WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

bioMérieux v. Joseph Gullett, Digicel

Case No. D2017-2268

1. The Parties

The Complainant is bioMérieux of Marcy L’Etoile, France, represented by Cabinet Plasseraud, France.

The Respondent is Joseph Gullett, Digicel of Reading, Pennsylvania, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <biomerieuxglobal.com> is registered with 1&1 Internet AG (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2017. On November 15, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 24, 2017, 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.

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 30, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 2017.

The Center appointed Mladen Vukmir as the sole panelist in this matter on January 16, 2018. 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 Panel has determined the following non-contested facts:

(i) the disputed domain name <biomerieuxglobal.com> was created on October 18, 2017 (Annex 2 to the Complaint);

(ii) the Respondent is the registrant of the disputed domain name (Annex 2 to the Complaint and confirmed by the Registrar in verification response as of November 24, 2017);

(iii) the Complainant’s company name consists of the term BIOMERIEUX (Annex 1 to the Complaint);

(iv) the Complainant is the owner of a number of BIOMERIEUX trademark registrations and derivatives thereof, as listed and evidenced in the Complaint and Annex 7 to the Complaint, particularly:

Trademark

Trademark Office

Reg. No.

Registration Date

BIOMÉRIEUX

WIPO

912430

January 3, 2007

BIOMERIEUX

WIPO

933598

June 12, 2007

BIOMERIEUX

United States Patent and Trademark Office

3906321

January 18, 2011

BIOMÉRIEUX

United States Patent and Trademark Office

3787782

May 11, 2010

(v) The Complainant is also the owner of several API and VITEK trademark registrations, including:

Trademark

Trademark Office

Reg. No.

Registration Date

API

EUIPO

007294655

August 5, 2010

api

EUIPO

005523361

November 26, 2007

api

WIPO

1099671

October 7, 2011

VITEK

EUIPO

000562488

November 5, 1998

VITEK

WIPO

566262

January 31, 1991

VITEK

WIPO

977757

August 25, 2008

(vi) the Complainant is the registrant of a number of domains which incorporate the Complainant’s BIOMERIEUX trademark, including the domain name <biomerieux.com> that was first created on May 31, 1996 and domain name <biomerieux-usa.com> that was first created on March 31, 2000 (Annex 8 to the Complaint);

(vii) under the domain name <biomerieux.com>, the Complainant operates its official website, while under the domain name <biomerieux-usa.com>, the Complainant operates a website for the United States market (Annex 9 to the Complaint);

(viii) on October 23, 2017, the disputed domain name pointed to a parking website containing sponsored (pay-per-click (“PPC”)) links, reproducing the Complainant’s BIOMERIEUX, API and VITEK trademarks and/or pointing out to microbiology sites (Annex 13 to the Complaint);

(ix) although from the evidence submitted by the Complainant (Annex 12 to the Complaint) it arises that the disputed domain name did not have an active website at the time of filing of the Complaint, by inspecting the content of the website under the disputed domain name on January 24 and 25, 2018, the Panel determined that the website under the disputed domain name is active again and contains various PPC links, including those which reproduce the Complainant’s BIOMERIEUX and VITEK trademarks as well as links pointing out to microbiology sites;

(x) the Respondent used the disputed domain name to create an email address from which he sent emails to various employees of the Complainant on October 19, 2017, pretending to be one of the Complainant’s senior executives and requesting payment of invoices (Annex 15 to the Complaint);

(xi) in October of 2017, the Respondent has registered several domain names comprising of well-known trademarks and the descriptive/generic term, e.g., <airbuscooperation.com> and <sanoficooperation.com> (Annexes 20 and 21 to the Complaint).

5. Parties’ Contentions

A. Complainant

The Complainant, essentially, asserts that:

(i) the disputed domain name is identical and/or confusingly similar to the Complainant’s BIOMERIEUX trademark, because:

- the Complainant owns registered company names “BIOMERIEUX” in most countries of the world, including for example United States (bioMérieux Inc.), United Kingdom (bioMérieux UK Limited), Greece (bioMérieux Hellas S.A.) and France (bioMérieux SA). The Complainant’s company name in France is registered since 1988;

