WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
bioMérieux v. PrivacyDotLink Customer 2976914 / Jonas Kropf
Case No. D2017-1316
1. The Parties
The Complainant is bioMérieux of Marcy L’Étoile, France, represented by Cabinet Plasseraud, France.
The Respondent is PrivacyDotLink Customer 2976914 of Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) / Jonas Kropf of Olten, Switzerland, self-represented.
2. The Domain Name and Registrar
The disputed domain name <biomerieux.xyz> is registered with Uniregistrar Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 7, 2017. On July 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 10, 2017, 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 July 11, 2017, 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 July 13, 2017. The Respondent sent an email communication to the Center on July 13, 2017.
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”). The Respondent sent an additional email communication to the Center on July 24, 2017.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 15, 2017. The Respondent sent two emails communication to the Center on August 6, 2017, and August 16, 2017. The Center informed the Parties of the commencement of the panel appointment process on August 16, 2017.
The Center appointed Jane Lambert as the sole panelist in this matter on August 23, 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
The Complainant is a biotechnology company incorporated in France with subsidiaries and distributors around the world. It offers diagnostic solutions such as reagents, instruments and software which are used in medicine and other fields. It is the registered proprietor of the trade mark BIOMERIEUX, which is registered for a range of goods in classes 1, 5, 9 and 10 in many countries and jurisdictions. For instance, the Complainant is the owner of the International Trademark Registration No. 933598 BIOMERIEUX (word mark), registered on June 12, 2007 for goods in classes 1, 5, 9 and 10. Evidence of the Complainant’s trade mark rights is annexed to its Complaint. The Complainant has also registered its corporate name BIOMERIEUX in various generic Top-Level Domains (“gTLDs”) and country code Top-Level Domains (“ccTLDs”).
Very little is known of the Respondent except the name and contact details that have been disclosed by the registrar of the disputed domain name.
The disputed domain name was registered on June 20, 2017. The Respondent has used the disputed domain name as a URL for a parking page displaying a number of sponsored links and searches.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name on the following grounds.
The Respondent registered the disputed domain name on June 10, 2017, which was long after the Complainant had registered the trade marks and domain names mentioned above.
The disputed domain name differs from the Complainant’s corporate name and trade marks only in the gTLD “.xyz” suffix which is to be disregarded for the purpose of these proceedings. The Complainant has cited previous UDRP cases to support that proposition. Because of the closeness between the disputed domain name and the Complainant’s trade marks, domain names and corporate name, the Complainant contends that Internet users will be led to believe that the Complainant owns or is somehow connected with the disputed domain name. Further, users wishing to do business with the Complainant or seeking information about the Complainant or its products will thereby be attracted to any website identified by such domain name.
The Complainant submits that the Respondent has no rights or legitimate interest in the disputed domain name for the following reasons. First, it has searched the SAEGIS database and found that all trade marks consisting of or including the word BIOMERIEUX belong to it or to one of its subsidiary companies. Secondly, it has never authorized the Respondent to use its mark and it has no connection with the Respondent. Thirdly, there is no evidence of any fair, noncommercial or bona fide use of the disputed domain name in connection with goods and services because:
- The website is a parking page from which the Respondent is likely to derive revenue; and
- The Respondent has offered the disputed domain name for sale on several marketplaces.
The Complainant argues that at the time of registration of the disputed domain name the Respondent could not have been acting with a bona fide intent, for the following reasons:
- The BIOMERIEUX trade mark is, inherently, highly distinctive and very rare; and
- That trade mark is particularly well known in medicine as the Complainant is a market leader in its field.
According to the Complainant, this is not the first time the Respondent has been in a domain name case. The Complainant has referred the panel to a proceeding under the Uniform Rapid Suspension (URS) Procedure in which the examiner ordered the domain names in dispute to be suspended for the duration of the registration.
As to use in bad faith, the Complainant relies on the use of the disputed domain name as a URL for a parking page that includes sponsored links which reproduce the Complainant’s trade marks BIOMERIEUX and VITEK and also redirect to third-party websites and the Respondent’s offer to sell the disputed domain name so soon after registration.
