WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bioline Agrosciences Limited v. yangjin hua
Case No. D2021-4078
1. The Parties
Complainant is Bioline Agrosciences Limited, United Kingdom, represented by Cabinet Regimbeau, France.
Respondent is yangjin hua, China.
2. The Domain Name and Registrar
The disputed domain name <biolinemedsys.com> (the “Domain Name”) is registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2021. On December 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 8, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 8, 2021, 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 8, 2021.
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 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 30, 2021. Respondent did not submit any
response. Accordingly, the Center notified Respondent’s default on January 4, 2022.
The Center appointed John C. McElwaine as the sole panelist in this matter on January 12, 2022. 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 produces and markets biological control organisms which are used for control of insect pests in a variety of crops.
Complainant is the owner BIOLINE (and design), EUTM Registration No. 003265212, registered on December 15, 2004, in International Classes 31 and 44.
Complainant’s affiliate, Bioline AgroScience France is the owner of following trademark registrations relevant to this proceeding:
- French trademark registration No. 4311777 for BIOLINE FRANCE filed on November 3, 2016 and covering goods and services in International Classes 31, 35, 42, and 44;
- French trademark registration No. 4311788 for BIOLINE AGROSCIENCE (and design) filed on November 3, 2016, and covering goods and services in International Classes 31, 35, 42. and 44; and
- International trademark registration No. 1351490 for BIOLINE AGROSCIENCE (and design) registered on March 22, 2017 with designations in numerous countries and covering goods and services in International Classes 31, 35, 42, and 44.
Collectively, the BIOLINE, BIOLINE FRANCE, and BIOLINE AGROSCIENCE marks are referred to herein as the “BIOLINE Mark”.
On July 11, 2021, Respondent registered the Domain Name with the Registrar. The Domain Name resolves to a pornography website.
5. Parties’ Contentions
As background, Complainant asserts that it is part of the BIOLINE GROUP, which is an international company owned by INVIVO GROUP, a leading French agricultural cooperative group whose main goal is to federate its cooperatives to sustainably transform agriculture and ensure food quality, both in France and throughout the world. Complainant further asserts that BIOLINE GROUP operates in more than 30 countries offering a wide-range of sustainable and innovative products, solutions and services in the agriculture field. Complainant further explains that the BIOLINE GROUP has also simplified its internal organizational structure and, thus, divides itself into several divisions, represented by different subsidiaries, including Complainant.
Complainant alleges that after discovering that the Domain Name resolves to a pornographic website, Complainant tried to reach Respondent by contacting the Registrar. Complainant produced a copy of the letter sent informing the Registrar that the registration of the Domain Name was violating its prior rights and harming its reputation and goodwill. Complainant requested the Registrar to provide the contact address of the registrant of the Domain Name and to proceed with the deletion of the pornographic content displayed on the website. Complainant provided evidence that on the same date, it received an automatic answer from the Registrar explaining that, in order to contact Respondent, it was necessary to fill out a contact form on the Registrar’s website. Complainant informs that it proceeded as requested but never received an answer from the Registrar or Respondent (with the exception of automatic acknowledgements).
Consequently, Complainant asserts it initiated this proceeding in order to obtain the deletion of the Domain Name.
With respect to the first element of the Policy, Complainant alleges that it owns trademark registrations and domain name registration containing BIOLINE. Complainant further asserts that the Domain Name incorporates Complainant’s BIOLINE Mark entirely and adds the term “medsys”, which is a shortened from of “medical system”. Thus, Complainant contends that the Domain Name is confusingly similar to the BIOLINE Mark.
With respect to the second element of the Policy, Complainant points out that Respondent is not an authorized dealer, distributor, or licensee of Complainant and has not otherwise been permitted by Complainant to make any use of the Domain Name. Complainant contends that Respondent is not commonly known by the name of BIOLINE, as an individual, business, or other organization. Complainant further asserts that any interest that Respondent may have in the Domain Name, is far outweighed by Respondent’s illicit actions of using the Domain Name to resolve to pornographic content, which is harmful to Complainant’s BIOLINE Mark. Complainant concludes that the use of the Domain Name does not constitute a bona fide offering of goods or services when the only reason to use the BIOLINE Mark as part of a domain name is to attract customers who were not looking for an adult sex website, but were instead looking for the products or services associated with Complainant or the BIOLINE Mark and that such use of a trademark can create customer confusion or dilution of the mark.
