ARBITRATIONANDMEDIATION CENTER

EXPERT DETERMINATION LEGAL RIGHTS OBJECTION
Biotechnology Industry Organization v. Starting Dot
Case No. LRO2013-0056

1. The Parties
Objector/Complainant (“Objector”) is Biotechnology Industry Organization of Washington, United States ofAmerica, represented by Foley & Lardner LLP, United States of America.
Respondent/Applicant (“Respondent”) is Starting Dot of Neuilly sur Seine, France, represented by Dreyfus &associés, France.

2. The applied-for gTLD string
The applied-for gTLD string is <.bio>.

3. Procedural History
The Legal Rights Objection (the “Objection”) was filed with the WIPO Arbitration and Mediation Center (the“WIPO Center”) on March 13, 2013 pursuant to the New gTLD Dispute Resolution Procedure (the“Procedure”).
In accordance with Article 9 of the Procedure, the WIPO Center has completed the review of the Objection
on March 25, 2013 and has determined that the Objection complies with the requirements of the Procedureand the World Intellectual Property Organization Rules for New gTLD Dispute Resolution for Existing Legal
Rights Objections (the “WIPO Rules for New gTLD Dispute Resolution”).
In accordance with Article 11(a) of the Procedure, the WIPO Center formally notified the Respondent of the
Objection, and the proceedings commenced on April 18, 2013. In accordance with Article 11(b) and relevant
communication provisions of the Procedure, the Response was timely filed with the WIPO Center on
May 15, 2013.
The WIPO Center appointed Christopher J. Pibus as the Panel in this matter on June 15, 2013. The Panelfinds that it was properly constituted. The Panel has submitted the Statement of Acceptance andDeclaration of Impartiality and Independence, as required by the WIPO Center to ensure compliance with
Article 13(c) of the Procedure and Paragraph 9 of WIPO Rules for New gTLD Dispute Resolution.

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4. Factual BackgroundA. Objector
Objector is Biotechnology Industry Association, an association serving the biotech industry and broader life
sciences community in the United States and internationally. Objector has adopted the name, trade-markand acronym BIO in providing advocacy, business development and educational services since 1993.
Objector relies on 15 trade-mark registrations which comprise or include the BIO. The most senior
registrations were obtained through the United States Patent and Trademark Office (“USPTO”) in 1995 (Nos.
1,889,271 and 1,894,719), for class 16 and 42, respectively. These registrations protect the unadorned word
mark BIO; the rest of Objector’s portfolio is comprised of design marks and BIO-prefixed combination marks.
Objector describes its referenced services corresponding to class 16 and 42 as follows:“Class 16: Newsletters and publications, including newsletters and publications in the field ofbiotechnology”“Class 41:

Association services in the nature of promoting the interests of biotechnology companies”

Objector also owns a number of more recent registrations in the United States (BIO BUSINESSSOLUTIONS), European Union (BIO EUROPE), France (BIO INTERNATIONAL), Switzerland (BIO
EUROPE SPRING) and the United Kingdom of Great Britain and Northern Ireland (BIO-EUROPE SPRING)
which cover class 35:“Class 35: Conducting trade shows exhibitions in the field of biotechnology; association services,namely promoting the industry of biotechnology companies through politics, education and public
relations”
The public recognition of Objector is founded in part on the annual conference it conducts and has
conducted under the title the BIO International Convention since 1993. Objector describes the convention as“the premier worldwide annual conference for the biotechnology community”. Support for thischaracterization of the event is evidenced through the number of attendees, the number of countries
represented, the presence of international governmental delegations, and the scope of media coverage.
B. Respondent
Respondent is Starting Dot, a “société anonyme simplifiée”, organized under the laws of France.
Respondent has applied to register the <.bio> gTLD string. It identifies its primary target market as theorganic industry. Respondent’s stated goal is to provide a reliable platform for Internet sales and distribution
by organic suppliers. Domain name registrants will be subject to Respondent’s certification process toensure that their organic products adhere to regulated standards. This level of compliance, according to1
Respondent, does not exist among existing TLD’s serving the food industry.
Respondent also identifies a secondary target market for the <.bio> gTLD: life sciences. In its gTLD
application, Respondent only briefly mentions this secondary purpose, noting that “The <.bio> gTLD will
service as a unique source of information on life sciences, while ensuring that these contents are dissociatedfrom organic related information”.
Respondent owns European Community trade-marks for DOT.BIO (No. 010565455) and BIO DOT-BIO.NET(No. 010565729), both of which registered in June 2012 and correspond to classes 35, 38, 42 and 45. A
related domain name <dot_bio.net> was registered in November 2011. To date, there is no indication that1

