Overview 3.0. The disputed domain name incorporates the Complainant’s trademark in its entirety with a minor alteration (the addition of a letter “i” among the vocals included in its last syllable’s diphthong) that is a possible common misspelling of the mark, being almost identical to the Complainant’s company name and its reputed trademark. Therefore, the Panel considers that there is a high risk of implied affiliation.

In addition, the Panel considers that the evidence provided by the Complainant of an email configured on the disputed domain name using the Complainant’s CEO name, allegedly used to request the payment of a false invoice, points to a fraudulent use of the disputed domain name, which can never confer rights or legitimate interests. See section 2.13, WIPO Overview 3.0.

All the above-mentioned circumstances lead the Panel to conclude that the Respondent has not produced evidence to rebut the Complainant’s prima facie case, and all these cumulative facts and circumstances point to consider that the Respondent lacks any rights or legitimate interests in the disputed domain name. Therefore, the second element of the Policy under paragraph 4(a)(ii) has been established.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(a)(iii), requires that the Complainant establish that the disputed domain name “has been registered and is being used in bad faith”, and the Policy’s non-exhaustive list of bad faith circumstances are included in paragraph 4(b).

At the time of the disputed domain name’s registration, this Panel considers unlikely that the Respondent did not know about the BIOMERIEUX mark, and did not have it in mind. Several factors in this case lead to this conclusion.

The Panel notes the extensive presence of the trademark BIOMERIEUX over the Internet, as well as its extensive use and promotion worldwide, including in the United States, where the Respondent is apparently located according to the WhoIs record. The Complainant’s trademark is used and registered in many jurisdictions worldwide, being considered notorious in the medical field by prior decisions under the Policy. The Panel, in use of the general powers articulated in the Policy, has visited the Complainant’s website for the United States under <biomerieux-usa.com> and performed various searches over the Internet.

The Panel further notes the term “biomerieux” is highly distinctive, and is associated with the Complainant, not being a term included in the dictionary, but a coined word created by the Complainant. Under these circumstances, the disputed domain name incorporates the Complainant’s trademark in its entirety, using a very close term with a minor alteration, the addition of a vocal among its last diphthong that may pass unnoticed, being a possible common misspelling of the mark, which intrinsically creates a high likelihood of confusion or a high risk of implied affiliation.

Further, the Complainant has provided evidence of an email configured on the disputed domain name in the name of the Complainant’s CEO, allegedly used to request the payment of a false invoice from a Complainant’s employee, not having the Respondent replied to the Complaint or provided any explanation or evidence rebutting the Complainant’s contentions.

The applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”, being the Panel prepared to draw certain inferences in light of the particular facts and circumstances of the case. See section 4.2, WIPO Overview 3.0.

In the balance of probabilities, the Panel considers more likely than not that the Respondent knew about the Complainant and its notorious trademark BIOMERIEUX having it in mind when he registered the disputed domain name, targeting the Complainant’s trademark by registering a very close term that could be used for impersonating the Complainant or other fraudulent or phishing scam.

It is further remarkable that the website at the disputed domain name is currently inactive and was temporally used in connection to a parking page displaying PPC links, according to the evidence provided by the Complainant. The non-use or passive holding of the disputed domain name does not prevent a finding of bad faith and with respect to “automatically” generated PPC links, the Respondent cannot disclaim responsibility for content appearing on the website associated with the disputed domain name. Neither the fact such links were generated presumably by a third party such as the Registrar, nor the fact the Respondent may not have directly profited, would by itself prevent a finding of bad faith. See sections 3.3 and 3.5, WIPO Overview 3.0.

The Panel further notes the Respondent has taken active steps to conceal its identity by registering the disputed domain name behind a privacy service, which is further evidence of bad faith.

Taking into account all cumulative circumstances of this case, the Panel considers that the disputed domain name was very likely registered and used, targeting the mark BIOMERIEUX, with the intention of creating a likelihood of confusion as to the affiliation or association with the Complainant and its reputed trademark, in a fraudulent or phishing scam, attempting to obtain fraudulent payments, as well as private information and other data from the Complainant or its employees, through emails connected to the disputed domain name. It is further possible that the Respondent attempted to obtain private information and data from its website visitors or through emails connected to the disputed domain name, based on their association with the Complainant and the reputed trademark BIOMERIEUX, misleadingly attracting Internet users to the Respondent’s parking page, and disrupting the Complainant’s business.

Given the nature of the Complainant’s business in the medical field, the Panel considers the registration and use of the disputed domain name constitutes a serious threat not only to the Complainant’s business, but also to the health of the millions of patients for which the Complainant’s products are used.

All the above-mentioned leads the Panel to conclude that the disputed domain name was registered and is being used in bad faith. Accordingly, the Panel concludes that the Complainant has met its burden of establishing that the Respondent registered and is using the disputed domain name in bad faith under 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 name <biomerieuix.com> be transferred to the Complainant.

Reyes Campello Estebaranz
Sole Panelist
Date: April 22, 2020