WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
bioMérieux v. WhoisGuard Protected, WhoisGuard, Inc. / Rachid Elouardi
Case No. D2019-2532
1. The Parties
The Complainant is bioMérieux, France, represented by Plasseraud IP, France.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Rachid Elouardi, France.
2. The Domain Name and Registrar
The disputed domain name <biomerieux-france.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2019. On October 16, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 16, 2019, 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 October 23, 2019 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 October 24, 2019.
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 October 29, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2019.
The Center appointed William Lobelson as the sole panelist in this matter on November 27, 2019. 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 BIOMERIEUX, a French company incorporated in 1988, leader in the field of microbiology, providing diagnostic and analysis solutions (laboratory instruments, reagents, software) which determine the source of disease and contamination to pharmaceutical industries and laboratories to improve patient health.
It is present in more than 160 countries including France where its headquarters are located, and is the owner of 43 subsidiaries around the world. Its leadership in the field of in vitro diagnostics has been lasting for 50 years. In 2018, its revenues reached EUR 2.4 billion with 90% of sales outside of France.
The Complainant is the owner of numerous BIOMERIEUX formative trademarks (word and/or device) on an international scale.
The disputed domain name <biomerieux-france.com> has been registered on October 8, 2019 and resolves to a webpage with pay-per-click links.
The Respondent is an individual, whose contact details, as declared at the time when the disputed domain name was registered, reflect a physical address in France as well as a French mobile telephone number.
5. Parties’ Contentions
The Complainant is making use of the name BioMérieux in relation with pharmaceuticals as its corporate name, since 1988, and also as trade name through its various subsidiaries. It is the owner of numerous trademarks registrations, including:
- The European Union trademark BIOMÉRIEUX (logo) No. 17912668 registered on October 20, 2018 in classes 1, 5, 9, 10, 35, 37, 41, 42 and 44;
- The International Trademark BIOMÉRIEUX (logo) No. 1478156 registered on June 4, 2018 in classes 1, 5, 9, 10, 35, 37, 41, 42 and 44;
- The French trademark BIOMÉRIEUX (logo) No. 4416795 dated January 3, 2018 and registered in classes 1, 5, 9, 10, 35, 37, 41, 42 and 44;
- The French trademark BIOMÉRIEUX (logo) No. 4416801 dated January 3, 2018 and registered in classes 1, 5, 9, 10, 35, 37, 41, 42 and 44;
- The International trademark BIOMÉRIEUX (logo) No. 912430 registered on January 3, 2007 in classes 1, 5, 9 and 10;
- The International trademark BIOMERIEUX No. 933598 registered on June 12, 2007 in classes 1, 5, 9 and 10.
The Complainant is also the owner, either directly or through its subsidiaries, of several domain names formed with the name “BIOMERIEUX” such as:
- <biomerieux.com> registered on May 31, 1996;
- <biomerieux.fr> registered on June 4, 1996;
- <biomerieux.ch> registered on June 6, 2000;
- <biomerieux-usa.com> registerd 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;
- <biomereieuxindustry.com> registered on March 10, 2006;
- <biomerieux.eu> registered on March 28, 2006;
- <biomerieux-nordic.com> registered on February 11, 2013;
- <biomerieuxconnection.com> registered on August 16, 2013;
- <biomerieuxdirect.com> registered on June 06, 2016;
- <biomerieuxgroup.com> registered on March 31, 2017;
- <biomerieux-jp.net> registered on September 14, 2017.
The Complainant argues that the disputed domain name <biomerieux-france.com>, subsequent to all Complainant’s registrations, is confusingly similar to its corporate name, trade names, trademarks and domain names, as it is predominantly formed with the name “biomerieux”.
For the Complainant, the addition of the geographical name “France” is not able to dinstinguish the disputed domaine name from its earlier trademarks BIOMERIEUX as the term “France” is to be regarded as generic and/or descriptive. Such addition is, according to the Complainant enhancing the confusion between its trademarks and the contested domain name as Internet users will be led to think that the disputed domain name <biomerieux-france.com> is associated with the Complainant, a French company having a long establised trading operation in France.
The Complainant further contends that the addition of the generic Top-Level Domain (gTLD) “.com” does not avoid confusing similarity and must be ignored according to the constant case law.
The Complainant claims the risk of confusion is strengthened by the fact the disputed domain name is very close to its trademarks and domain names, the sole difference resulting from the addition of the term “france”.