In this decision, the Panel has only referenced the Respondent’s “New gTLD Application – No. 1-1000-94806” for the description of its

goals, benefits, etc., in the form attached as Annex 1 to the Objection.

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Respondent has actually used these “dot.bio” indicators in any tangible way, except to describe its futureplans.

5. Parties’ Contentions
A. Objector
Objector relies on its strong rights and reputation in the BIO trade-mark. It points to its portfolio of registeredmarks, which extend not only to the United States but to the European Community and individual European
countries including France, where the Respondent is based. In terms of reputation, Objector placesemphasis on the long-standing success of its annual Bio International Convention and the broad range ofparticipants and media coverage over 20 years. Objector claims that this demonstrates the extent to which
the mark BIO is closely associated with Objector, and the public’s level of recognition of the BIO mark.
Objector characterizes its evidence as proving (1) its significant efforts to build goodwill and reputation in
BIO; (2) the fact that the BIO mark has become synonymous with Objector’s services, in the public’s mind;and (3) Objector’s strong trade-mark rights.
Following the requirements set out in the ICANN New gTLD Applicant Guidebook, Module 3 (“Guidebook”),
Objector argues that the disputed <.bio> gTLD takes unfair advantage of the distinctive character andgoodwill in the BIO mark. Objector anticipates that members of the biotech community may register <.bio>
domain names, and thereby take advantage of Objector’s reputation. The core complaint appears to be thatmembers of the public encountering a <.bio> domain name in the name of a biotech business will mistakenly
assume that the domain name and its registrant are associated or affiliated with, or sponsored or endorsed2by the Objector.
Secondly, Objector submits that the registration of <.bio> will unjustifiably impair the distinctive character or
reputation of the BIO mark. This argument is founded on perceived fundamental conflicts between theinterests of the biotech community and the organics community. Objector submits that the reputation anddistinctive character of BIO will be fundamentally harmed by Respondent’s deliberate association of the BIO
name with a philosophical opposition to biotechnology, and advocacy for positions (such as the elimination ofgenetic engineering) which are antithetical to the views of Objector’s members.
Finally, Objector submits that the disputed gTLD “<.bio> is likely to cause confusion with [Objector’s] mark”.
The similarity of the marks in question is emphasized, not only as compared to the registered BIO word
marks but also to the BIO-formative marks, where BIO is the first and dominant feature. Objector relies on
the connection between its services to the biotech community, and the fact that Respondent has identified
the life sciences field as its secondary target market. The anticipated confusion will involve the wrongful
association of registered <.bio> domain names with the Objector’s organization, where no such association
exists.
B. Respondent
Respondent raises many issues, both procedural and substantive. By way of preliminary arguments
Respondent complains of non-disclosure by Objector, covering (1) opposition to Objector’s BIO application(Community Trademark 010999266); (2) Objector’s parallel Community objection to the <.bio> gTLD; (3)registrations of Respondent; and (4) trademark rights of Respondent in relevant DOT.BIO marks.
In substantive terms, Respondent objects to the strength and ambit of protection for the Objector’s BIO
marks. Respondent argues that “bio” lacks distinctiveness because it is commonly understood as a
descriptive word in the European Community (and other countries) which denotes a number of different
2