- the Complainant is the owner of many (about 200) BIOMERIEUX (word and/or device) trademarks all over the world, including international BIOMÉRIEUX trademark No. 912430 registered on January 3, 2007; international BIOMERIEUX trademark No. 933598 registered on June 12, 2007; United States BIOMERIEUX trademark No. 3906321 registered on January 18, 20111; and United States BIOMÉRIEUX trademark No. 3787782 registered on May 11, 2010;

- the Complainant and/or its subsidiaries own number of domain names registrations, including:

<biomerieux.com> registered on May 31, 1996; <biomerieux.fr> registered on June 4, 1996; <biomerieux-usa.com> registered on March 31, 2000; <biomerieux.net> registered on October 20, 2000; <biomerieux.org> registered on October 20, 2000; <biomerieuxindustry.com> registered on March 10, 2006; <biomerieuxdiagnostics.com> registered on March 10, 2006; <biomerieux.eu> registered on March 28, 2006; <biomerieux-korea.com> registered on June 21, 2010; <biomerieuxstore.com> registered on December 14, 2012; <biomerieux-nordic.com> registered on February 11, 2013; <biomerieuxconnection.com> registered on August 16, 2013; <biomerieuxinnovation.com> registered on September 28, 2015; <biomerieuxdirect.com> registered on June 6, 2016;

- the Complainant conducts business on the Internet on which its BIOMERIEUX trademarks have a strong presence. The Complainant operates the corresponding websites notably “www.biomerieux.com”, and at the local websites in numerous countries where it is present as example “www.biomerieux-usa.com” for the United States;

- the disputed domain name was registered on October 17, 2017, and therefore the Complainant’s rights on BIOMERIEUX (trademarks, company names and domain names) are prior to the disputed domain name;

- the disputed domain name is confusingly similar to the Complainant’s BIOMERIEUX trademark as it incorporates the same trademark of the Complainant in its entirety and as a dominant element;

- the disputed domain name only differs from the Complainant’s BIOMERIEUX trademark by addition of a suffix “global” which does not serve to distinguish the disputed domain name in any significant way. The same suffix is generic and/or descriptive and in addition to the Complainant’s trademark BIOMERIEUX is non-distinctive. In this regard, the Complainant invokes and cites earlier practice of the UDRP panels which have found a confusing similarity in similar cases including the suffix “global” in the contested domain names, as well in cases involving addition of generic/descriptive terms to a trademark;

- the generic Top-Level Domain (“gTLD”) “.com” suffix in the disputed domain name has to be ignored, as it does not avoid finding of the confusing similarity, and in this respect the Complainant refers the Panel to practice and position taken by panels in earlier UDRP cases;

(ii) the Respondent does not have rights or legitimate interests in the disputed domain name, as:

- the disputed domain name does not correspond to the name of the Respondent, nor any trademark registered in the name of the Respondent. According to the searches made on the trademarks database SAEGIS® on 185 trademark registers, there is no published and/or registered trademark in the name of “Joseph Gullet” (the Respondent) nor in the name of “digicel” (the Respondent’s organization);

- the Respondent has never been commonly known by the BIOMERIEUX trademark nor any variations thereof, and has never asked for, nor has been given, any permission by the Complainant to use the Complainant’s trademark BIOMERIEUX in any way;

- there is no evidence of any fair or noncommercial or bona fide use of the disputed domain name;

- at the date of the Complaint, the disputed domain name does not have an active website. Initially, the disputed domain name pointed to a parking website including sponsored links which reproduced the Complainant’s BIOMERIUEX, API and VITEK trademarks, and offering sponsored links related to, inter alia, microbiology activity;

- the disputed domain name was used and registered for fraudulent purpose, since the day after creation of the same, the Respondent sent the same email to several of the Complainant’s subsidiaries purporting to be the Corporate VP and Chief Financial Officer in the Complainant’s organization and asking the payment of invoice;

- the Respondent acted to mislead the consumers by using the Complainant’s trademarks on a parking page and to take advantage of the Complainant’s rights as he used them in his own mails pretending to be a member of the Complainant’s staff. Such maneuvers shows not only the absence of right on side of the Respondent, but rather represents the breach of the Complainant’s rights over the trademark BIOMERIEUX which has always been recognized by the UDRP panels as distinctive and well-known. In this respect, the Complainant points out to panel decisions inn earlier UDRP cases where the Complainant’s BIOMERIEUX trademark has been recognized as distinctive and well-known;

- the usurpation of the identity of one the main directors of the Complainant’s company confirms that the Respondent knew about the Complainant and its rights when he registered the disputed domain name;

- in other similar UDRP cases where the disputed domain name was used for fraudulent purpose, the panels have found that the respondent has no rights or legitimate interests in respect of the same domain names, and in this regard, the Complainant cites the relevant UDRP panel decisions.

