WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
bioMérieux v. Cimpress Schweiz GmbH / VistaPrint Technologies Ltd
Case No. D2018-1758
1. The Parties
The Complainant is bioMérieux of Marcy L'Etoile, France, represented by Cabinet Plasseraud, France.
The Respondents are Cimpress Schweiz GmbH of Zurich, Switzerland / VistaPrint Technologies Ltd of Hamilton, Bermuda, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The Disputed Domain Names <biamerieux.com>, <biomereiux.com>, <biomericux.com>, <biomerieuxx.com>, <biomerievxgroup.com>, <biomeriuex.com> and <bi0merieux.com> are registered with Tucows Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 2, 2018. On August 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On August 3, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact. The Complainant filed an amended Complaint on August 16, 2018.
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 August 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 7, 2018.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on September 20, 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 Complainant is a French company, which operates in the field of microbiology and diagnostic solutions which determine the source of disease and contamination to improve patient health and ensure consumer safety. The Company is present in more than 150 countries.
The Complainant is the owner of numerous registrations throughout the world for the trademark BIOMERIEUX including, among others:
- BIOMERIEUX (& Design), International Trademark No. 912430, registered on January 3, 2007;
- BIOMERIEUX, Mongolian Trademark No. 933598, registered on June 12, 2007;
- BIOMERIEUX, United States of America Trademark No. 3906321, registered on January 18, 2011; and
- BIOMERIEUX (& Design), United States of America Trademark No. 3787782, registered on May 11, 2010.
The Complainant is also the owner of many domain names which include the trademark BIOMERIEUX registered in generic Top-Level Domains ("gTLD") and country code Top-Level Domains ("ccTLD"). Some of them are:
- <biomerieux.com> registered on May 31, 1996,
- <biomerieux.fr> registered on June 4, 1996,
- <biomerieux.org> registered on October 20, 2000.
The Respondent Cimpress Schweiz GmbH registered the following Disputed Domain Names:
- <biomerievxgroup.com> registered on October 25, 2017
- <biomericux.com> registered on October 31, 2017
- <bi0merieux.com> registered on November 27, 2017
- <biomerieuxx.com> registered on November 28, 2017
- <biamerieux.com> registered on December 13, 2017
The Respondent VistaPrint Technologies Ltd registered the following Disputed Domain Names:
- <biomeriuex.com> registered on September 10, 2015
- <biomereiux.com> registered on September 15, 2016.
The Disputed Domain Names are currently inactive. However, the Complainant provided evidence that the Disputed Domain Name <biomereiux.com> was used to create "spoof" emails.
5. Parties' Contentions
The Complainant's contentions can be summarized as follows:
As a preliminary matter, the Complainant requests the consolidation of proceedings against multiple domain names, considering that the Disputed Domain Names share the same email address, the technical contact details for six Disputed Domain Names are identical, the Disputed Domain Names are registered with the same Registrar, the Disputed Domain Names are built in the same manner (i.e. made of typos of the Complainant's trademark BIOMERIEUX) and the Respondents are actually companies from the same group named "Cimpress".
Identical or confusingly similar
The Complainant argues that the Disputed Domain Names are confusingly similar to the BIOMERIEUX trademark.
With respect to the Disputed Domain Name <biomerievxgroup.com>, the same is composed of the trademark BIOMERIEUX, with the only difference of the letter "v" instead of "u". The Complainant has argued that the term "group" is a descriptive term which has not distinctive power. Further, the addition of the term "group" is not sufficient enough to avoid any risk of confusion with the Complainant's trademark. On the contrary, this addition increases the confusion as Internet users will assume that the Disputed Domain Name is associated with the Complainant, not to mention that the Complainant owns the domain name <biomerieuxgroup.com> which is almost identical to the Disputed Domain Name <biomerievxgroup.com>.
