WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
bioMérieux v. Above.com Domain Privacy / Transure Enterprise Ltd, Host Master
Case No. D2018-2624
1. The Parties
The Complainant is bioMérieux of Marcy L’Etoile, France, represented by Cabinet Plasseraud, France.
The Respondent is Above.com Domain Privacy of Beaumaris, Australia / Host Master, Transure Enterprise Ltd, of Wilmington, Delaware, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <biomereux.com> is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2018. On November 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 2018, 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 November 17, 2018 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 November 21, 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 November 22, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2018.
The Center appointed William P. Knight as the sole panelist in this matter on December 19, 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 multinational diagnostic and immunotherapy pharmaceutical company.
In 1897, Marcel Mérieux, who had studied with Louis Pasteur, founded a laboratory in Lyon where he developed the first anti-tetanus sera. He called it Institut Mérieux, which continued research and the development of products in the area of vaccinology and the diagnosis of infectious diseases. Under the direction of his son, Dr. Charles Mérieux, and later his grandson, Alain Mérieux, Institut Mérieux grew to become world leader in human and veterinary vaccines. The Complainant is one of the successors in title to the Institute concentrating on diagnostics and immunotherapy businesses. In 2014, Alexandre Mérieux, Marcel’s great-grandson, became CEO of the Complainant and was later appointed its Board Chairman and CEO.
The Complainant continues to have its headquarters in the Lyon area, at Marcy l’Etoile, but now has affiliates in many countries in the world, including the United States and Australia.
The Complainant is the registered proprietor, inter alia, of numerous BIOMERIEUX registered trademarks including the following:
- International trademark BIOMERIEUX (+device) number 912430, registered on January 3, 2007 in classes 1, 5, 9, and 10 covering European Union, Australia, Japan, Republic of Korea, Turkey, Switzerland, China, Croatia, Serbia, Russian Federation, Ukraine, Algeria, and Singapore;
- International trademark BIOMERIEUX (word) number 933598, registered on June 12, 2007 in classes 1, 5, 9, and 10 under the priority of the French trademark registration no. 06 3 470 357 having a priority date of June 1 2007 covering many countries;
- United States trademark BIOMÉRIEUX (+device) number 3787782 filed on June 13, 2007, registered on May 11, 2010 in classes 1, 5, 9, and 10;
- United States trademark BIOMERIEUX (word) number 3906321 filed on September 18, 2009, registered on January 18, 2011 in classes 1, 5, 9, and 10;
The Complainant also owns and operates a website at “www.beiomerieux.com”, registered on May 31, 1996, and it or a subsidiary has a number of other pertinent domain name registrations, including:
- <biomerieux.fr> registered on June 4, 1996
- <biomerieux.ch> registered on June 6 2000
- <biomerieux-usa.com> registered on March 31, 2000
- <biomerieux.net> registered on October 20, 2000
- <biomerieux.org> registered on October 20, 2000
- <biomerieuxusa.com> registered on April 4, 2001
- <biomerieux.dk> registered on August 21, 2001
- <biomerieuxindustry.com> registered on March 10, 2006
- <biomerieux.eu> registered on March 28, 2006
- <biomerieuxstore.com> registered on December 14, 2012
- <biomerieux-nordic.com> registered on February 11, 2013
- <biomerieuxconnection.com> registered on August 16, 2013
- <biomerieuxdirect.com> registered on June 6, 2016
- <biomerieuxgroup.com> registered on March 31, 2017
The disputed domain name <biomereux.com> was registered on November 20, 2011 and has never been used for any purpose, other than as a “parking page”, frequently with links to blood diagnostic businesses and stating that the domain is name is for sale.
5. Parties’ Contentions
In accordance with paragraph 4(a) of the Policy, the Complainant asserts, inter alia, as follows:
(i) that the disputed domain name is confusingly similar to the Complainant’s trademark BIOMERIEUX;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name;
(iii) that the disputed domain name has been registered and is being used in bad faith.
