WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

bioMérieux v. WhoisGuard Protected, WhoisGuard, Inc. / REDACTED FOR PRIVACY, WhoisGuard, Inc. / Maria Jurcakova, Ubris

Case No. D2019-3005

1. The Parties

Complainant is bioMérieux, France, represented by Plasseraud IP, France.

Respondent is WhoisGuard Protected, WhoisGuard, Inc. / REDACTED FOR PRIVACY, WhoisGuard, Inc., Panama / Maria Jurcakova, Ubris, Australia.

2. The Domain Name and Registrar

The disputed domain name <biometrieux.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 December 5, 2019. On December 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 5, 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 Complainant on December 9, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 11, 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 Respondent of the Complaint, and the proceedings commenced on December 12, 2019.

In accordance with the Rules, paragraph 5, the due date for Response was January 1, 2020. The Center received an email on December 27, 2019, from Respondent stating: “I would like to respond to the letter you have sent me to my previous work address. I no longer work there and I did not register the domain. I assume someone used my identity — my name and my previous work address and phone number to set up the domain under my name. […].” Respondent did not submit any formal response on the merits.

The Center sent a Commencement of Panel Appointment Process on January 3, 2020. The Center appointed Lorelei Ritchie as the sole panelist in this matter on January 13, 2020. 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

Complainant is a multinational company incorporated and headquartered in France. Complainant, which operates 43 subsidiaries in 160 countries, is a global leader in medical diagnostics and diagnostic solutions. Complainant has been operating under the trade name BIOMERIEUX since at least as early as 1988, and has several registrations for the mark. These include International Registration No. 933598 (registered June 12, 2007) and United States of America (“United States”) Registration No. 3906321 (registered January 18, 2011). Complainant also owns registrations for a composite mark BIOMERIEUX and design, including International Registration No. 912430 (registered January 3, 2007) and United States Registration No. 3787782 (registered May 11, 2010).

Complainant owns the registration for several domain names incorporating its marks. These include, among others, <biomerieux.com> (registered May 31, 1996). Complainant uses the domain names and associated websites to inform customers about its products and services.

The disputed domain name <biometrieux.com> was registered on July 31, 2019.

Respondent has no affiliation with Complainant. Respondent is using the URL associated with the disputed domain name to provide sponsored links to websites that describe or advertise goods or services that are unaffiliated with Complainant or Complainant’s goods and services. Complainant has not authorized any activities by Respondent, nor any use of its trademarks thereby.

5. Parties’ Contentions

A. Complainant

Complainant contends that:

(i) the disputed domain name <biometrieux.com> is identical or confusingly similar to Complainant’s trademark;

(ii) Respondent has no rights or legitimate interests in the disputed domain name; and

(iii) Respondent registered and is using the disputed domain name in bad faith.

In particular, Complainant contends that it has trademark registrations for BIOMERIEUX, in word and design formats, and that it uses its own domain name with this mark to refer consumers to its goods and services.

Complainant contends that Respondent has created a domain name by merely adding a “t” to Complainant’s distinctive and well-known BIOMERIEUX mark, in a practice commonly known as “typosquatting,” by which Respondent intends to lure in and confuse consumers seeking Complainant’s goods and services.

Complainant further contends that Respondent has no rights or legitimate interest in the registration or use of the disputed domain name. Rather, Complainant contends that Respondent has acted in bad faith in setting up a parked web page with sponsored links, presumably for Respondent’s own financial gain, when Respondent clearly knew of Complainant’s rights.

B. Respondent

As noted above, after formally notified Respondent of the Complaint, the Center received an email on December 27, 2019, from Respondent stating: “I would like to respond to the letter you have sent me to my previous work address. I no longer work there and I did not register the domain. I assume someone used my identity — my name and my previous work address and phone number to set up the domain under my name. […].” The message further stated that the listed email address “isn’t mine.”

Respondent did not respond further and did not file a formal reply to Complainant’s contentions in this proceeding.

6. Discussion and Findings

A. Identical or Confusingly Similar

This Panel must first determine whether the disputed domain name <biometrieux.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is.

The disputed domain name contains an obvious misspelling of Complainant’s BIOMERIEUX mark, with the simple addition of a “t” before the “r.” This indicates a practice commonly known as “typosquatting,” where a domain name registrant deliberately registers common misspellings of a well-known mark in order to divert consumer traffic. Previous UDRP panels have routinely found typosquatted domain names like this to be “confusingly similar” for purposes of a finding under the UDRP. See Edmunds.com, Inc. v. Yingkun Guo, WIPO Case No. D2006-0694 (<edunds.com> et al); Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489 (<disneychanel.com>, <disneywolrd.com>, <walddisney.com>et al); See also Credit Karma, Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2017-0194 (<credidkarma.com>).

The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include:

(i) use of the domain name “in connection with a bona fide offering of goods or services”;

(ii) demonstration that Respondent has been “commonly known by the domain name”; or

(iii) “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 mark at issue.”

Respondent did not submit a formal reply to the Complaint, however. Furthermore, the person identified as Respondent told the Center that they “did not register the domain” and that the listed email address “isn’t mine.” Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interest in the disputed domain name, which Respondent has not rebutted.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’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 [respondent’s] website or location or of a product or service on [the] website or location”. As noted in Section 4 of this Panel’s decision, Respondent is using the URL associated with the disputed domain name to offer sponsored links to other websites. Hence, Respondent is trading on the goodwill of Complainants’ trademarks to attract Internet users, presumably for Respondent’s own commercial gain.

Numerous prior UDRP panels have found Complainant’s BIOMERIEUX mark to be “well known” and “distinctive,” and to have “renown character” and “extensive promotion worldwide.” See for example bioMérieux v. Domain Administrator – Dvlpmnt Marketing, Inc., WIPO Case No. D2014-1795; bioMérieux v. Registration Private, Domains by Proxy, LLC / John Bunn, WIPO Case No. D2016-1353; bioMérieux v. Name Redacted, WIPO Case No. D2017-1595; bioMérieux v. Joseph Gullett, Digicel, WIPO Case No. D2017-2268; bioMérieux v. WhoisGuard Inc. / angel heduro, WIPO Case No. D2019-0125.

Considering the totality of the circumstances, the Panel finds that Respondent registered and used the disputed domain name with knowledge of Complainants’ prior rights, thereby evidencing bad faith.

7. Decision

For all of 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 <biometrieux.com> be transferred to Complainant.

Lorelei Ritchie
Sole Panelist
Dated: January 21, 2020