Regarding the following Disputed Domain Names <biomericux.com>, <bi0merieux.com> and <biamerieux.com>, these are composed of the trademark BIOMERIEUX with only one letter difference. These letter differences are visually similar, being easy to confuse.
As for the Disputed Domain Names <biomeriuex.com> and <biomereiux.com>, these are composed of the trademark BIOMERIEUX but with the inversion of the letters, in the first one the inversion of the letter EU by UE and in the other one the letter IE by EI.
In addition, the Disputed Domain Name <biomerieuxx.com> is confusingly similar to the BIOMERIEUX trademark as it fully incorporates the latter, being the only difference the additional "x" at the end.
These minor differences between BIOMERIEUX and the Disputed Domain Names does not change the overall impression crated by them, since the dominant feature of the Disputed Domain Names is the Complainant's trademark. Furthermore, the generic Top-Level Domain ("gTLD") ".com" has to be ignored since does not avoid the confusing similarity.
As a consequence, Internet users who try to reach the Complainant's main website can easily make a mistake in the spelling, and will reach to Disputed Domain Names thinking that they are on the Complainant's website.
Rights or legitimate interests
The Complainant submits the Disputed Domain Names do not correspond to the name of the Respondents nor to any trademark registered in its name.
Furthermore, the Complainant alleges that the Respondents are not affiliated or related to the company in any way, nor has the Complainant granted any licenses or other rights to use the trademark BIOMERIEUX in the Disputed Domain Names or to register any domain name which incorporates the Complainant's trademark.
The Respondents are not using the Disputed Domain Names with a bona fide offering of goods or services as all the Disputed Domain Names do not have any active website and redirect to a default page.
Moreover, the Disputed Domain Name <biomereiux.com> was used to create "spoof" emails. The emails were sent to the Complainant's distributors in order to request about bank transfers. The Complainant states that this behavior is fraudulent and far from being a bona fide offering of goods or services.
Registration and use in bad faith
The Complainant alleges that the Respondents have intentionally registered and is using the Disputed Domain Names in bad faith with the intention of conducting fraudulent activities.
The Disputed Domain Names were registered between 2015 and 2017 while the trademark BIOMERIEUX exists since the 1980's, well before the registration of the Disputed Domain Names.
Furthermore, the designations of the Disputed Domain Names do not constitute existing words and do not correspond to any registered trademark. So it is implausible that the Respondents have chosen the word "biomerievxgruop", "biomerecux", "bi0merieux", "biomerieuxx", "biamerieux"," biomeriuex" and "biomereiux" which have no particular meaning and differing from the Complainant's trademark only by a minor difference.
The trademark BIOMERIEUX has been well known in the medical field for decades, this renown character has been recognized by previous UDRP cases at several occasions (bioMérieux and bioMérieux, Inc. v. Holdings, Ozweb, WIPO Case No. D2010-0779: bioMérieux, bioMérieux, Inc. v. dasilva, Radius, WIPO Case No. D2011-2295; and bioMérieux v. Nish Patel - Ready Asset, WIPO Case No. D2014-0899, among others).
Based on what has been stated in the paragraphs above, it is clear that the Respondent was aware of the existence of the Complainant and its trademark.
The Respondent did not reply to the Complainant's contentions.
6. Discussions and Findings
6.1. Preliminary Matter: Consolidation of Respondents
Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") states the following with respect to complaints consolidated against multiple respondents:"Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario". Paragraph10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.
The Complainant submitted a request for the consolidation of proceedings against multiple domain names.
In the instance case, the evidence shows that each of the Disputed Domain Names adopted a common structure: each of them consists of the Complainant's trademark BIOMERIEUX but with different typos, being all of them phonetically and visually similar. The Disputed Domain Names share the same email address […]@vistaprint.com in the registrant, administrative and technical contacts. The Disputed Domain Names are registered at the same Registrar "Tucows". The registrant names Cimpress Schweiz GmbH and VistaPrint Technologies Ltd are companies from the same group "Cimpress". Moreover, all of the Disputed Domain Names are currently inactive.