In respect of paragraph 4(a)(i), the Complainant provides supporting evidence that the BIOMERIEUX mark has been established globally since long prior to the date on which the Respondent registered the disputed domain name, including the findings of a number of panels in previous determinations: bioMérieux and bioMérieux, Inc. v. Holdings Ozweb, WIPO Case No. D2010-0779 (July 13, 2010); bioMérieux and bioMérieux, Inc. v. dasilva, Radius, WIPO Case No. D2011-2295 (February 20, 2012); bioMérieux v. Nish Patel – Ready Asset, WIPO Case No. D2014-0899 (July 18, 2014); bioMérieux v. Domain Administrator - Dvlpmnt Marketing, Inc, WIPO Case No. D2014-1795 (December 1, 2014); bioMérieux v. anonymous, WIPO Case No. D2016-1353 (August 16, 2016); bioMérieux v. Name Redacted, WIPO Case No. D2017‑1595 (October 11, 2017); bioMérieux v. Joseph Gullett, Digicel, WIPO Case No. D2017‑2268 (January 28, 2018); bioMérieux v. Privacy.co.com, Inc Privacy ID# 769296, WIPO Case No. D2018-0972 (June 21, 2018); and, bioMérieux v. Cimpress Schweiz GmbH / VistaPrint Technologies Ltd, WIPO Case No. D2018-1758 (October 5, 2018).
In support of paragraph 4(a)(ii), the Complainant contends that:
(a) the disputed domain name is not being used for any purpose other than as a “parking page” that offers links to third parties offering related services to the products of the Complainant;
(b) there is nothing in the name or other details of the Respondent to indicate that it is known by or uses “biomereux” as a trademark or otherwise for any purpose; and
(c) the Respondent has no, and has never had any, connection with the Complainant and is not licensed or authorized by the Complainant to use the disputed domain name.
The Complainant further asserts that the disputed domain name is confusingly similar to the Complainant’s BIOMERIEUX mark in that it differs only in the lack of a single vowel i” and that this is insufficient to distinguish the disputed domain name materially from the Complainant’s trademark. The Complainant says this is just “typosquatting”, the use of a common mis‑spelling of a trademark by those using the Internet in search of the Complainant in order to divert such Internet users to competing services; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9.
The Complainant specifically cites a number of decisions under the Policy finding that the omission of a single letter can create confusing similarity to a contested domain name:
- Akbank Turk A.S. v. Mehmet Guven,
WIPO Case No. D2018-1531
- Compagnie de Saint-Gobain v. Online Admin, DotBadger Domains, WIPO Case No. D2018-1309
- Compagnie Générale des Établissements Michelin v. Above.com Domain Privacy / Direct Navigation Data Inc., WIPO Case No. D2012-1448
- Clarins v. Whois Privacy Services Pty Ltd / Domain Privacy Ltd, WIPO Case No. D2013-1953
- National Westminster bank plc v. Renedine Bikay, WIPO Case No. D2012-2101
- F.Hoffmann-La Roche AG v. Rajiv Gupta, WIPO Case No. D2012-0541
In support of paragraph 4(a)(iii), the Complainant asserts that bad faith is evidenced by the Respondent’s use of the disputed domain name with the intention of attempting to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s globally well-known trademark, of which there could be no doubt that the Respondent was aware, as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product on the Respondent’s website or location (see paragraph 4(b)(iv) of the Policy).
The Complainant also notes that the disputed domain name has been offered for sale by the Complainant.
Finally, the Complainant shows that the Respondent has engaged in a pattern of registrations of domain names of famous trademark owners in order to prevent the trademark owners from reflecting their marks in corresponding domain names, there being almost 200 prior UDRP decisions against the Respondent, involving his registration of domain names using the well-known marks of entities as diverse as Caterpillar, Hoffman-La Roche, Wolters Kluwer, The Royal Bank of Scotland, AllState Insurance, and many others, a number showing the Respondent’s pattern of registering numerous “typosquatting” variants.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the Policy.
