WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
bioMérieux v. John Koontz
Case No. D2017-0299
1. The Parties
The Complainant is bioMérieux of Marcy L’Etoile, France, represented by Cabinet Plasseraud, France.
The Respondent is John Koontz of Lagos, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <na-biomerieux.com> (“Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 15, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent’s 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 Respondent of the Complaint, and the proceedings commenced on February 23, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 17, 2017.
The Center appointed Gregor Vos as the sole panelist in this matter on March 27, 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.
4. Factual Background
Complainant is a French company which owns several rights with regard to the sign BIOMERIEUX.
Complainant uses the company name “Biomerieux” in multiple countries in the world, including the United States (bioMérieux Inc.), the United Kingdom (bioMérieux UK Limited), Greece (bioMérieux Hallas S.A.) and France (bioMérieux SA).
Complainant holds the rights to the following trademarks (hereafter: the “Trademarks”) for various bio pharma solutions:
- International Trademark Registration No. 912430 for BIOMÉRIEUX, design, registered on January 3, 2007;
- International Trademark Registration No. 933598 for BIOMERIEUX, registered on June 12, 2007;
- Canadian Trademark Registration No. 733276 for BIOMÉRIEUX, design, registered on January 27, 2009;
- US Trademark Registration No. 3787782 for BIOMÉRIEUX, design, registered on May 11 2010;
- US Trademark Registration No. 3906321 for BIOMERIEUX, registered on January 18, 2011;
- Nigerian Trademark Registration No. F/TM/O/2016/73083 for BIOMERIEUX, registered on February 17, 2016;
- Nigerian Trademark Registration No. F/TM/O/2016/73084 for BIOMERIEUX, registered on February 17, 2016;
- Nigerian Trademark Registration No. F/TM/O/2016/73085 for BIOMERIEUX, registered on February 17, 2016;
- Nigerian Trademark Registration No. F/TM/O/2016/73087 for BIOMERIEUX, registered on February 17, 2016;
In addition, Complainant is the owner of the following domain names reflecting its trademarks:
The Domain Name was registered by Respondent on November 29, 2016.
5. Parties’ Contentions
Complainant asserts that the Domain Name is confusingly similar to Complainant’s Trademarks, as it integrates the Trademarks in its entirety which functions as its dominant element. Additionnally, the Domain Name contains the element “na”, which, according to Complainant, will be perceived as the geographical acronym standing for “North America”. Internet users will therefore be led to think that the Domain Name belongs and refers to the genuine business subsidiary of the Complainant in North America. According to Complainant, the risk of confusion is strengthened by the fact that the contested domain name is very close to its various domain names (specifically <biomerieuxna.com> and <biomerieux-usa.com>).
Complainant furthermore submits that Respondent does not hold any rights or legitimate interests with respect to the Domain Name. The Domain Name does not correspond to the name of Respondent and Respondent does not own any trademarks with regard to BIOMERIEUX. All trademarks of the sign BIOMERIEUX belong to Complainant or companies of its group. Respondent has never been given any permission to use the sign BIOMERIEUX in any way.
In addition, Complainant asserts there is no evidence of any legitimate noncommercial or fair use of the Domain Name, nor evidence available of any use in connection with a bona fide offering of goods and services. Complainant states that the Domain Name was only registered and used with a fraudulent purpose. Complainant claims that on the day of registration, Respondent has used the Domain Name to send an email to several bioMérieux subsidiaries in which he purported to be a high placed executive of a subsidiary of Complainant, requesting confidential information.
Finally, Complainant asserts that the Domain Name has been registered and used in bad faith. Respondent must have been aware of the existence of Complainant and its prior rights with regard to the Trademarks, as the Trademarks are well-known in the medical field and, moreover, Respondent used the Domain Name to send an email in which he pretended to be a high placed executive of a subsidiary of Complainant. Complainant considers that the Domain Name has only been registered and used by Respondent for the sole purpose to attract Internet users for commercial gain, by creating likelihood of confusion with Complainant and the Trademarks.