(iii) the Respondent registered and is using the disputed domain name in bad faith, since:

- the Respondent knew the Complainant and its business at the time of registration of the disputed domain name and has therefore registered the same in bad faith, and with the intention of conducting fraudulent activities;

- the Complainant’s BIOMERIEUX trademark is inherently highly distinctive and well-known, as determined by panels in earlier UDRP cases. The BIOMERIEUX trademark is a fanciful designation, and to the best of the Complainant’s knowledge, it does not constitute an existing word in the dictionaries, not even a suggestive term. The Complainant is a famous leader in microbiology, providing diagnostics solutions (reagent, instruments, software) which determine the source of disease and contamination. It is a multinational company present in more than 150 countries, by means of 42 subsidiaries around the world. Its leadership in the field of in vitro diagnostics lasts for 50 years. In 2016, its revenues reached EUR 2,103 billion with 90% of sales outside France;

- the registration of the disputed domain name by the Respondent could not be a coincidence, and the Respondent was fully aware of the Complainant and its rights in the BIOMERIUEX trademark when the Respondent registered the disputed domain name and sent the fraudulent email because the Respondent pretended to be one of the Complainant’s directors and the disputed domain name was initially pointed to a parking page including sponsored links which reproduced not only the Complainant’s BIOMERIEUX trademark, but also the Complainant’s API and VITEK trademarks;

- the Respondent’s bad faith is also evidenced by the fact that this obviously not the first time he fraudulently registered domain names using major companies’ names/trademarks. Search by registrant name for the Respondent and the email he provided as contact, shows that the Respondent has registered in October of 2017 several domain names comprising of well-known trademarks and the descriptive/generic term, e.g., <airbuscooperation.com> and <sanoficooperation.com>;

- the contested domain name does not lead to an active website at the time of filing the Complaint, and panels in earlier UDRP cases have held that inaction/passive holding can in certain circumstances constitute bad faith, and in this respect the Complainant cited the relevant decisions of UDRP panels;

- the disputed domain name initially redirected to an active website. This was not a bona fide use because it led to a parking page including commercial links which reproduced the Complainant’s BIOMERIEUX, API and VITEK trademarks. Such use sought to take unfair advantage of the value of the trademark because it displayed links related to activity of the Complainant and to the products that the Complainant offers under said trademark. The Respondent has therefore used the contested domain name in a manner, which falsely suggested an association with the Complainant and its goods, unfairly benefiting from the Complainant’s goodwill;

- besides that, the disputed domain name was in fact used for fraudulent purpose by the Respondent to send emails in the name of one of the Complainant’s leadership team members in order to solicit payments of fraudulent invoices and to obtain advantages, relying on the reputation and seriousness of the Complainant’s name and trademark BIOMERIEUX. In this regard, the Complainant cites the relevant panel decisions in earlier UDRP cases which have considered that such way of action constitutes bad faith.

(iv) the Complainant accordingly request the Panel to order transfer of the disputed domain name to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Panel now proceeds to consider this matter on the merits in light of the Complaint, the lack of the Response, the Policy, the Rules, the Supplemental Rules and other applicable legal authority pursuant to paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the disputed domain name, each of the following:

(i) the disputed domain name is confusingly similar to a trademark 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.

A. Identical or Confusingly Similar

Primarily, the Panel emphasizes that under general consensus view, the mere fact of ownership of a registered trademark by the complainant is generally sufficient to satisfy the threshold requirement of having trademark rights (see section 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)).

The Complainant has submitted evidence to show that it is the owner of a number of BIOMERIEUX trademarks, including two BIOMERIEUX trademarks registered in the United States where the Respondent is apparently located.

Moreover, it is well established that the threshold test for confusing similarity under the UDRP involves a comparison between the complainant’s trademark and the disputed domain name to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the disputed domain name, with the addition of descriptive or geographical terms typically being disregarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name, and 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 confusingly similar to that mark for purposes of UDRP standing (see sections 1.7 and 1.8 of WIPO Overview 3.0).

