Westmore · UDRP DecisionBiomerieuxs.com
The Panel ordered transfer of <biomerieuxs.com>. It found the domain confusingly similar to the BIOMERIEUX trademark because it incorporated the mark in full with only an additional “s”. The unrebutted record showed no rights or legitimate interests. Bad faith was found from the Respondent’s knowledge of the distinctive prior mark, the domain’s implied affiliation, the establishment of MX records enabling email use, and the absence of any conceivable good-faith use on the record.
The timeline behind biomerieuxs.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind biomerieuxs.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
This decision is notable for treating the configuration of MX records as affirmative domain-name use supporting bad faith even without proof that an email was sent. The finding rested on the combination of a one-letter variant of a distinctive mark, lack of rights or legitimate interests, the capacity for misleading email use, and an unrebutted record.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION bioMérieux v. Registration Private, Domains By Proxy, LLC / Milton Bardmess Case No. D2020-3499 1. The Parties The Complainant is bioMérieux, France, represented by Plasseraud IP, France. The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Milton Bardmess, United States. 2. The Domain Name and Registrar The disputed domain name <biomerieuxs.com> is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2020. On December 23, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 2020, 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 December 28, 2020, 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 January 1, 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 the Respondent of the Complaint, and the proceedings commenced on January 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2021. The Center appointed Andrew F. Christie as the sole panelist in this matter on February 3, 2021. 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 company in the medical field of microbiology, providing diagnostic solutions (reagents, instruments, software) which determine the source of disease and contamination to improve patient health and ensure consumer safety. It has been in the field of in-vitro diagnostics for 50 years. It is a worldwide company, present in more than 160 countries by means of its 43 subsidiaries around the world. In 2019, its revenue reached EUR 2.7 billion, with 90% of its sales occurring outside France. The Complainant is the owner of many trademark registrations throughout the world for the word trademark BIOMERIEUX, including International Trademark Registration No. 933598 (registered on June 12, 2007), and United States Trademark Registration No. 3906321 (filed on September 18, 2009; registered on January 18, 2011). The Complainant is the owner of many domain names that include the trademark BIOMERIEUX, including <biomerieux.com> (registered on May 31, 1996) and <biomerieux-usa.com> (registered on March 31, 2000), which it uses to conduct its business on the Internet. The disputed domain name was registered on December 11, 2020. The Complainant provided a screenshot, dated December 21, 2020, from a DNS lookup tool which showed that MX records had been set for the disputed domain name. The Complainant also provided a screenshot, dated December 22, 2020, showing that the disputed domain name at that time resolved to a page stating “This site can’t be reached”. As of the date of this decision, it appears that the disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it has rights because: (i) the disputed domain name is composed of the trademark BIOMERIEUX, with only one difference, being the addition of the letter “s” at the end, which is a minor alteration that does not change the overall impression created by the disputed domain name; (ii) this is clearly a case of “typosquatting”, in which the disputed domain name contains sufficiently recognizable aspects of the Complainant’s trademark and there is a high degree of similarity between them; and (iii) the addition of the generic Top-Level Domain (“gTLD”) suffix “.com” has to be ignored. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the disputed domain name does not correspond to the name of the Respondent, nor to any trademarks registered in the name of the Respondent; (ii) to the best of the Complainant’s knowledge, the Respondent has not been known under the disputed domain name, and has not asked for, or been given, any permission by the Complainant to use the Complainant’s sign BIOMERIEUX in any way; (iii) there is no evidence of any fair or noncommercial or bona fide use of the disputed domain name in connection with goods and services, because the disputed domain name does not resolve to any active website; (iv) the Respondent could not be ignorant of the Complainant and its rights in the trademark BIOMERIEUX, which is distinctive and well-known (as has been recognized by many UDRP panels); and (v) the only use of the disputed domain name made by the Respondent is motivated by the intention to make commercial gain by misleading consumers as to the source of the (inactive) website resolving from it, thereby tarnishing the service mark at issue. The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the trademark BIOMERIEUX is highly distinctive and, to the best of the Complainant’s knowledge, does not constitute an existing word in the dictionary or even a suggestive term; (ii) all the BIOMERIEUX trademarks belong to the Complainant or to companies in its group, and some of these trademark registrations have existed since the 1980s, which is well before the registration of the disputed domain name by the Respondent; (iii) the trademark BIOMERIEUX has been well-known in the medical field for decades; (iv) the Respondent was actually fully aware of the existence of the Complainant and its prior rights to the sign BIOMERIEUX when he registered the disputed domain name, and did so to take advantage of the Complainant’s rights; (v) the fact that the Respondent has hidden its identity and contact information through a privacy service may be indicative of bad faith; (vi) the disputed domain name does not resolve to an active website; and (vii) the only detected activity relating to the disputed domain name is the setting up of MX records for it, allowing the Respondent to send and receive emails from it, meaning it may be used to send fraudulent emails containing spam or attempts at phishing. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Once the generic Top-Level Domain (“gTLD”) “.com” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the Complainant’s registered word trademark BIOMERIEUX followed by the letter “s”. The Complainant’s word trademark BIOMERIEUX is clearly recognisable in the disputed domain name. The addition of the letter “s” after the Complainant’s trademark does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s trademark. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition , (“WIPO Overview 3.0”). Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its BIOMERIEUX trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has rights or legitimate interests in the disputed domain name. The disputed domain name appears not to resolve to an active website. According to the present record, therefore, the disputed domain name has not been used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. In addition, the nature of the disputed domain name, comprising the Complainant’s trademark in its entirety in combination with an additional letter “s”, carries a risk of implied affiliation. See section 2.5.1 of the WIPO Overview 3.0 . As described above, the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and this has not been rebutted by the Respondent. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The disputed domain name was registered many years after the Complainant first registered its BIOMERIEUX trademark. The evidence on the record provided by the Complainant with respect to its use of its BIOMERIEUX 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 of registration of the disputed domain name, the Respondent knew of the Complainant’s BIOMERIEUX word trademark. It is inconceivable that the Respondent registered the disputed domain name ignorant of the existence of the Complainant’s BIOMERIEUX trademark, given that the disputed domain name consists of the Complainant’s distinctive trademark with merely the addition of a single letter at the end. The evidence on the record provided by the Complainant shows that the Respondent has set up MX records for the disputed domain name, meaning that currently it might be being used for, or in the future may be used for, email communication. Given the Respondent’s lack of rights or legitimate interests in the disputed domain name, and the confusing similarity of the disputed domain name to the Complainant’s distinctive trademark, any use of the disputed domain by the Respondent for email communication would almost certainly imply an affiliation with the Complainant that does not exist, and so would be a use in bad faith. To support a finding of use of the disputed domain name in bad faith in this situation, it is not necessary for the Complainant to prove that such a communication has actually been sent; it is sufficient that such a communication could be sent. The establishment of MX records for a domain name is a use of it. Where the use of the disputed domain name sets up the Respondent to engage in behaviour that would falsely imply an affiliation with the Complainant, that is a use of the disputed domain name in bad faith. Furthermore, given the Complainant’s substantial reputation in its trademark and the Respondent’s failure to submit a Response to the Complaint, it is not possible to conceive of any good faith use to which the Respondent could put the disputed domain name. The Respondent is, therefore, holding 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. 7. Decision 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 <biomerieuxs.com> be transferred to the Complainant. Andrew F. Christie Sole Panelist Date: February 17, 2021
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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