WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Banque Pictet & Cie SA v. marylee, lee / Xiamen eNameNetwork Co., Ltd

Case No. D2015-2015

1. The Parties

Complainant is Banque Pictet & Cie SA of Carouge, Switzerland, represented by B.M.G. Avocats, Switzerland.

Respondent is marylee, lee of Shanghai, China; Xiamen eNameNetwork Co., Ltd of Xiamen, China.

2. The Domain Name and Registrar

The disputed domain name <pictet-china.com> 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 disputed domain name. On November 6, 2015, 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 Complainant on November 9, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 10, 2015.

On November 9, 2015, the Center transmitted an email to the Parties in English and Chinese regarding the language of the proceeding. On November 10, 2015, Complainant confirmed its request that English be the language of the proceeding. Respondent did not submit any comments within 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 Respondent of the Complaint in English and Chinese, and the proceeding commenced on November 17, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 8, 2015. On December 8 and 9, 2015, the Center received two emails from Respondent in Chinese.

The Center appointed Yijun Tian as the sole panelist in this matter on December 18, 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

Complainant, Banque Pictet & Cie SA, is a company incorporated in Carouge, Switzerland. Founded in 1805, Complainant is one of the leading wealth and asset managers in Europe. Complainant has offices in 26 of the most important financial centers around the world. It manages around CHF 390 billion (Annex 4 to the Complaint).

Complainant has exclusive rights in the PICTET marks. Complainant is the exclusive owner of well-known registered trademarks globally, including in Switzerland (since November 24, 2000) and China (since November 24, 2000) (Annex 6 to the Complaint).

Complainant also operates its official websites at domain names such as <pictet.com>.

The disputed domain name <pictet-china.com> was registered on September 2, 2015. At the time of this decision, the disputed domain name does not resolve to any active webpage. Respondent has offered the disputed domain name for sale to Complainant for USD 10,000.

5. Parties' Contentions

A. Complainant

Complainant contends that the disputed domain name <pictet-china.com> is confusingly similar to its trademark PICTET, the registration and use of which by Complainant preceded the registration of the disputed domain name.

Complainant contends that Respondent has no rights or legitimate interests in respect of the disputed domain name.

Complainant contends that the disputed domain name was registered and is being used in bad faith.

Complainant requests that the disputed domain name <pictet-china.com> be transferred to it.

B. Respondent

Respondent did not formally reply to Complainant's contentions. Respondent only replied via two emails and contended:

The disputed domain name is mainly for use in China and the website is under construction.

The dispute should be resolved through an arbitration center in China.

The PICTET mark has been registered in China under different classes, including registration No. 12663588, which is not owned by a company in Europe.

6. Discussion and Findings

6.1. Language of the Proceeding

The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:

(a) The disputed domain name <pictet-china.com> is in Latin characters.

(b) The disputed domain name includes Complainant's mark and the English name of the country, China.

(c) Complainant is based in Switzerland, and does not speak, read or understand Chinese. As a result, if Complainant were required to submit all documents in Chinese, the administrative proceeding would be unduly delayed and Complainant would have to incur substantial expenses for translation.

(d) Respondent understands English as he was prepared to negotiate in English the sale of the disputed domain name to Complainant (Annex 10 to the Complainant). Indeed, it is apparent from the written communications exchanged before the present Complaint with respect to a possible transfer of the disputed domain name that Respondent is able to understand and communicate in the English language.

Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.

Paragraph 11(a) allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the Parties in his or her abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") further states:

"in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement." (WIPO Overview 2.0, paragraph 4.3; see also L'Oreal S.A. v. MUNHYUNJA, WIPO Case No. D2003-0585).

The Panel has taken into consideration the fact that Complainant is a company based in Switzerland, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the disputed domain name includes Latin characters and the English word "china" (Compagnie Gervais Danone v. Xiaole Zhang, WIPO Case No. D2008-1047).

On the record, Respondent appears to be a Chinese individual and thus presumably is not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name <pictet-china.com> is registered in Latin characters and particularly in the English language, rather than Chinese script; (b) the written communications exchanged before the present Complaint in relation to a possible transfer of the disputed domain name show that Respondent is able to understand and communicate in the English language; (c) the Center has notified Respondent of the proceeding in both Chinese and English, and Respondent has indicated no objection to Complainant's request that English be the language of the proceeding; (d) the Center informed Respondent that it would accept a Response in either English or Chinese.

Considering these circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in his or her ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English.

6.2. Discussion and Findings

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

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that Complainant has registered rights in the PICTET marks. The PICTET mark has been registered worldwide including in Switzerland and China, and Complainant has had a widespread reputation as one of the leading wealth and asset managers in Europe for many years.