However, the Respondent has had ample opportunity to respond to the allegations of the Complainant and has not done so. The Respondent cannot be in a better position by failing to respond than if it had chosen to take advantage of the opportunities afforded to it, expressly, by paragraph 4(c) of the Policy.
Paragraph 15(a) of the Rules instructs the Panel to decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. In the absence of any response from the Respondent, the onus upon the Complainant will be satisfied if a conclusion which is capable of being drawn from the evidence provided by the Complainant is not contradicted by the Respondent.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established its trademark rights in its mark BIOMERIEUX.
The determination of confusing similarity is a factual one which must be satisfied by the Panel making a side-by-side comparison of the Complainant’s trademark and the disputed domain name to assess whether the mark is recognizable within the disputed domain name. See WIPO Overview 3.0, section 1.7. (The Policy does not call for proof of actual confusion.)
Placed side-by-side, the confusing similarity between the Complainant’s trademark and the disputed domain name is self-evident. Moreover, the common experience of mistyping an entry using a keyboard, especially when trying to type from memory a word which is invented, leads the Panel inexorably to the conclusion that it would be an easy and very likely mistake for users of browser software to type in a similar but incorrect address, such as the disputed domain name, if seeking “www.biomerieux.com”, which is the Complainant’s principal domain name.
The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent clearly has no rights or legitimate interests in the disputed domain name. The Respondent has made no attempt to clarify its selection of the disputed domain name, notwithstanding ample opportunity to do so. Furthermore, the Respondent’s history of bad faith domain name registrations and the fact that the disputed domain name has only ever been used as a “parking page” directing Internet users to different suppliers of goods and services competing with the products of the Complainant and blatantly offered for sale shows that the Respondent has only ever had an illegitimate interest in the disputed domain name.
C. Registered and Used in Bad Faith
There can be no doubt that the Respondent registered the disputed domain name for the purpose of taking illegitimate advantage of the Complainant’s trademark rights. The evidence also establishes the Respondent must have been aware of the Complainant’s rights at the time of registration; indeed, those rights are the reason for having chosen the disputed domain name for typosquatting purposes.
The Panel further notes that the disputed domain name is not in active use. There is a consensus view among UDRP panels that non-use of a domain name does not prevent a finding of use in bad faith if an examination of all the circumstances of a case indicates that the respondent is acting in bad faith; see WIPO Overview 3.0, section 3.3. In this case, the Respondent has given an address of serviced offices in Delaware that were not its premises, registered incorrect contact details or failed to maintain the registered contact details, giving rise to a conclusion that the physical and electronic address given in its registration are not those of the Respondent at all or that the Respondent has no and has never had any intention to participate in these proceedings. These circumstances in conjunction with the “typosquatting” nature of the registration of the disputed domain name, justify a finding of use of the disputed domain in bad faith.
The Panel therefore find that the Respondent has registered and uses the disputed domain name in bad faith within the meaning of the Policy, as has the same Respondent in dozens, if not hundreds, of prior cases.
Therefore, the Panel finds that also the third element under the Policy set forth by paragraph 4(a)(iii) is fulfilled and that, accordingly, the Complainant has satisfied all of the three requirements of paragraph 4(a) of the Policy.
In the light of the findings in Section 6 above, the Panel concludes that:
- the disputed domain name <biomereux.com> is confusingly similar to the trademark BIOMERIEUX of the Complainant;
- the Respondent has no rights or legitimate interests in the disputed domain name; and
- the disputed domain name has been registered and is being used in bad faith.
Accordingly, the Panel determines in accordance with paragraph 15 of the Rules that the disputed domain name <biomereux.com> be transferred to the Complainant in accordance with paragraph 4(i) of the Policy.
William P. Knight
Date: December 27, 2018