In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organisation,(1) a panel ordered the transfer of a domain name misspelling the complainant's trademark and used to provide online gaming, casino and gambling services (whereas the complainant's trademark was primarily linked to medical products).
The complainant was Institut Merieux of Lyon, an institute based in France operating in the medicine and public health sector. The complainant owned various trademarks incorporating the name 'Merieux', in particular INSTITUT MERIEUX (dating back to 1979), BIOMERIEUX (dating back to 1998), FONDATION MERIEUX (dating back to 2007) and MERIEUX (dating back to 2014). Such trademarks were registered around the world and used to market medical products, including in China.
The respondent was Shilirong, a company based in China about which nothing further was known. The respondent did not reply to the complainant's contentions.
The disputed domain name was 'merieu.com'. It was registered by the respondent on January 9 2016 and used to point to a website offering gambling services.
To succeed in a complaint under the UDRP, a complainant must satisfy the following requirements:
- The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
- The respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
The first requirement under the UDRP is twofold and requires the panel to assess whether:
- the complainant has relevant trademark rights, regardless of when or where such trademarks were registered (although these factors may be relevant for the purpose of the third limb under the UDRP, namely bad-faith registration and use); and
- the disputed domain name is identical or confusingly similar to the complainant's trademark rights.
In the present case, the panel was satisfied that the complainant owned relevant trademark rights. Further, the disputed domain name differed from the distinctive element of the complainant's trademarks only by the omission of the letter 'x' at the end. The panel found that this was not sufficient to avoid a finding of confusing similarity under the UDRP.
The complainant therefore satisfied Paragraph 4(a)(i) of the UDRP.
The second requirement is that the complainant make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name in question. Once this has been shown, the burden of proof shifts to the respondent to show that it has rights or legitimate interests in the domain name. However, in this case the respondent did not reply.
The panel noted that the respondent had not been licensed or otherwise authorised to use the complainant's trademarks. There was no evidence in the file to indicate that the respondent was commonly known by the domain name and thus the panel concluded that this was not the case.
Further, the respondent was using the domain name to resolve to a website that offered products and services relating to money games, casino games and gambling that were unrelated to those offered by the complainant, namely medical products. In the panel's opinion, this was not a good-faith use of the domain name.
The panel concluded that the respondent had no rights or legitimate interests in the domain name. The complainant consequently satisfied Paragraph 4(a)(ii) of the UDRP.
Finally, turning to the third requirement, a complainant must demonstrate that the domain name in question was both registered and used in bad faith. Paragraph 4(b) of the UDRP provides a list of non-exhaustive circumstances that may indicate bad-faith registration and use, including Paragraph 4(b)(iv), which provides that:
"(iv) by using the domain name, you [respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [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 your [respondent's] website or location or of a product or service on your [respondent's] website or location."
As for bad-faith registration, the panel drew such inferences as it considered appropriate from the respondent's failure to reply in accordance with Paragraph 14(b) of the UDRP Rules and thus found that the respondent did not have a legitimate use in mind when registering the disputed domain name.
The panel also noted that the disputed domain name resolved to a website that offered products and services that were unrelated to those of the complainant and that this created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain name. Indeed, the panel considered that the respondent was using the fame of the complainant's trademarks to improperly increase traffic to its website for commercial gain.
The complainant thus satisfied Paragraph 4(a)(iii) of the UDRP.
The panel therefore ordered the transfer of the domain name to them.
The outcome of Institut Merieux v Shilirong might have been different if the respondent had filed a response to the UDRP complaint, arguing, for example, that its registration of the domain name could not have been in bad faith because it was not aware of the complainant at the time of registration.
For further information on this topic please contact David Taylor or Jane Seager at Hogan Lovells by telephone (+33 1 53 67 47 47) or email (david.taylor@hoganlovells.com or [email protected]). The Hogan Lovells International LLP website can be accessed at www.hoganlovells.com.
Endnotes
(1) Institut Merieux v Shilirong, World Intellectual Property Organisation Case D2016-1215
This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.