The Respondent has not filed a formal Response but he appears to have sent the following email to the Complainant’s lawyers on July 13, 2017, copying the Center, in response to their service of their amended Complaint:
would it be okay if you transfer the domain? Please let me know and i can provide you with the auth code. Else I can offer to delete the domain.
On July 24 the Respondent sent the following email to the Center, the Complainant’s representatives and others:
I offered several times that the domain can be transfered.
If I wan’t receive confirmation that you are interested in a domain transfer within the next five business days, I will deleate the domain.
Thanks for your understanding.”
On August 6 the Respondent sent a further email to the Center:
as stated already in previous emails I am fine if the domain will be transfered to the complaint.
Please let me know in case you need any further information i.e. Auth Code.
Please inform me once the case is closed.
Thanks a lot.
The Respondent sent one last email to the Center on August 16, 2017:
I responded several times that i am fine if the domain goes to the claiming party.
I really don’t understand the entire process. why do you make it so complicated if you could just start a transfer process and everything would be fine.
Thanks for your corporation.
6. discussion and findings
Paragraph 4(a) of the Policy requires a Complainant to prove:
(i) The disputed 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
In the administrative proceeding, the Complainant must prove that each of these three elements is present.
A. Identical or Confusingly Similar
The Panel is satisfied that the first element is present.
The Complainant has registered the word BIOMERIEUX as an international trade mark for:
- “Chemical products for use in industry and science, reagents and media for monitoring and detecting contaminants in industrial, agri-food, cosmetic and pharmaceutical products” in class 1;
- “Reagents and media for medical and veterinary diagnostic purposes” in class 5;
- “Scientific apparatus and instruments for monitoring and detecting contaminants in industrial, agri-food, cosmetic and pharmaceutical products; diagnostic apparatus and instruments not for medical use” in class 9; and
- “Apparatus and instruments for medical and veterinary diagnostic purposes” in class 10;
under registration number No. 933598, registered on June 12. 2007.
That registration is valid and subsisting in the Cayman Islands as well as the United Kingdom and Switzerland (country in which the Respondent has its domicile according to the information provided by the Registrar to the Center).
Disregarding the gTLD “.xyz”, the disputed domain name <biomerieux.xyz> is identical to the Complainant’s trade mark BIOMERIEUX.
B. Rights or Legitimate Interests
The Panel finds that the second element is present in light of the unrebutted prima facie case made out by the Complainant.
By registering the word BIOMERIEUX as a trade mark in many countries and jurisdictions of the world (including the country in which the Respondent has its domicile), it would be difficult for any other person to carry on business under that mark without the Complainant’s licence and the Complainant has already made clear that it has not granted such licence.
There is no evidence in the Complaint or the Respondent’s emails that any of the circumstances set out in para 4(c) of the Policy applies to this case.
The Respondent has had an opportunity to adduce evidence that it has a right or legitimate interest in the disputed domain name but has not taken that opportunity.
C. Registered and Used in Bad Faith
The Panel holds that the third element is present.
Paragraph 4(b) lists a number of circumstances which if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. One of those circumstances, stated in paragraph 4(b)(iv) of the Policy, is that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his web site or location or of a product or service on his web site or location.
The Panel has already found the disputed domain name to be identical to the Complainant’s trade mark. Because the disputed domain name is identical to the mark, Internet users seeking the Complainant’s site or information about the Complainant are likely to believe that the disputed domain name belongs to or is somehow connected with the Complainant. The Respondent has used the disputed domain name as a URL for a web page containing sponsored links and searches from which he is likely to derive pay-per-click revenue.
As there is no evidence to the contrary, the Panel is driven to the conclusion that the disputed domain name has been registered and used in bad faith.
The Panel further notes that the listing for sale of the disputed domain name, which is confusingly similar to the Complainant’s BIOMERIEUX trademark, may be considered evidence that the Respondent likely registered the disputed domain name primarily for the purpose of selling the disputed domain name to the Complainant, or to a competitor of the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs associated with the disputed domain name within the meaning of paragraph 4(b)(i) 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 disputed domain name, <biomerieux.xyz> be transferred to the Complainant.
Date: September 1, 2017