Consequently, Complainant is requesting transfer of the Domain Name to Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Based on paragraph 4(a) of the Policy, a request to transfer a domain name must meet three cumulative conditions:
i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii) 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.
Only if all three elements are sufficiently fulfilled, the Panel is able to grant the remedies requested by Complainant.
A. Identical or Confusingly Similar
Complainant is the holder of several trademark registrations for the word sign BIOMERIEUX and a figurative sign containing the word BIOMERIEUX. This includes International Trademark Registrations and registrations in the United States of America, Canada and Nigeria.
The threshold test for confusing similarity under the Policy involves a comparison between the Trademarks and the Domain Name to determine the likelihood of Internet user confusion. The generic Top Level Domains (“gTLD”) (e.g., “.com”) are typically irrelevant to the consideration of confusing similarity between a trademark and a domain name. The consensus panel view on this topic is that the gTLD in the domain name would usually be disregarded. This case does not contain any indications to the contrary.
The Domain Name incorporates the Trademarks in its entirety. Additionally, the Domain Name contains the prefix “na”. Considering the evidence put forward by Complainant, the Panel agrees with Complainant’s assertion that this element is a commonly used abbreviation for the geographical indication North America. According to the consensus Panel View, the addition of geographical or generic wording to trademarks in a domain name is not sufficient to avoid a finding of confusing similarity. This does not change the overall impression of the Domain Name as being connected to Complainant’s Trademarks.
Consequently, the Panel finds that the Domain Name and the Trademarks are confusingly similar in the sense of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainants bear the burden of proof of prima facie showing that the respondents have no rights or legitimate interests in the Domain Name. If a complainant succeeds in making its prima facie case, the burden of production shifts to the respondent, which will then have to come forward with appropriate allegations or evidence demonstrating a right or legitimate interest in the Domain Name (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
Paragraph 4(c) of the Policy provides circumstances in which such rights or legitimate interests to the domain name may be demonstrated. These circumstances include i) use of the domain name in connection with a bona fide offering of goods or services; ii) being commonly known by the domain name; and iii) making legitimate noncommercial or fair use of the domain name.
Complainant has provided evidence that Respondent has not met any of these circumstances. Furthermore, Complainant asserts that Respondent was not authorized or licensed to use the Trademarks. Moreover, Complainant has submitted evidence that Respondent has used the Domain Name fraudulently by using the Domain Name in falsely purporting to be an executive of a subsidiary of Complainant, requesting confidential information (“phishing”).
The Panel finds that this sufficiently establishes Complainant’s prima facie case. The burden of production therefore shifts to Respondent.
Respondent did not provide any evidence to the contrary.
Considering the file before it, the Panel holds that Respondent has no rights or legitimate interests in the Domain Name in the sense of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides circumstances which, if present, shall be evidence of the registration and use of a domain name in bad faith. It is apparent from the circumstances from the case at hand that Respondent must have known Complainant and its rights at the time of the registration of the Domain Name.
The Panel considers that even though the Domain Name does not resolve to an active website, Respondent could not make any legitimate use of the Domain Name due to its similarity with Complainant’s Trademarks. In this case, the Panel does not see any plausible contemplated active use of the disputed domain name by Respondent that would not be illegitimate (see, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).
Furthermore, the evidence submitted by Complainant shows that Respondent appears to have used the Domain Name to send emails to several of Complainant’s subsidiaries, claiming to be an executive of a subsidiary of Complainant. In these emails, Respondent appears to have requested confidential information (“phishing”). This indicates that Respondent intentionally registered and used the Domain Name in order to create confusion with Complainant and to commit fraud.
Consequently, the Panel holds that the Domain Name was registered and used in bad faith in the sense of paragraph 4(a)(iii) of the Policy.
Date: April 19, 2017