The Panel will refer to this hereafter as the “wrongful association” argument

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meanings, including biography, biology and most importantly, organic products. Among other evidence,
Respondent relies on a survey which purports to show that the word “bio” in France and Germany is primarily
understood to involve organic farming and products.
Respondent submits that it cannot be taking unfair advantage of the distinctive character of the BIO
trademark, because the mark is in fact non-distinctive, functioning as a generic term used as a prefix orabbreviation for words such as biography or biology, or functioning as a French word meaning “without
fertilizers or synthetic pesticides, natural” (Larousse). Respondent identifies many third party users of biorelated domain names, against which Objector has never taken any action.
Respondent argues that its use of <.bio> will not unjustifiably impair the distinctive character or reputation in
Objector’s mark, relying on the multiple meanings of “bio” in different fields. Respondent asserts its rights touse <.bio> even if its organic community espouses divergent views from the biotechnology community,
relying on freedom of speech.
Finally, Respondent denies that the use of <.bio> would create a likelihood of confusion with Objector’s
trade-marks, because those marks are based on a term with only a low degree of distinctiveness, and the<.bio> gTLD string will be understood as a generic term. Respondent submits that Objector has failed toacknowledge that mere likelihood of confusion is not the standard established in the Guidebook: the criteria
requires “impermissible” likelihood of confusion. The wrongful association argument is criticized on the basisthat Objector has not provided any basis for this anticipated response among the public.

6. Discussion and Findings
A. Preliminary Objections
Respondent has raised a number of preliminary challenges, based on non-disclosure and evidentiary issues.
The Panel has reviewed all these arguments, and acknowledges the additional information provided by
Respondent which appropriately expands the record in this proceeding. The principal allegations of nondisclosure are made: (1) additional Community and United States trade-mark filings for BIO Designs and a
related opposition proceeding; and (2) Community Objection initiated by Objector.
With respect to applications for the new BIO designs, it is not clear to the Panel that the failure to disclose
these filings is worthy of any finding adverse to Objector. Respondent has now placed all the relevantmaterials before the Panel. With respect to the Community Objection, the Panel is of the view that it would
have been more appropriate for Objector to have disclosed such Community Objection. However, theexistence of the parallel objection does not prevent this proceeding from moving forward to a determination,
as it is a separate matter to be adjudicated under its own criteria and process. The Panel will restrict its
analysis and comments in this matter to the potential for infringement of existing legal rights of Objector, andwill not comment on the Community Objection.
B. Analysis
The potential use of the applied-for gTLD by the Respondent must be evaluated in terms of whether it:(i)takes unfair advantage of the distinctive character or the reputation of the Objector in its BIO trademarks; or(ii)unjustifiably impairs the distinctive character or the reputation of Objector’s BIO mark; or(iii)
otherwise creates an impermissible likelihood of confusion between the applied-for gTLD and the
Objector’s BIO markIn performing its analysis , the Panel is directed by the Guidebook to consider the non-exclusive factors set

page 5out below, and the Panel’s conclusions are noted in connection with each factor:
1.
Whether the applied-for gTLD is identical or similar, including in appearance, phonetic sound,or meaning, to the Objector’s existing mark.
The <.bio> gTLD string is clearly identical to Objector’s trade-mark.
This factor favours Objector.
2.

Whether the Objector’s acquisition and use of rights in the mark has been bona fide.

