WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banque Pictet & Cie SA v. tungchan, tung / Xiamen eNameNetwork Co., Ltd
Case No. D2015-2013
1. The Parties
The Complainant is Banque Pictet & Cie SA of Carouge, Switzerland, represented by B.M.G. Avocats, Switzerland.
The Respondent is tungchan, tung of Beijing, China / Xiamen eName Network Co., Ltd of Xiamen, Fujian, China, self-represented.
2. The Domain Name and Registrar
The disputed domain name <pictetchina.com> (the “Domain Name”) is registered with eName Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2015. On November 5, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 6, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 11, 2015 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 November 13, 2015.
On November 11, 2015, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On November 13, 2015, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 November 25, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2015. The Response was filed with the Center on November 28, 2015.
The Center appointed Karen Fong as the sole panelist in this matter on December 21, 2015. 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 part of the Pictet Group, one of the leading wealth and asset managers in Europe. It was created in Geneva in 1805 and is now established in 26 of the most important financial centers across the world and employs more than 3,700 people. The Group manages around CHF 390 billion. The Group provides its services under the mark PICTET. The Complainant owns trade mark registrations for PICTET and PICTET 1805 & Design in class 36 in numerous jurisdictions. The earliest trade mark registration for the PICTET word mark submitted in evidence dates back to August 17, 2000. The International trade mark registration for PICTET designating China also dates back to 2000. The Complainant owns numerous domain names containing PICTET within them, including <pictet.com>.
The Respondent registered the Domain Name on August 10, 2015. The Domain Name is not connected to an active website.
On September 1, 2015, the Complainant’s authorized representation sent a cease and desist letter to the registrant by email and registered post to the addresses listed on the WhoIs information. On September 15, 2015, an email was received by the Complainant from an email address which is different to the one listed on the WhoIs saying “If you are interested in the domain name pictetchina.com, please inform your bid”. The Complainant’s representative offered on September 21, 2015 to pay a price equivalent to the price paid to register the Domain Name and related costs. On the same day, the same sender responded saying, “I am the owner of the domain name pictetchina.com. How much is your offer?”. The Complainant’s representative replied on October 7, 2015 offering to pay USD 200. The Respondent answered on October 9, 2015 that he would transfer the Domain Name upon payment of USD 16,000.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the trade mark PICTET, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent denies all of the claims in the Complaint. He contends that the use of the Domain Name will be confined to China. There are others who own trade marks in China for PICTET in other classes including trade mark registration number 12663588 for PICTET and Logo in Class 14. A search report with details of the trade mark application was submitted. This trade mark was filed in the name of a company located in Shenzhen, Guangdong, China. Although no status of the trade mark is shown on the report provided by the Respondent, an independent search conducted by the Panel on the official website of the Chinese Trade Mark Office reveals that the trade mark has been abandoned/withdrawn/cancelled.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and being used in bad faith.
B. Language of the Proceeding
The Rules, paragraph 11, provides that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the registration agreement for the Domain Name is Chinese.
The Complainant submits in paragraph IV of the Complaint that the language of the proceeding should be English. The Complainant contends that the Domain Name is in Latin characters, it comprises the Complainant’s trade mark as well as the English name of the country, China. The Complainant is located and based in Switzerland and does not speak, read, or understand Chinese. Having to submit the documents in Chinese will unduly delay the process and will also cause the Complainant to incur substantial expense for translation. The Respondent understands and is able to communicate in English as he negotiated the attempted sale of the Domain Name to the Complainant in English.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding and is satisfied that the Respondent appears to understand English. In addition to the transfer negotiations in English, he also filed a Response to the Complaint in Chinese denying all the allegations which further indicates he is able to read and understand English. The Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that in any case all of the communications from the Center to the parties were transmitted in both Chinese and English. The Respondent did not in the Response or in any other correspondence request the proceedings be in Chinese. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the PICTET trade mark.
The threshold test for confusing similarity involves the comparison between the trade mark and the disputed domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Domain Name comprises the trade mark PICTET in its entirety together with the geographical term, “China”. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to generally ignore the country code top level domain suffix. Further, the term “China” does not negate the identity or confusing similarity encouraged by the Respondent’s use of trade mark PICTET in the Domain Name.
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
D. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in paragraph 2.1 of the Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant alleges that the Respondent is not a licensee of the Complainant, nor has the Complainant granted to the Respondent authorization to use the Domain Name. There is no indication that the Domain Name corresponds to the Respondent’s name. Further the Respondent does not use the Domain Name in connection with a website.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent.
The standard of proof required under the UDRP is “on balance”. An asserting party needs to establish that it is more likely than not that the claimed fact is true. A blanket denial of all claims without any explanation or relevant supporting evidence would usually not suffice. The Respondent has denied these allegations and in support of his case relies on the fact that other parties beside the Complainant have rights to PICTET in China. He submits in evidence a third party’s withdrawn/abandoned/cancelled trade mark for PICTET and Logo. This does not assist his case in any way. The Respondent has to demonstrate that he has rights or legitimate interests in the Domain Name. Even if more than one party would have rights to use a domain name, it does not follow that such right would extend to any or every person and that the domain name would be then free to be used by anybody, which is what the Respondent is suggesting. The Respondent has failed to produce any evidence of his rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Complainant has satisfied the second element of the UDRP.
E. Registered and Used in Bad Faith
To succeed under the Policy, a Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The PICTET trade mark is registered and has been used in many parts of the world for a long period of time before the Domain Name was registered. The word PICTET does not have any ordinary meaning in the English or Chinese. A search on Google revealed only references to the Complainant on the first two pages. It would be inconceivable that the Respondent had no knowledge and actual notice of the Complainant’s mark when the Domain Name was registered. The Panel concludes that the registration was made in bad faith.
In addition to the circumstances of registration referred to above, the Respondent’s asking the Complainant to pay USD 16,000 to transfer the Domain Name. The offer to transfer the domain name for sums exceeding the reasonable cost of registration and maintenance falls squarely within the circumstances in paragraph 4(b)(i) of the Policy which is evidence of bad faith. The Respondent has not raise any substantive points to challenge these allegations. Considering the circumstances, the Panel considers that this domain name was also used in bad faith.
Accordingly, the Complaint has satisfied the third element of the UDRP.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <pictetchina.com> be transferred to the Complainant.
Date: January 5, 2016