With respect to the last element of the Policy, Complainant asserts Respondent registered the Domain Name in bad faith, as evidenced by the fact that: (1) Respondent must have been aware of Complainant’s BIOLINE Mark when registering it because the mark is well-known, (2) Respondent has hidden its true identity, and (3) Respondent provided no explanation as to why the BIOLINE portion of the Domain Name was chosen. Complainant asserts that Respondent used the Domain Name in bad faith because the BIOLINE Mark is widely used and Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with Complainant’s as to the source, affiliation, or endorsement of Respondent’s website. In addition, Complainant asserts that because the Domain Name currently resolves to a pornographic website, this fact demonstrates use in bad faith since the association that will inevitably and directly result in users’ minds between the pornography content of the website and Complainant’s prior trademarks can cause significant and irreparable injury to Complainant, tarnishing its marks and damaging its reputation.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4(a) of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainants show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
As an initial matter, Complainant has standing to bring this proceeding independently as the owner of the European Union Trademark for BIOLINE. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2. Complainant provided evidence here that BIOLINE Mark has been registered in the European Union since at least as early as 2004.
In addition, Complainant has standing as a member of the BIOLINE GROUP, which has a subsidiary that own trademarks in France, and an International Registration containing BIOLINE. See Grupo Televisa, S.A., Televisa, S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v. Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796 (“Paragraph 4(a)(i) of the Policy requires, as one element to be proved, that the disputed domain name be identical or confusingly similar to a trademark or service mark in which Complainants have rights. These words do not require that Complainants be the owner of the mark and would include, for example, a licensee of the mark.”); Kao Brands Company, John Frieda, John Frieda Professional Hair Care Inc. v. Evgeniy Sechin, WIPO Case No. D2010-2247 (As the wholly owned subsidiary of its parent company, Kao Kabushiki Kaisha (also t/a Kao Corporation), the complainant was considered to have rights in the trademarks owned by such parent company); see also section 1.4.1 of the WIPO Overview 3.0and Yamaha Motor Corporation, U.S.A. v. Domain Admin, Hush Whois Protection Ltd., WIPO Case No. D2018-1359.
It is well-established, and the Panel agrees, that the addition of other terms to a trademark in a domain name does not avoid a finding of confusing similarity. See WIPO Overview 3.0, Section 1.8; Mastercard International Incorporated v. Dolancer Outsourcing Inc., WIPO Case No. D2012-0619; Air France v. Kitchkulture, WIPO Case No. D2002-0158; DHL Operations B.V. and DHL International GmbH v. Diversified Home Loans, WIPO Case No. D2010-0097. The Domain Name contains Complainant’s BIOLINE Mark in its entirety, as the dominant element. The addition of the term “medsys” does nothing to avoid a finding of confusing similarity between the Domain Name and the BIOLINE Mark.
B. Rights or Legitimate Interests
Under the Policy, paragraph 4(a)(ii), Complainant has the burden of proof of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden of production shifts to Respondent to present evidence that it has rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.
Here, Complainant asserts that Respondent is not authorized to have registered the Domain Name and set up a website seeking to lure Internet users seeking Complainant to Respondent’s website which contains pornographic content. Although properly notified by the Center, Respondent failed to submit any response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed -- in appropriate circumstances -- that such respondents have no rights or legitimate interests in the disputed domain name. See AREVA v. St. James Robyn Limoges, WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.
Under paragraph 4(c) of the Policy, a respondent’s rights or legitimate interests to a domain name may be established by demonstrating any of the following three conditions: (i) before any notice to respondent of the dispute, respondent’s 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) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or (iii) respondent is 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 mark at issue. The Panel finds that Respondent will not be able to show rights or legitimate interests under any of the three conditions.