Objector has submitted strong evidence in support of its rights to the BIO trade-marks in connection with its
industry association in the biotechnology field. Objector’s use extends over the past 20 years, and there isno suggestion that its use of BIO has been anything other than bona fide.
This factor favours Objector.
3.
Whether and to what extent there is recognition in the relevant sector of the public of the sign
corresponding to the gTLD, as the mark of the Objector, of the Respondent or of a third party.
A fundamental issue in this proceeding is the appropriate recognition of the word “bio” by different sectors of
the public, founded on differences in the basic meaning of the word, and on differences in uses in different
parts of the world. From the Objector’s perspective, the word “bio” has become recognized as a powerfulbrand, signifying the services of its industry association and related activities. From the Respondent’s
perspective, the word “bio” itself is not perceived as a trade-mark, but as a word in common currency (inFrance and Germany in particular) which denotes organic characteristics in food or farming, and a variety ofother meanings.
Objector points to its association members and the wider life sciences community as its relevant public, andargues that there is significant recognition for its BIO marks in that sector. The evidence supports that
contention so far as it goes. However, the Respondent has shown convincingly that the word “bio” actually
has a strikingly different connotations in what is arguably a broader public located in Europe and other partsof the world. The meaning ascribed to BIO by the Respondent is not that of a sign designating a source, inthe terms conventional to trade-mark theory, but rather a generic set of meanings that include an organic
designation, biography, biology and other descriptive terms.
Respondent has gathered evidence showing that the word “bio” is widely used in third party trade-marks anddomain names. It also appears that Objector has tolerated widespread use of the term for many purposes(which even includes some examples of conferences in the field of biology). No examples of enforcement
against bio-formative domain names under the Uniform Domain Name Dispute Resolution Policy wereidentified. In the Panel’s view, this tends to show co-existence among many users of “bio” related signs,
supporting Respondent’s contention that “bio” has many meanings and functions as a multi-facetted genericdescriptor.
This factor favours the Respondent.
4.
Respondent’s intent in applying for the gTLD, including whether the Respondent, at the time of
application for the gTLD, had knowledge of the Objector’s mark, or could not have reasonably been
unaware of that mark, and including whether the Respondent has engaged in a pattern of conduct
whereby it applied for or operates TLDs or registrations in TLDs which are identical or confusingly
similar to the marks of others.
The clearest evidence of Respondent’s intent is set out in its application to secure the <.bio> gTLD string.
As discussed above under Section 4 “Factual Background”. Respondent has chosen the string to serve as aplatform primarily for the organics industry. Respondent has identified a lack of compliance withgovernmental standards among Internet vendors of organic wares, and has developed a plan to permit only

page 6those parties who are certified as meeting organic standards to own domain names under the <.bio> gTLD.
By virtue of this plan, Respondent has managed to obtain approval for its application from the International
Federation of Organic Agricultural Movements (IFOAM), the umbrella organization for organic agriculture
with members from over 100 countries.
Significantly, no specific conduct on the part of Respondent which could constitute evidence of an intention
to trade on Objector’s reputation or the core elements of its business has been identified. On the evidence,
the Panel therefore finds that Respondent intends to use the <.bio> string for the legitimate purposes
described in its application.
In terms of awareness of Objector’s trade-mark rights, it appears likely that Respondent might have had atleast some awareness, given the Internet presence of Objector’s business and its international registrationsof the BIO marks. However, in this Panel’s view, this factor does not carry significant weight when there isotherwise no evidence that Respondent is attempting to trade on those rights.
In this matter, there has also been no suggestion that Respondent has engaged in a serial pattern ofacquiring questionable gTLD strings.
The Panel concludes that this factor favours the Respondent.
5.
Whether and to what extent the Respondent has used, or has made demonstrable preparations
to use, the sign corresponding to the gTLD in connection with a bona fide offering of goods orservices or a bona fide provision of information in a way that does not interfere with the legitimate
exercise by the Objector of its mark rights.
As indicated above, Respondent’s application sets out the most reliable evidence of its plans for the <.bio>
string. In this Panel’s view those stated plans indicate a bona fide offering of services related primarily to theoperation of a platform for the sale and distribution of properly certified organic wares. At this point, there isno tangible use of the <.bio> gTLD by Respondent which would allow the Panel to truly test how and what it
will offer. In the present circumstances, the Panel must deal with the evidence as it exists, and is led to theconclusion that the Respondent’s preparations to use the <.BIO> sign are bona fide.
Finally, the Panel must evaluate Respondent’s plans to determine if the intended services will be provided ina way that does not interfere with the legitimate exercise of Objector’s rights in the BIO mark. In this regard,
Objector apprehends that the public will be deceived into thinking that registrants using domain names underthe <.bio> gTLD are somehow endorsed, sponsored or associated with the Objector’s business, but has not
filed convincing evidence to support this assertion. In any event the Panel finds it is equally plausible thatmembers of the public encountering <.bio> domain names will view the gTLD string as evoking one of theother meanings of the word, such as biography, biology or organic.
This factor favours the Respondent.
6. Whether the Respondent has marks or other intellectual property rights in the sign corresponding
to the gTLD, and, if so, whether any acquisition of such a right in the sign, and use of the sign, hasbeen bona fide, and whether the purported or likely use of the gTLD by the Respondent is consistent
with such acquisition or use.
Respondent has recently acquired registered rights in two related Community trade-marks. However, theserights have only been obtained over the past year. The trade-mark rights, such as they are, are notinconsistent with the planned acquisition and use of the <.bio> string.
This factor favours the Objector.
7.
Whether and to what extent the Respondent has been commonly known by the sign
corresponding to the gTLD, and if so, whether any purported or likely use of the gTLD by the
Respondent is consistent therewith and bona fide.