Taken all of this into consideration, the Panel finds that the Disputed Domain Names are subject to common control for the purposes of the Policy. The Respondent has not denied these assertions because of its default, thus the Panel permits the consolidation of the proceedings.
6.2. Substantive Matters
Paragraph 4(a) of the Policy lists the three elements which the Complainant must satisfy with respect to the Disputed Domain Names at issue in this case:
(i) The Disputed Domain Names are 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 Names; and
(iii) the Disputed Domain Names have been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Based on the evidence submitted, the Panel finds that the Disputed Domain Names <biomerievxgroup.com>, <biomericux.com>, <bi0merieux.com>, <biomerieuxx.com>, <biamerieux.com>, <biomeriuex.com> and <biomereiux.com> are confusingly similar to the Complainant's trademark BIOMERIEUX. The Disputed Domain Names incorporate single letter changes to the Complainant's trademark with the effect that the Disputed Domain Names sound and look like the Complainant's BIOMERIEUX trademark.
Thus, the Panel finds that this is a typical typosquatting case, since the Disputed Domain Names reproduce the Complainant's trademark in its entirety but with a minor alteration of the letters which does not change the overall impression that the Disputed Domain Names are the same to the Complainant´s trademark.
Therefore, the Panel concludes that the Complainant has satisfied the first requirement of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Names:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue.
There is no evidence of the existence of any of those rights or legitimate interests. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the trademark in the Disputed Domain Names. Furthermore, the Respondent is not known by the Disputed Domain Names.
The Respondent has failed to show that it has acquired any rights with respect to the Disputed Domain Names. Moreover, it had the opportunity to demonstrate its rights or legitimate interests, but it did not reply to the Complainant's contentions.
As such the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. 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 fact that the Disputed Domain Names are nearly identical to the Complainant's trademark, having a similar visual and phonetical appearance, establishes that the Respondent was aware of the Complainant's trademark when registering the Disputed Domain Names.
Moreover, from the Disputed Domain Name <biomereiux.com> was used to create "spoof" emails pretending to be employees of the Complainant. This particular conduct confirms that the Respondent knew the Complainant and its trademark rights, and is a clear case of use in bad faith.
Furthermore, it is important to highlight that the present case is a "typosquatting" case being this, a strong evidence of the Respondent's bad faith. The WIPO Overview 3.0 states:
"A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element.
(…) Examples of such typos include (i) adjacent keyboard letters, (ii) substitution of similar-appearing characters (e.g., upper vs lower-case letters or numbers used to look like letters), (iii) the use of different letters that appear similar in different fonts, (iv) the use of non-Latin internationalized or accented characters, (v) the inversion of letters and numbers, or (vi) the addition or interspersion of other terms or numbers".
For that reason, the Panel concludes that Respondent registered the Disputed Domain Names in bad faith since is clear that the Respondent deliberately registered the Disputed Domain Names as a misspelling of the Complainant's trade/service mark and with a view to deceiving Internet users for commercial gain.
In the case at hand, in view of the Respondent's registration of multiple domain names confusingly similar to the Complainant's well-known trademark, the absence of any documented rights or legitimate interests of the Respondent in the Disputed Domain Names and its failure to respond to the Complaint, the Panel finds that the Respondent's lack of use of the remaining Disputed Domain Names also amounts to bad faith.
Moreover, the Disputed Domain Names are currently inactive. As it has been the case in several previous UDRP cases, the fact that the Disputed Domain Names are currently inactive does not prevent a finding of bad faith use and does not change the Panel's views in this respect.
Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondents have registered and used the Disputed Domain Names in bad faith.
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 <biamerieux.com>, <biomereiux.com>, <biomericux.com>, <biomerieuxx.com>, <biomerievxgroup.com>, <biomeriuex.com> and <bi0merieux.com> be transferred to the Complainant.
Pablo A. Palazzi
Date: October 5, 2018