Decision for dispute CAC-UDRP-108672

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

The Complainant is the owner of numerous trademarks for the term BIOMERIEUX including
European trademark n° 17912668, registered on June 5, 2018 in classes 1, 5, 9, 10, 35, 37, 41, 42 and 44;
French trademark n° 4416795, filed on January 3, 2018 in classes 1, 5, 9, 10, 35, 37, 41, 42 and 44; and
European trademark BIOMERIEUX n° 017383506, registered on February 27, 2018 in classes 35, 37, 41,42 and 44.

In addition, the Complainant owns about 200 trademarks for "BIOMERIEUX" in most countries of the world.

The Complainant is a French multinational biotechnology company (notably active in the field of diagnostic solutions) listed on the NYSE Euronext Paris Stock exchange. Its products are mainly used for diagnosing infectious diseases. They are also used for detecting microorganisms in agri-food, pharmaceutical and cosmetic products. Founded in 1963, it serves more than 160 countries, by means of its 43 subsidiaries around the world, and through a large network of distributors. Its leadership in the field of in vitro diagnostics extends for over 60 years, with €4.0 billion in sales.  

The disputed domain name <biomerieux.network> registered on May 17, 2026 is identical to the Complainant's mark. 

COMPLAINANT
The Complainant contends that the requirements of the Policy have been met and that the disputed domain name should be transferred to it.

In particular:

1. In view of the distinctiveness of the Complainant's trademarks and reputation, the Complainant contends that it is inconceivable that the Respondent could have registered the disputed domain name without actual knowledge of the Complainant's rights in the trademark;
2. Given i) the closeness of the disputed domain name with the BIOMERIEUX trademark ii) the clear absence of rights of the Respondent, iii) the fact that the disputed domain name carries a high risk of implied affiliation with the Complainant, and iv) the fact that the BIOMERIEUX trademark is exclusively related to the Complainant, any use would constitute an impersonation of the Complainant;
3. Furthermore, the disputed domain name points to a blank page. The Complainant contends that the Respondent has not demonstrated any activity in respect of the disputed domain names, and it is not possible to conceive of any plausible actual or contemplated active use of the domain names by the Respondent that would not be illegitimate;
4. As a consequence of MX records having been set up on the disputed domain name, the Respondent can send emails through the email address "@biomerieux.network" and therefore may use the disputed domain name to send fraudulent emails such as messages containing spam, or phishing attempts, for instance. This risk is all the higher in the present case in that the Respondent has also configurated a SPF (Sender Policy Framework) record with the disputed domain name.

RESPONDENT
The Respondent has not appeared formally or informally to controvert the evidence submitted by the Complainant.

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Paragraph 15(a) of the Rules for the UDRP ('the Policy') instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." 

Pursuant to Paragraph 4(a) of the Policy the Complainant is required to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(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.

In view of the Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations and adduced proof pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint and annexes as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., Forum Clain No. FA00060000 95095 (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009  ("In the absence of a response, it is appropriate to accept as true all [reasonable] allegations of the Complaint.").

   1. Identical or Confusingly Similar to a Mark in which Complainant has a Right:

To succeed under the first element, a complainant must pass a two-part test by first establishing that it has rights, and if it does, it must then show that the disputed domain name is either identical or confusingly similar to the mark. The first element of a UDRP complaint “serves essentially as a standing requirement.” The standing (or threshold) test for this first test involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.1”), section 1.7. 

Here, the Complainant has established that it has rights in the word mark BIOMERIEUX by providing the Panel with evidence that it has a registered mark for that term in numerous jurisdictions. The consensus view which the Panel adopts is that a national or an international trademark registration is sufficient to establish rights in that mark. As such, the Panel finds that the Complainant has established that it has a right in the word mark BIOMERIEUX. 

The second part of the test calls for comparing the Complainant’s mark with the disputed domain name. It entails “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark." WIPO Overview 3.1, supra.   

Here, though, it is evident that the second level of the disputed domain name <biomerieux.network> is identical with the Complainant's trademark BIOMERIEUX. With regard to the top level, it is typically disregarded. See for example Arla Foods Amba v. Otoniel Reyes, CAC 107933 ("It is well established that the specific top level of a domain name such as ".network" does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. The disputed domain name is therefore considered identical to the Complainant's trademark ARLA." WIPO Overview, 3.1 supra. Section 1.11: “The applicable Top Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element [identical or] confusing similarity test. 

Accordingly, Complainant has satisfied Paragraph 4(a)(i) of the Policy.

     2. Rights and legitimate interests, Para. 4(a)(ii)

Under paragraph 4(a)(ii) of the Policy, a complainant has the burden of establishing that a respondent lacks rights or legitimate interests in respect of the disputed domain name, but this burden is light. It is sufficient in the first instance for the Complainant to allege a prima facie case, and if the evidence presented is conclusive or yields a positive inference that the Respondent lacks rights or legitimate interests, the burden shifts to the Respondent to rebut the allegations. This concept of shifting burdens is clearly explained in Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case Number D2003-0455 in which the Panel held that "[s]ince it is difficult to prove a negative ... especially where the Respondent, rather than complainant, would be best placed to have specific knowledge of such rights or interests—and since Paragraph 4(c) describes how a respondent can demonstrate rights and legitimate interests, a complainant's burden of proof on this element is light."