After performing the side-by-side comparison of the domain name and the textual components of the relevant trademark, it is evident to this Panel that the disputed domain name incorporates the Complainant’s BIOMERIEUX trademark in its entirety, and that the same trademark is clearly recognizable as such within the disputed domain name.

The Panel must further answer the question, whether adding the term “global” to the Complainant’s BIOMERIEUX trademark in the disputed domain name is sufficient to prevent the confusing similarity of the disputed domain name with the Complainant’s BIOMERIEUX trademark.

With respect to the above, this Panel upholds the Complainant’s contention that the addition of the term “global” is insufficient to prevent a finding of confusing similarity.

Namely, the term “global” is clearly generic and/or descriptive and as such is not sufficient to overcome the confusing similarity with respect to the Complainant’s BIOMERIEUX trademark which remains the dominant and only distinctive element in the disputed domain name.

Prior UDRP panels have found confusing similarity in a number of earlier cases based on the circumstances involving domain names comprised of a well-known trademark and a geographic/generic term, including the term “global”. Confusing similarity was found in those instances because the generic/descriptive term added did nothing to overcome the strong mental association created by the trademark itself. See particularly, Arkema France v. Arkema Global, Arkema Group, Arkema Corp and Arkema Cloud, WIPO Case No. D2014-2010; Louis Dreyfus Trademarks B.V. v. David Rosenberg, Louis Dreyfus Commodities, WIPO Case No. D2014-2253; Allianz SE v. Antonio Porchia, WIPO Case No. D2010-0694; Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768; Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923; Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434.

With respect to the applicable gTLD “.com” suffix in the disputed domain name, it is generally accepted that it may be disregarded under the confusing similarity test (see section 1.11 of the WIPO Overview 3.0).

For all the foregoing reasons, the Panel finds that the Complainant has satisfied the requirement set forth in paragraph 4(a)(i) of the Policy, i.e., has proven that the disputed domain name is confusingly similar to its BIOMERIEUX trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:

“(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

As noted by previous UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, and as summarized in section 2.1 of the WIPO Overview 3.0: “[…]While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element […]”.

In the present case, the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests to the disputed domain name.

Namely, the Complainant has established that it is the owner of a number of BIOMERIEUX trademarks in various jurisdictions, as well as that it has used the same trademarks widely on the market including through the Complainant’s website “www.biomerieux.com”, so that it may be recognized as well-known within relevant circles. Panels in earlier UDRP case have found the Complainant’s BIOMERIEUX trademark to be distinctive, highly unique and/or well-known (see particularly: bioMérieux v. Nish Patel –Ready Asset, WIPO Case No. D2014-0899; bioMérieux v. Domain Administrator - Dvlpmnt Marketing, Inc, WIPO Case No. D2014-1795; bioMérieux v. anonymous, WIPO Case No. D2016-1353; and bioMérieux v. Name Redacted, WIPO Case No. D2017-1595).

The Panel observes that there is neither any relation, disclosed to the Panel nor otherwise apparent from the records, between the Respondent and the Complainant, nor does it arise that the Complainant has ever licensed or otherwise permitted the Respondent to use its BIOMERIEUX trademarks, or to apply for or use any domain name incorporating the same trademarks.

Furthermore, there is no evidence that the Respondent has registered a BIOMERIEUX trademark in his name, or that the Respondent has been commonly known by the disputed domain name.

In addition, there is no evidence in the case file or otherwise apparent to the Panel that the Respondent has been using the disputed domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers.

To the contrary, from the evidence presented by the Complainant and insight into the website under the disputed domain name as performed by the Panel on January 24 and 25, 2018, it arises that the Respondent used the disputed domain name to create a parking website containing sponsored (PPC) links reproducing the Complainant’s BIOMERIEUX, API and VITEK trademarks as well as sponsored (PPC) links pointing out to microbiology sites, which may be considered as competing to those provided by the Complainant who is involved in microbiology and providing of diagnostic solutions (reagents, instruments, software).

Moreover, from the evidence presented by the Complainant, it arises that the Complainant used the disputed domain name to create an email address from which he sent emails to various employees of the Complainant on October 19, 2017, falsely passing off as one of the Complainant’s senior executives and requesting payment of fraudulent invoices.