As an initial matter, Respondent cannot satisfy paragraph 4(c)(ii) of the Policy. There is no evidence in the record that Respondent is commonly known by the name “biolinemedsys”.
Complainant also asserts that the Domain Name resolved to a website that displays pornographic content. With no apparent connection between the word “biolinemedsys” and such content, the Panel concludes that Respondent has not demonstrated a legitimate interest in the Domain Name, which contains the BIOLINE Mark. See, VKR Holding A/S v. 甄晶鑫（jing xin zhe), WIPO Case No. D2020-0352 (Finding that a webpage displaying advertising for gambling and pornography websites not to be a bona fide offering of goods or services within the meaning of paragraph 4(c)(iii) of the Policy); Unilabs AB v. Domain Administrator, See PrivacyGuardian.org / Xian Xing Hao, WIPO Case No. D2019-2599 (Finding no rights or legitimate interests where respondent is using the domain name for commercial gambling and pornography site with no apparent connection to the Domain Name); Hartsfield Area Transportation Management Association, Inc. v. Max Davidovich, WIPO Case No. D2006-0743 (Finding no legitimate use by respondent of a domain name confusingly similar to the complainant’s mark that had links to pornography and gambling websites, alien to the business of the complainant, with the consequential tarnishing of the complainant’s trade name and service mark).
In addition, as Complainant asserts, the use of a domain name for pornographic content containing a third party trademark does not present a plausible defense of fair use. See, William Hill Organization Limited v. Netmax Multimedia, WIPO Case No. D2001-0455 (“it is unacceptable use of a domain name when a Respondent associates Complainant’s trade mark with pornography against its wishes.”); Nintendo of America Inc. v. Baltic Consultants Limited, WIPO Case No. D2002-0449 (finding use of the domain name was for distinctly commercial purposes, namely, for the marketing of pornography or gambling, or both, and said use was not bona fide).
In sum, Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. For all these reasons, the Panel is entitled to accept that the second element of the Policy is established by Complainant, and Respondent has no rights or legitimate interests in respect of the Domain Name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest. See Accor v. Kristen Hoerl, WIPO Case No. D2007-1722. As discussed herein, Respondent registered the Domain Name in 2021 which is long after Complainant established trademark rights in the BIOLINE Mark. Respondent linked it to a website displaying pornographic content. The Domain Name is not a dictionary word and nothing on Respondent’s webpage indicates any meaning that the Domain Name might have other than as a reference to Complainant’s BIOLINE Mark. Prior panel decisions have consistently recognized such registration and use of a domain name constitutes evidence of bad faith under Policy 4(a)(iii). Daybreak Game Company LLC v. Lv Guo Ping, WIPO Case No. D2018-1935 (“the Panel has no hesitation in finding that the disputed domain name…was registered in bad faith and is being used in bad faith. The current advertisements for online gambling and pornography on the site disputed domain name resolves to establish Respondent is making a commercial gain from the site by attracting users to generate click through revenue”); Valvoline Licensing and Intellectual Property LLC v. Andrei Arhipov, WIPO Case No. D2017-2453 (“The fact that the website at the disputed domain name provides adult sexually explicit content with pornography elements is a clear indication that the domain name has been registered and used in bad faith.”). Given the distinctive nature of Complainant’s BIOLINE Mark, and the lack of any connection whatsoever between the words “biolinemedsys” and the content of Respondent’s website, there can be no other reasonable explanation for Respondent to have chosen to register the Domain Name other than to intentionally trade off the goodwill and reputation of Complainant’s trademark or otherwise create a false association with Complainant. With no response from Respondent, this claim is undisputed nor is the decision to register and use the Domain Name justified.
As detailed above, the Panel finds on the record before it that Respondent’s intention in registering the Domain Name was to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the BIOLINE Mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. Thus, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <biolinemedsys.com>, be cancelled.
John C McElwaine
Date: January 26, 2022