Regarding the absence of rights/legitimate interests in respect of the domain name by the Respondent, the Complainant indicates in its amended Complaint that no registered trademark or trade name has been detected in the name of the Respondent, and that the disputed domain name does not correspond to the Respondent’s name.
Moreover, the Complainant indicates it has never granted the Respondent any license, nor has permitted him to use the trademark BIOMERIEUX or to apply for any domain name incorporating such trademark.
It appears from the Complainant’s evidence filed in support of the Complaint that the disputed domain name is redirecting to a parking page hosting commercial and sponsored links related to, inter alia, medical and pharmaceutical activities, which is the Complainant’s core business.
The use of the disputed domain name is, for the Complainant, solely motivated by the intention to make commercial gain by misleading consumers on the source of the services offered on the official website “www.biomerieux.com” and tarnishing the well-known service trademark BIOMÉRIEUX at issue.
Regarding the registration in bad faith by the Respondent, the Complainant considers the term “biomerieux” is inherently highly distinctive as it is a fanciful designation but also that the BIOMERIEUX trademarks, registered in the 80’s, have acquired reputation in the medical field as the owner is a worldwide company, leader in microbiology, so that the Respondent could reasonably not ignore the Complainant and its rights upon the trademark BIOMERIEUX.
For the Complainant, the choice of the disputed domain name cannot be reasonably explained otherwise than as a reference to the Complainant’s company and to its trademarks, the fact that the Respondent choose to hide its identity and contact information being an additionnal element of its bad faith in registration.
Regarding the use in bad faith by the Respondent, it has been demonstrated by the Complainant that the disputed domain name <biomerieux-france.com> is used in connection to a website offering sponsored links related to, inter alia, others websites in the medial and pharmaceutical field which can let the Internet users believe such website is held and controlled by the Complainant, or affiliated or related to it. The Respondent, being earning pay-per-click revenue from the advertising links that appear on the parking page to which the disputed domain name resolves, cannot be said to be making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant also underlines the fact that the Respondent has set up an MX server associated with the disputed domain name, thus revealing an intention to create and use the same as an email address such as “email@example.com”. Such a potential use should be regarded as a bad faith use.
The Complainant therefore requests the transfer of the disputed domain name <biomerieux‑france.com> to its profit.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i))
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii))
(iii) The disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(iii))
A. Identical or Confusingly Similar
The Complainant has established that, at the time of filing of the Complaint, it was the owner of trademark rights in the name BIOMERIEUX, on a multi-national scale, in connection with industrial and medical biology. The said trademarks do clearly precede the date of registration of the disputed domain name.
The disputed domain name is formed with the name “biomerieux”, which clearly appears identical to the Complainant’s earlier marks, the geographical name “france” and the “.com” gTLD.
The Panel finds that the addition of the geographical name “France” does not permit to avoid the confusing similarity between the disputed domain name and the Complainant’s trademark, as it shall be understood as a simple geographical indication also as a reference to the country of origin of the Complainant.
Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms, for example descriptive ones, would not prevent a finding of confusing similarity under the first element. (Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768).
As such, the Complainant’s trademarks are clearly recognizable within the disputed domain name.
The applicable gTLD “.com” is viewed as a standard registration requirement and as such, should be disregarded in determining identity or confusing similarity. (VAT Holding AG v. Vat.com WIPO Case No. D2000-0607).
Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy
B. Rights or Legitimate Interests
To demonstrate rights or legitimate interests in a domain name, non-exclusive respondent defenses under UDRP paragraph 4(c) include the following:
(i) Before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods and services;
(ii) 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;
(iii) The Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue.
It is reminded that the Respondent has not filed any observations in response and thus did not deny the Complainants assertions, nor brought any information or evidence for demonstrating any rights or legitimate interests.
The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that the Respondent is not affiliated with it in any way and that it never authorized the Respondent to use its trademark as part of the disputed domain name. The Complainant also conducted searches and could not find any BIOMERIEUX formative trademark or trade name pending or registered to the benefit of the Respondent, nor could it find any evidence that the Respondent is known or conducts any business or noncommercial activity under the name “Biomerieux”.
It has been established that the disputed domain name redirects Internet users to a parking page displaying several commercial sponsored links towards other websites.
Such circumstance constitutes a prima facie case of absence of rights or legitimate interests of the Respondent.