Having in mind the renown of the Complainant and its BIOMERIEUX trademarks, in this Panel’s opinion it is more likely than not that the Respondent was well aware of the Complainant, its business and trademarks, and deliberately chose to include the Complainant’s BIOMERIEUX trademarks in the disputed domain name, all in order to trade on the renown of the Complainant’s trademarks and to achieve commercial gain by misleadingly diverting consumers to the Respondent’s website and sponsored links contained therein as well as to solicit payment of fraudulent invoices by the Complainant’s employees.

Such use of the disputed domain name by the Respondent cannot be considered as a legitimate noncommercial or fair use nor does it constitute a bona fide offering of goods and services. This is in line with views taken by panels in earlier UDRP cases.

Namely, panels have found that the use of a domain name to host a parking page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users (see section 2.9 of WIPO Overview 3.0; and relevant panel decisions in UDRP cases, in particular, America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374; Canadian Tire Corporation, Limited v. Texas International Property Associates NA NA, WIPO Case No. D2007-1407; Get Away Today.Com Inc. v. Warren Gilbert, WIPO Case No.

DCO2010-0021 and Overstock.com, Inc. v. Metro Media, WIPO Case No. DME2009-0001). Having in mind the renown of the Complainant’s BIOMERIUEX trademark, it is obvious to this Panel that in the present case the disputed domain name capitalizes heavily from inclusion of the Complainant’s BIOMERIUEX trademark in the disputed domain name and serves as a signal to the unwary customers.

Furthermore, panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent (see sections 2.13 and 3.4. of the WIPO Overview 3.0; and relevant panel decisions in UDRP cases, particularly Spoke Media Holdings, Inc. v. Andrey Volkov, WIPO Case No. D2010-1303; DivX, LLC v. PrivacyProtect.org / Gerente de Dominia, CSRUS Enterprises, WIPO Case No. D2011-0600; Publix Asset Management Company v. WhoisGuard, Inc. / Entrep, David Levey / Mr. Dunaway, WIPO Case No. D2013-1349; Accor v. SANGHO HEO / Contact Privacy Inc., WIPO Case No. D2014-1471; Haas Food Equipment GmbH v. Usman ABD, Usmandel, WIPO Case No. D2015-0285; Sydbank A/S v. Syd Bank, WIPO Case No. D2015-0324; KPMG LLP v. Whoisguard, Inc., WIPO Case No. D2016-0051; and Triple-S Management Corporation v. Whois Privac Protection Services Inc. / Nathan Stringer, WIPO Case No. D2016-0008. Falsely impersonating one of the Complainant’s senior executives in order to solicit payments of fraudulent invoices from the Complainant’s employees is in the Panel’s opinion illegal activity and as such cannot be considered as a legitimate noncommercial or fair use nor does it constitute a bona fide offering of goods and services.

Accordingly, the Panel finds that the requirements set forth in paragraph 4(a)(ii) of the Policy have been fulfilled by the Complainant’s making the prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name and by the Respondent’s failing to produce sufficient arguments or evidence to the contrary.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular, but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:

(i) circumstances indicating that the holder has registered or has 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 the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has 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 holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 holder’s website or location or of a product or service on the holder’s website or location.

Owing to any other evidence to the contrary, the Panel accepts the Complainant’s arguments substantiated by evidence that the Respondent has registered and used the disputed domain name in bad faith.

First, this Panel holds that the Respondent was well aware of the Complainant, its business and/or the Complainant’s BIOMERIEUX and other trademarks, because:

- the Complainant’s BIOMERIEUX trademark is distinctive, well known in relevant circles and does not constitute a dictionary term in any of the languages known to the Panel, including English, which is spoken in the USA where the Respondent is apparently located;

- the disputed domain was used to create a parking website containing sponsored (PPC) links reproducing the Complainant’s BIOMERIEUX, API and VITEK trademarks as well as sponsored (PPC) links pointing out to microbiology sites;

- the Complainant used the disputed domain name to create an email address from which he sent emails to various employees of the Complainant on October 19, 2017, pretending to be one of the Complainant’s senior executives and requesting payment of fraudulent invoices.

It is impossible to imagine that the Respondent would create a website reproducing not only the Complainant’s BIOMERIEUX trademark, but also two additional trademarks of the Complainant; or that the same website would contain links to microbiology sites, which is one of the areas in which the Complainant is involved; or that the Respondent would falsely impersonate himself as one of the Complainant’s senior executives and write fraudulent emails to the Complainant’s employees, without being aware of the Complainant, its business and/or the Complainant’s trademarks. Especially since the fraudulent emails were sent to particular employees of the Complainant, which required the Respondent to be well acquainted with the Complainant’s business or to do a research of the Complainant’s business. Earlier UDRP panels have found bad faith registration based in part on proof that the respondent “knew or should have known” about the existence of the complainant’s trademark (see section 3.2.2 of the WIPO Overview 3.0).