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There is no evidence that Respondent has been commonly known or identified by the BIO sign, except for
activities relating to its planned acquisition of the <.bio> string. However, as indicated above, the bona fidesof Respondent have been established in the evidence.
This factor is neutral.
8. Whether the Respondent’s intended use of the gTLD would create a likelihood of confusion withthe objector’s mark as to the source, sponsorship, affiliation, or endorsement of the gTLD.
Given the generic nature of the word “bio” and its manifold and diverse meanings not only in English but inother languages, proof of the likelihood of confusion is very difficult to establish. Objector has not satisfied
the Panel on this point. If situations arise in the future, where second-level domain name registrants use the<.bio> gTLD string in a manner or combination which infringes Objector’s rights in its field, Objector willcertainly be at liberty to enforce those rights as circumstances may demand. Nothing in this decision isintended to limit the Objector’s enforcement rights in such future situations.
This factor favours the Respondent.

7. Conclusion and Decision
The Panel concludes that the Objector has failed to make out its case under the first criteria of Section 3.5.2of the Guidebook. The evidence does not establish that the Respondent’s use of the <.bio> string will takeunfair advantage of the distinctive character or reputation of the Objector’s BIO trade-marks. Objector has
not proven, on the balance of probabilities that is unfair for Respondent to adopt as an identifier a descriptive
term which is directly related to the organics industry which Respondent’s enterprise intends to serve.
With respect to the second criteria of Section 3.5.2 of the Guidebook, the evidence has failed to show how
the Respondent’s use of the <.bio> string will unjustifiably impair the distinctive character or reputation of
Objector’s BIO marks. In fact, the evidence tends to show that Objector has chosen as its mark a word thatbears multi-facetted meanings in many different languages. As a consequence, there are many other users
who have adopted “bio” -formative identifiers. In this context, it is difficult to see how any unjustifiable
impairment can occur, so long as Respondent actually holds fast to its planned use of the <.bio> string as
described in its application.
With respect to the third criteria of Section 3.5.2 of the Guidebook, the evidence does not establish that the
Respondent’s planned use for the applied-for gTLD will otherwise create an impermissible likelihood ofconfusion with Objector’s BIO mark. As set out above, likelihood of confusion has not been proven to the
Panel’s satisfaction. In addition, the Panel notes that the qualifier “impermissible” is built into the criteria:
Objector must not only show likelihood of confusion, but that it is impermissible. Prior WIPO LRO decisions
have commented on this point, and this Panel particularly notes with approval the discussions in Right at
Home v. Johnson Shareholdings Inc., WIPO Case No. LRO2013-0030, and Del Monte Corporation v. Del
Monte International Gmbh, WIPO Case No. LRO2013-0001. Applying the same reasoning, the Panel does
not find any evidence of untoward behaviour on the part of the Respondent, or anything intolerable in thesituation if Respondent is permitted to adopt the gTLD in question, as planned.
For the foregoing reasons, the Panel rejects the Objection.

[signed]Christopher J. Pibus
Sole Panel Expert
Date: August 19, 2013