WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
bioMérieux v. Tool Domains Ltd
Case No. DNU2019-0009
1. The Parties
The Complainant is bioMérieux, France, represented by Plasseraud IP, France.
The Respondent is Tool Domains Ltd, Bulgaria.
2. The Domain Name and Registrar
The disputed domain name <biomerieux.nu> is registered with Registrar.eu (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2019. On December 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 December 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 14, 2020.
The Center appointed Colin T. O'Brien as the sole panelist in this matter on January 23, 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
The Complainant has registered the company name “bioMérieux” throughout the world, the United States of America (“United States or USA”) (bioMérieux Inc.), United Kingdom (bioMérieux UK), bioMérieux S.A. has been registered in France since 1988.
The Complainant owns numerous trademark registrations for BIOMÉRIEUX and BIOMÉRIEUX and Design throughout the world including:
European Union TradeMark reg. No. 17912668 for BIOMÉRIEUX and Design registered on October 20, 2018 in classes 1, 5, 9, 10, 35, 37, 41, 42 and 44;
International Trademark No 1478156 for BIOMÉRIEUX and Design registered on June 4, 2018, in classes 1, 5, 9, 10, 35, 37, 41, 42 and 44, covering Albania; Algeria; Antigua and Barbuda; Armenia; Australia; Azerbaijan; Bahrain; Belarus; Bosnia and Herzegovina; Bhutan; Bonaire, Saint Eustache and Saba; Botswana; Brunei Darussalam; Cambodia; China; Colombia; Croatia; Curaçao; Democratic People’s Republic of Korea; Egypt; Eswatini; Gambia; Georgia; Ghana; Iceland; India; Indonesia; Israel; Iran (Islamic Republic of); Japan; Kazakhstan; Kenya; Kirghizstan; Lao People’s Democratic Republic; Lesotho; Liberia; Liechtenstein; Madagascar; Mexico; Monaco; Mongolia; Montenegro; Morocco; Mozambique; Namibia; North Macedonia; Norway; New Zealand; Oman; Philippines; Republic of Korea; Republic of Moldova; Russian Federation; Rwanda; San-Marino; Sao Tome and Principe; Serbia; Sierra Leone; Singapore; Sint Maarten; Soudan; Switzerland; Syrian Arab Republic; Tajikistan; Thailand; Tunisia; Turkey; Turkmenistan; Ukraine; USA; Uzbekistan; Viet Nam; Zambia: Zimbabwe,
French reg. No. 4416795 for BIOMÉRIEUX and Design filed on January 3, 2018, in classes 1, 5, 9, 10, 35, 37, 41, 42 and 44;
International reg. No. 912 430 for BIOMÉRIEUX and Design registered on January 3, 2007, in classes 1, 5, 9 and 10, covering, Algeria; Australia; China; Croatia; European Union; Japan; Republic of Korea; Russian Federation; Serbia; Singapore; Switzerland; Turkey; Ukraine, and;
International Reg. No 933 598 for BIOMÉRIEUX registered on June 12, 2007, in classes 1, 5, 9 and 10, covering Antigua and Barbuda; Albania; Algeria; Armenia; Australia; Azerbaijan; Bahrain; Belarus; Bhutan; Bonaire, Saint Eustatius and Saba; Bosnia and Herzegovina; Botswana; China; Colombia; Croatia; Cuba; Curaçao; Democratic People’s Republic of Korea; Egypt; Eswatini; European Union; Gambia; Georgia; Ghana; Iceland; Iran (Islamic Republic of); Japan; Kazakhstan; Kenya; Kyrgyzstan; Lao People's Democratic Republic; Lesotho; Liberia; Liechtenstein; Madagascar; Monaco; Mongolia; Montenegro; Morocco; Mozambique; Namibia; New Zealand; North Macedonia; Norway; Oman; San Marino; Serbia; Sierra Leone; Singapore; Sint Maarten; Sudan; Syrian Arab Republic; Switzerland; Republic of Korea; Republic of Moldova; Russian Federation; Rwanda; Tajikistan; Turkey; Turkmenistan; Ukraine; Uzbekistan; Viet Nam; Zambia; Zimbabwe;
United States Reg. No. 3906321 for BIOMERIEUX, registered on January 18, 2011, in classes 1, 5, 9, 10; and
United States Reg. No. 3787782 for BIOMÉRIEUX and Design registered on May 11, 2010, in classes 1, 5, 9, 10.
Complainant owns the following domain names that incorporate its BIOMERIEUX trademark:
The disputed domain name was registered on October 16, 2019.