 Once the complainant makes such a prima facie showing, "the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence rebutting the prima facie case or showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP," Malayan Banking Berhad v. Beauty, Success & Truth International, Case No. D2008-1393. Finally, "in the absence of direct evidence, complainant and the panel must resort to reasonable inferences from whatever evidence is in the record," Euromarket Designs, Inc. v. Domain For Sale VMI, Case No. D2000-1195. In this case, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, because the Respondent has no permission to use the BIOMERIEUX trademark and, in fact, is not using the disputed domain name to resolve to an active website.

The Panel finds that the Complainant has set forth a prima facie case. Hence, the burden shifts to the  Respondent. It has the opportunity of demonstrating its right or legitimate interest by showing the existence of any of the following nonexclusive circumstances:

(i) before any notice to you [respondent] of the dispute, your 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) you [respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or 
(iii) you [respondent] are 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.

If a respondent proves any of these circumstances or indeed anything else that shows it has a right or legitimate interest in the domain name, the complainant will have failed to discharge its onus and the respondent must succeed. However, where the respondent fails to respond, the Panel must assess the record before it.

Here, the choice of the domain name is identical to the trademark. Therefore, the Respondent's default and its failure to rebut the Complainant's evidence is particularly telling. Since there is no proof otherwise, the record supports the conclusion that the Respondent lacks any right or legitimate interest as measured by the three circumstances of paragraph 4(c). See Deutsche Telekom AG v. Britt Cordon, WIPO Case No. D2004 -0487 (holding that "once a complainant establishes a prima facie case that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent. If the respondent cannot do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP). Similarly, in Malayan Banking Berhad, supra. (holding that "[i]f the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.").

Further, the evidence in the record before me is conclusive that the Respondent CONSTANTIN SUMANARIU is not commonly known under the disputed domain name. See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Chad Moston / Elite Media Group, Case Number Forum Case No. FA1804001781783 ("Here, the WHOIS information of record identifies Respondent as “Chad Moston / Elite Media Group.”. The Panel therefore finds under Policy 114(c)(ii) that Respondent is not commonly known by the disputed domain name under Policy 114(c)(ii)"); Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, Forum Case Number FA 1741129 (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent's use of the same).

Accordingly, as the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name, Complainant has satisfied Paragraph §4(a)(ii) of the Policy.

     3. Registered and Used in Bad Faith, §4(a)(iii)

Having determined that the Respondent lacks rights or legitimate interests, the Complainant must then prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith. The consensus is expressed in WIPO Overview 3.1, section 3.1.4. is 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." Particularly probative in this case is that there is no mistaking that the disputed domain name calls to mind the Complainant’s mark.  Absent a cogent explanation from Respondent justifying its choice of domain name, this supports the conclusion that it registered <biomerieux.network> with the purpose of taking advantage of its goodwill and reputation and committing fraud on consumers and Complainant's clients.

 The Panel finds that the present case is one in which the presumption of bad faith is satisfied. The presumption is further strengthened by the strong inference of Respondent's actual knowledge of Complainant's and its BIOMERIEUX trademark and of its intention to take advantage of its attractive value on the Internet solely for the reason of its goodwill flowing from its widely known or famous brand. Paragraph 4(b) of the Policy sets out four nonexclusive circumstances, any one of which is evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive.

The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration 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 domain name; or
(ii) the respondent has registered the 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; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's 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 site or location.

Of the four circumstances, the fourth most readily applies as the domain name is clearly intended to attract Internet users seeking to reach Complainant's website or purchase its products and services. The domain name in this case resolves to a blank page. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ; also National Football League v. Thomas Trainer, WIPO Case No. D2006-1440 (<nflnetwork.com>, holding that "when a registrant, such as respondent here, obtains a domain name that is [identical or confusingly similar to a] famous mark, with no apparent rights or legitimate interests in the name, and then fails to respond to infringement claims and a UDRP Complaint, an inference of bad faith is warranted.").

Where the facts demonstrate an intent to capitalize on an owner's mark in the manner in which the Complainant describes and which is supported by proof in the record, the registration is prima facie abusive. See Crédit Industriel et Commercial v. Domains By Proxy LLC / Stefano Claudio Pier, WIPO Case No. D2021-4323. Also, WIPO Overview 3.1.4: “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a well-known trademark, and particularly in the case of coined or fanciful marks, can by itself create a presumption of bad faith.”

Finally, the Complainant proffered evidence of MX configuration. While Complainant has not submitted any proof of fraudulent use, it nevertheless raises an issue that the domain name could be used fraudulently. This risk is heightened in this case in that the Respondent has also configurated a SPF (Sender Policy Framework) record. See PRIMONIAL v. Name Redacted, WIPO Claim No. D2023-0151 (the “mere fact to proceed with such advanced technical configuration[s] [MX (mail exchange) and SPF (Sender Policy Framework)]. . . reveals at least a potential intent to use the disputed domain name to exchange emails.”)

The Panel finds that the Complainant has shown that the Respondent registered and is using the disputed domain name in bad faith both in general and in particular because the Respondent's conduct puts the case squarely within paragraph 4(b)(iv) as well as within the larger notion of abusive conduct. The Panel finds that Complainant has adduced more than sufficient evidence to prove Respondent's bad faith based on the foregoing considerations.

Accordingly, the Panel finds that the Respondent has satisfied paragraph 4(a)(iii) of the Policy.