The disputed domain name comprises the PICTET mark in its entirety. The disputed domain name <pictet-china.com> only differs from Complainant's trademark by the additions of a hyphen "-" and the English word "china". This does not eliminate the identity or at least the confusing similarity between Complainant's registered trademark and the disputed domain name.

Previous UDRP panels have consistently held that a domain name may be identical or confusingly similar to a trademark for purposes of the Policy "when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name." (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).

Generally a respondent "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it." (The Argento Wine Company Limited v. Argento Beijing Trading Company, WIPO Case No. D2009-0610; General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087).

The mere additions of a hyphen "-" and the descriptive term "china" as suffixes to Complainant's mark fails to distinguish to this Panel the disputed domain name from Complainant's trademark. By contrast, it may increase the likelihood of confusion. China is where Complainant's company has branches and has registered the PICTET marks. Internet users who visit <pictet-china.com> are likely to be confused and may falsely believe that <pictet-china.com> is operated by Complainant for providing PICTET-branded financial services in China.

Thus, the Panel finds that the additions are not sufficient to negate the confusing similarity between the disputed domain name and the PICTET marks.

The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:

(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;

(ii) having been commonly known by the disputed domain name; or

(iii) legitimate noncommercial or fair use of the disputed domain name.

The overall burden of proof on this element rests with Complainant. However, it is well established that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant's contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai, WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).

Complainant has registered rights in the PICTET mark globally, including in Switzerland (since November 24, 2000) and China (since November 24, 2000) (Annex 6 to the Complaint), which long precede Respondent's registration of the disputed domain name (September 2, 2015).

Moreover, Respondent is not an authorized dealer of PICTET-branded products/services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby has shifted the burden to Respondent to produce evidence to rebut this prima facie case (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455). Respondent's communications have not rebutted Complainant's case.

Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:

(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word "pictet" in the disputed domain name (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the PICTET mark or to apply for or use any domain name incorporating the PICTET mark.

(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name <pictet-china.com>. Respondent registered the disputed domain name <pictet-china.com> on September 2, 2015, long after Complainant's registrations of the PICTET mark (e.g., in Switzerland and China in 2000). The disputed domain name is identical or confusingly similar to Complainant's PICTET mark.

(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainant, Respondent was in actuality offering to sell the disputed domain name to Complainant for a a price of USD 10,000 which is almost certainly higher than the actual registration cost (Annex 10 to the Complaint).

The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds that the Complaint fulfils the second condition of paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the disputed domain name; or

(ii) Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.

Given the offer of sale discussed supra, the Panel concludes that the circumstances referred to in paragraph 4(b)(i) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and is using the disputed domain name in bad faith.

a) Registered in Bad Faith

The Panel finds that Complainant has a widespread reputation in the PICTET marks with regard to its products and services. Complainant has registered its PICTET marks internationally, including in China (since 2000). Moreover, Respondent was offering and selling the disputed domain name with a price of USD 10,000 which is almost certainly higher than the actual registration cost. Respondent would likely not have registered the disputed domain name and offered to sell it with a high price if Respondent was unaware of PICTET's reputation. In the other words, it is not conceivable that Respondent would not have had actual notice of Complainant's trademark right at the time of the registration of the disputed domain name. The Panel also finds that the PICTET mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with Complainant (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).

Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant's PICTET-branded products and/or services.

b) Use in Bad Faith

After Respondent received Complainant's letter requesting the transfer of the disputed domain name, Respondent proposed to transfer it to Complainant for USD 10,000. This indicates use in bad faith as per paragraph 4(b)(i) of the Policy.

Furthermore, at the time this decision is rendered, the disputed domain name <pictet-china.com> is inactive, or "passively held". Regarding passively held domain names, the WIPO Overview 2.0 provides: "With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith" (paragraph 3.2, WIPO Overview 2.0). The WIPO Overview 2.0 further states: "The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the disputed domain name was used in bad faith given the circumstances surrounding registration, and vice versa."

Based on information provided by Complainant, it is one of the leading wealth and asset managers in Europe. Complainant has offices in 26 of the most important financial centers around the world. It manages around CHF 390 billion (Annex 4 to the Complaint). Complainant has registered rights in the PICTET marks globally, including in Switzerland and China (since 2000). As such, Complainant's PICTET marks are widely known. Taking into account all the circumstances of this case, the Panel concludes that the passively held disputed domain name is used by Respondent in bad faith. Nothing in Respondent's informal communications rebuts this finding.

The Panel therefore holds that the Complaint fulfils the third condition of paragraph 4(a) of the Policy.

7. Decision

For all 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 <pictet-china.com> be transferred to Complainant.

Yijun Tian
Sole Panelist
Dated: December 25, 2015