5. Parties’ Contentions
The disputed domain name is confusingly similar to Complainant’s rights since it integrates the BIOMERIEUX trademark in its entirety and the BIOMÉRIEUX trademark almost in its entirety. The disputed domain name only differs from the registered BIOMÉRIEUX trademark by the addition of the country code Top-Level Domains (ccTLDs) suffix “.nu”. The addition of this suffix “.nu” does not avoid confusing similarity.
The disputed domain name does not correspond to the name of the Respondent, nor to any trademark registered in the name of the Respondent.
There is no registered trademark or trade name corresponding to the disputed domain name in the name of the Respondent. There is no published and/ or registered trademark BIOMÉRIEUX or BIOMERIEUX in the name of the registrant. All known registrations of the BIOMÉRIEUX mark belong to the Complainant or its affiliated companies.
The Respondent has not been known under the disputed domain name nor has it ever asked for or was given, any permission by the Complainant to use the BIOMÉRIEUX mark in any way.
Complainant has never granted the Respondent any license or other rights, and has not otherwise permitted it to use the Complainant’s trademark BIOMÉRIEUX or to apply for any domain name incorporating the BIOMÉRIEUX trademark.
The disputed domain name redirects to a parking page including commercial links offering sponsored links related to, inter alia, medical and pharmaceutical activities, which is close to the Complainant’s core business.
The registrant acts to mislead the consumers to provide sponsored links which redirect to third party websites which seeks to take unfair advantage of the value of the BIOMÉRIEUX trademark because it displays commercial links some of which are in the medical/pharmaceutical field which is close to the activity of the Complainant.
The registrant is more than likely earning pay-per-click (“PPC”) revenue from the advertising links that appear on the parking page to which the disputed domain name resolves which is not legitimate noncommercial or fair use.
The Respondent appears to have as main activity the business of domain names, as it was explained in its website, where it claims owning more than thousands of domain name which indicates the Respondent’s sole interest in the disputed domain name is to make commercial gain.
The BIOMÉRIEUX mark is, inherently, highly distinctive and very rare. The BIOMÉRIEUX mark is a fanciful designation and, to the best of the Complainant’s knowledge, it does not constitute an existing word in the dictionaries, nor even a suggestive term.
The BIOMÉRIEUX mark has been well known in the medical field for decades.
Complainant is a worldwide company present in more than 160 countries, by means of its 43 subsidiaries around the world. Its leadership in the field of in vitro diagnostics lasts for 50 years. In 2018, its revenues reached EUR 2.4 billion with 90 per cent of sales outside of France.
The registration of the disputed domain name could not be a coincidence, and the Respondent was actually fully aware of the existence of the Complainant and its prior rights when the disputed domain name was registered. The disputed domain name was registered to take advantage of the Complainant’s rights.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated it owns registered trademark rights in the BIOMERIEUX mark and that no other entity has rights or uses the mark. The addition of “.nu” does not avoid a finding of confusing similarity.
Accordingly, the disputed domain name is confusingly similar to a mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has presented a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name and has not at any time been commonly known by the disputed domain name. The fact that the Respondent obtained the disputed domain name decades after Complainant had begun using the BIOMÉRIEUX mark indicates that the Respondent sought to obtain piggy-back on the BIOMÉRIEUX mark in order to make money off of PPC advertising or to make a windfall by selling the disputed domain name to the only legitimate owner namely the Complainant.
After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Here, the Respondent has provided no evidence of any rights or legitimate interests in the disputed domain name rather the evidence suggests that it was registered to make an undue profit based on the Complainant’s rights. See, e.g., Bottega Veneta SA v. ZhaoJiafei WIPO Case No. D2013-1556.
In the absence of any evidence rebutting the Complainant’s prima facie case that the Respondent lack rights or legitimate interests in respect of the disputed domain name, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The disputed domain name was registered many years after the Complainant first registered and used its BIOMÉRIEUX trademark. The evidence on the record provided by the Complainant with respect to the extent of use of its remarkably unique BIOMÉRIEUX trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, the Respondent most likely knew of the Complainant’s BIOMÉRIEUX mark, and knew that it had no rights or legitimate interests in the disputed domain name.
The Complainant has provided evidence that the disputed domain name was offered for sale. While there was no price listed the only legitimate buyer would be the Complainant. Trademark owners should not be obligated to pay third parties to obtain domain names that are exact copies of their trademarks. This market of one along with the fact that the website contained PPC links establishes the Respondent acquired the disputed domain name primarily for the purpose of commercial gain is evidence of registration and use of the disputed domain name in bad faith.
Accordingly, the Panel finds that the disputed domain name has been registered and is being used 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 name <biomerieux.nu> be transferred to the Complainant.
Colin T. O'Brien
Date: February 6, 2020