Second and as already discussed above, the Respondent used the disputed domain name to create an email address from which he sent emails to various employees of the Complainant on October 19, 2017, falsely pretending to be one of the Complainant’s senior executives and requesting payment of fraudulent invoices. In this Panel’s view, such fraudulent conduct of the Respondent is clear evidence of the Respondent’s bad faith in registration and using of the disputed domain name. Panels in earlier UDRP cases have held that the use of a domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers and employees constitutes bad faith on the side of the Respondent (see section 3.4 of the WIPO Overview 3.0 and relevant panel decisions in earlier UDRP cases especially KPMG LLP v. Whoisguard, Inc., WIPO Case No. D2016-0051; CitiusTech Healthcare Technology Private Limited v. VistaPrint Technologies Ltd, WIPO Case No. D2015-2186; and bioMérieux v. John Koontz, WIPO Case No. D2017-0299).

Third, the disputed domain was used to create a parking website containing sponsored (PPC) links reproducing the Complainant’s BIOMERIEUX, API and VITEK trademarks as well as sponsored (PPC) links pointing out to microbiology sites which may be considered as competing to those provided by the Complainant who is involved in microbiology and providing of diagnostic solutions (reagents, instruments, software). Having in mind the renown of the Complainant and its trademarks, it is obvious to this Panel that by using the disputed domain name, the Respondent has intentionally attempted to attract Internet users to the website to which the disputed domain name resolves, for commercial gain by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the same website. The presence of the Complainant’s BIOMERIEUX trademark in the disputed domain name certainly bears weight as a signal to the potential customers and the disputed domain name clearly benefits from the same.

For that reason, the Panel finds the provisions of paragraph 4(b)(iv) of the Policy to be especially applicable in this case, since the Internet users might be misled about the source, sponsorship, affiliation, or endorsement of the website to which the disputed domain name resolves. See, e.g., the following decisions issued by panels in earlier UDRP proceedings:

(i) Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031: “The Panel also believes that in using the disputed domain names to redirect Internet users to websites that host links to external websites, including websites of Complainant’s competitors, the Respondent has registered and used the domain names in bad faith. Said use of the contested domain names shows the intention of disrupting the Complainant’s business and/or for the purpose of intentionally attempting to attract, for commercial gain, Internet users to its websites, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of its websites”;

(ii) PepsiCo, Inc. v. Ali Khan, WIPO Case No. D2004-0292: “The fact that the Respondent elected to register a domain name substantially comprising the ‘PEPSI’ trademark indicates that it was a deliberate act to mislead consumers into believing there was a connection with the Complainant”;

(iii) Associazione Radio Maria v. Privacy Protection Service, Communigal Communication Ltd / Gustavo Winchester, WIPO Case No. D2015-1556: “The Panel finds that the Complainant’s trademark is well-known, and, further, that it is highly unlikely that the Respondent was unaware of the Complainant’s trademark as the Disputed Domain Name is linked to a parking page containing several links to radio stations and live broadcast services. The Panel finds that the Disputed Domain Name was registered in bad faith. With respect to the use, the Respondent has used the Disputed Domain Name to divert visitors to the website for its own commercial benefit. The Respondent registered the Disputed Domain Name in order to gain commercial benefit. This constitutes evidence of registration and use of the Disputed Domain Name in bad faith in accordance with paragraph 4(b)(iv) of the Policy”.

Fourth, from the evidence submitted by the Complainant, it arises that the Respondent has engaged in pattern of domain name registrations comprising of well-known trademarks and the descriptive/generic term e.g. <airbuscooperation.com> and <sanoficooperation.com>, which further strengthens the Panel’s finding of bad faith on the side of the Respondent in registration and use of the disputed domain name.

Given the above, the Panel determines that the disputed domain name has been registered and is being used in bad faith and that the Complainant has fulfilled the third element under paragraph 4(a) 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 <biomerieuxglobal.com> be transferred to the Complainant.

Mladen Vukmir
Sole Panelist
Date: January 28, 2018