Even though in Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964, it has been established that using domain names for advertising links can in certain circumstances represent legitimate interests for the purposes of paragraph 4(c) of the Policy, such as when:
- The respondent regularly engages in the business of using domain names to display advertising links;
- The respondent makes good-faith efforts to avoid registering and using domain names that are identical or confusingly similar to marks held by others;
- The domain name in question is a “dictionary word” or a descriptive phrase;
- The domain name is not identical or confusingly similar to a famous or distinctive trademark; and
- There is no evidence that the Respondent had actual knowledge of the Complainant’s mark.
The Panel observes that none of the above conditions appear to apply to the present matter.
The Complainant has substantiated that the sole purpose of the disputed domain name is to resolve to pay‑per‑click advertising websites, most of them dedicated to the sale of goods being identical – but competing – with the Complainant’s, and collect click-through revenue from advertising links and namely related with the medical/pharmaceutical field.
The Panel further finds that the Respondent is not making a bona fide offering of goods and services as the disputed domain name was resolving to a parking page displaying commercial links including those of the Complainant and its competitors, which are likely to generate revenues.
Such use in connection with a domain name, which is confusingly similar to the Complainant’s trademark, cannot provide the Respondent with any rights or legitimate interests in the disputed domain name (Legacy Health System v. Nijat Hassanov, WIPO Case No. D2008-1708).
Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name.
Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Bad faith is broadly understood to occur where a Respondent takes unfair advantage of or abuses a Complainant’s trademark. UDRP paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a Respondent’s bad faith:
- Circumstances indicating that the Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name 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 Respondent’s documented out-of-pocket costs directly related to the disputed domain name.
- The Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct.
- The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor.
- By using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (Statoil ASA (“Statoil”) v. Yu Ke Rong, WIPO Case No. D2017-1255).
The reputation of the trademark BIOMERIEUX, claimed by the Complainant, has previously been acknowledged in earlier decisions under the Policy (BioMérieux v. Cimpress Schweiz GmbH / VistaPrint Technologies Ltd, WIPO Case No. D2018-1758).
Besides, from the case record, it transpires that the Respondent at the time of registration of the disputed domain name had declared a residence in France, where the Complainant is located and where its trademark benefits from a wide notoriousness.
The Panel cannot believe that the Respondent was unaware of the Complainant’s rights in the trademark BIOMERIEUX, when it sought to register the disputed domain name (bioMérieux v. WhoisGuard, Inc. / angel heduro, WIPO Case No. D2019-0125).
The Panel is convinced therefore that the Respondent had the Complainant’s trademark in mind when it registered the disputed domain name, and thus acted in bad faith.
The Panel rules that the disputed domain name was registered in bad faith in order to capitalize on the goodwill of the trademark of the Complainant, and to unduly attract commercial gain.
The disputed domain name resolves to a parking page displaying commercial links including those of the Complainant and its competitors.
The use of the disputed domain name in connection with a parking page establishes on the balance of probabilities that the Respondent has sought to attract, for commercial gain, Internet users to that website by creating a likelihood of confusion with the Complainant’s trademark.
Such a use of a well-known trademark to attract Internet users to a website for commercial gains constitutes an exploitation in bad faith.
Incidentally, the Panel considers the sole disclaimer displayed on the parking page to which the disputed domain name routes is not sufficient to mitigate the Respondent’s fraudulent use of the domain name: Michael Hill Franchise Pty Limited v. Super Privacy Service c/o Dynadot, WIPO Case No. D2017-2591: “Particularly with respect to “automatically” generated pay-per-click links, panels have held that a Respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the Respondent with rights or legitimate interests).”
The Panel therefore is of the opinion that the Respondent through the registration and use of the disputed domain name intentionally creates a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain name with the purpose of attracting Internet users to the website for commercial gain as per paragraph 4(b)(iv) of the Policy.
Finally, the Complainant has established that an email server has also been configured on the disputed domain name, thus inducing a likelihood that the Respondent might have contemplated to use the disputed domain name for fraudulent use of an e-mail address incorporating the Complainant’s trademark and / or phishing purposes (Statoil ASA v. Domain Admin, Privacy Protection Service Inc D/B/A PrivacyProtect.org / Nicolas Kerry, WIPO Case No. D2017-0046).
Consequently, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are satisfied.
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-france.com> be transferred to the Complainant
Date: December 11, 2019