WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banque Pictet & Cie SA v. Brian Dyson and David Kalan
Case No. D2016-1114
1. The Parties
Complainant is Banque Pictet & Cie SA of Carouge, Switzerland, represented by B.M.G. Avocats, Switzerland.
Respondents are Brian Dyson and David Kalan, both of London, the United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”).
2. The Domain Names and Registrar
The Disputed Domain Name <mypictet.net> is registered with Ascio Technologies Inc. and the Disputed Domain Name <mypictet.com> is registered with Internet Domain Service BS Corp (the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2016. On June 2, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Disputed Domain Names. On June 3, 2016, the Registrars transmitted by email to the Center their verification responses confirming that Respondents are listed as the registrants and providing the contact details.
The Center verified that the 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 Respondents of the Complaint, and the proceedings commenced on June 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2016. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on June 29, 2016.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on July 11, 2016. 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’s group of companies is one of the leading wealth and asset managers in Europe. Complainant holds various trademarks, including the following:
- word mark PICTET, registered with the Swiss Trademark Registry on August 17, 2000 under No. P-478932 in class 36;
- word mark PICTET, registered as an international trademark on November 24, 2000 under No. 748934 in class 36 with designation of the UK.
Complainant uses its PICTET trademarks in connection with financial and monetary affairs.
The Disputed Domain Name <mypictet.net> was registered on February 10, 2016. It does not resolve to an active webpage.
The Disputed Domain Name <mypictet.com> was registered on February 11, 2016. It refers to a parking page of Respondent’s host.
On February 19, 2016, Complainant sent a cease and desist letter to Respondents. Complainant received no response.
5. Parties’ Contentions
Complainant considers that the Disputed Domain Names are under common control and that they are confusingly similar to trademarks and service marks in which it claims to have rights. Complainant further claims that Respondents have no rights or legitimate interests in respect of the Disputed Domain Names. According to Complainant, Respondents have not used the Disputed Domain Names in connection with a legitimate use. Also, according to Complainant, Respondents have not been commonly known by the Disputed Domain Names. Finally, Complainant claims that the Disputed Domain Names were registered and are used in bad faith.
Respondents did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
i. the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and
iii. the Disputed Domain Names have been registered and are being used in bad faith.
The Panel will deal with each of these requirements in turn.
A. Preliminary Matter: Consolidation of Respondents
A complaint may be brought against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties (see Wikimedia Foundation, Inc. v. Domain Hostmaster, Whois Privacy Services Pty Ltd / Yeonju Hong, Dzone Inc. / Domain Admin, Privacy Ltd. Disclosed Agent for YOLAPT, WIPO Case No. D2015-1978; Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281).
In the instant case, the Disputed Domain Names were registered within a one-day interval, using the same incomplete or fake postal address. The Disputed Domain Names are both identical variations of Complainant’s mark, only differing in the top-level domain. Such factors indicate that the Disputed Domain Names may be subject to the common control of a single entity or individual.
Moreover, the Panel notes that Respondents were given the opportunity to respond but did not file a response to Complainant’s contentions or object to Complainant’s request for consolidation. In light of these circumstances and on balance, the Panel is prepared to consolidate noting that it would be equitable and procedurally efficient to proceed to a single decision in this case.
B. Identical or Confusingly Similar
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has clearly established that there is a PICTET trademark in which it has rights. The trademark has been registered and used in various countries.
The Disputed Domain Names <mypictet.com> and <mypictet.net> reproduce Complainant’s trademark PICTET in its entirety, but add the generic term “my”. The Panel is of the opinion that the mere addition of non-distinctive text to a complainant’s trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (see Karen Millen Fashions Limited v. Akili Heidi, WIPO Case No. D2012-1395, where the domain name <karenmillenoutlet-australia.com> was held to be confusingly similar to the KAREN MILLEN trademark; Belstaff S.R.L. v. Jason Lau, Sharing, WIPO Case No. D2012-0783, where the domain name <belstaffjacken-outlet.info> was held to be confusingly similar to the BELSTAFF trademark; Lime Wire LLC v. David Da Silva/Contactprivacy.com, WIPO Case No. D2007-1168, where the domain name <downloadlimewirenow.com> was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word “download” because users typically download complainant’s software.)
Accordingly, Complainant has made out the first of the three elements of the Policy that it must establish.
C. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant has the burden of establishing that the respondent has no rights or legitimate interests in respect of the disputed domain name.
It is well established under the Policy that it is sufficient for a complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on the respondent. See Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
The Panel notes that Respondents have not apparently been commonly known by the Disputed Domain Names and that Respondents do not seem to have acquired trademark or service mark rights. Respondents’ use and registration of the Disputed Domain Names was not authorized by Complainant. There are no indications that a connection between Complainant and Respondents existed.
In fact, Respondents are not making any use of the Disputed Domain Names. Therefore, the Panel finds that Complainant has established that Respondents have no rights or legitimate interests in the Disputed Domain Names.
D. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the Disputed Domain Names were registered in bad faith and that they are being used in bad faith (see e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).
In the instant case, the Panel finds that Respondents must have had knowledge of Complainant’s rights in the PICTET trademark at the moment they registered the Disputed Domain Names, since Complainant’s trademark is a widely known trademark. Complainant has valid trademarks and offers services in the United Kingdom, where Respondents appears to be located. The Panel therefore finds that Respondents’ awareness of Complainant’s trademark rights at the time of registration suggests bad faith (see Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz, WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel, WIPO Case No. D2006-0007, where it was held that the respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of the complainant’s rights in the trademarks).
Respondents are not using the Disputed Domain Names. The passive holding of the Disputed Domain Names may amount to bad faith when it is difficult to imagine any plausible future active use of the Disputed Domain Names by Respondents that would be legitimate and not infringing Complainant’s well-known mark or unfair competition and consumer protection legislation (see Inter-IKEA v Polanski, WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh, WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows, supra). The fact that a complainant’s trademark has a strong reputation and is widely used and the absence of evidence whatsoever of any actual or contemplated good faith use are further circumstances that may evidence bad faith registration and use in the event of passive holding of domain names (Telstra Corporation Limited v. Nuclear Marshmallows, supra).
In the present case, the Panel is of the opinion that Complainant’s PICTET trademark is widely known, which makes it difficult to conceive any plausible legitimate future use of the Disputed Domain Names by Respondent.
The Panel also notes that Respondents did not respond to Complainant’s cease and desist letters. Therefore, the Panel considers that the inference of bad faith is strengthened, especially combined with the fact that Respondents provided incomplete or false contact details (see Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696, where it was held that the use of a proxy registration service to avoid disclosing the identity of the real party in interest is also consistent with an inference of bad faith when combined with other evidence of evasive and irresponsible conduct).
Finally, by failing to respond to the Complaint, Respondents did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions from this it considers appropriate.
In view of the above, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Names were registered and are being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names <mypictet.com> and <mypictet.net> be transferred to Complainant.
Flip Jan Claude Petillion
Date: July 25, 2016