WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banque Pictet & Cie SA v. Cameron Jackson
Case No. D2016-2638
1. The Parties
Complainant is Banque Pictet & Cie SA of Carouge, Switzerland, represented by B.M.G. Avocats, Switzerland.
Respondent is Cameron Jackson of Kingston, New South Wales, Australia.
2. The Domain Names and Registrar
The disputed domain names <banquepictet.click>, <banquepictet.club>, <banquepictet.co>, <banquepictet.host>, <banquepictet.link>, <banquepictet.net>, <banquepictetnews.com>, <banquepictet.online>, <banquepictet.org>, <banquepictet.press>, <banquepictet.site>, <banquepictet.space>, <banquepictet.stream>, <banquepictet.tech>, <banquepictet.website>, <grouppictet.club>, <grouppictet.online>, <grouppictet.site>, <grouppictet.space>, <grouppictet.website>, <grouppictet.xyz>, <pictet.space> and <pictet.website> (the "Domain Names") are registered with Uniregistrar Corp (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 29, 2016. On December 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On the same day, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant 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 Respondent of the Complaint, and the proceedings commenced on January 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 26, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 27, 2017.
The Center appointed Robert A. Badgley as the sole panelist in this matter on January 31, 2017. 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 is a major wealth asset manager. Founded in Geneva in 1805, Complainant is recognized as one of Switzerland's leading private banks and a leading asset manager across Europe. Complainant holds registered trademarks in numerous countries and jurisdictions for the mark PICTET, including in Switzerland and Australia, Respondent's location. The Australian mark was registered on October 5, 2000.
Respondent registered the Domain Name <banquepictet.stream> on July 22, 2016. On November 2, 2016, Complainant's counsel sent Respondent a cease-and-desist letter demanding the transfer of that Domain Name. The following day, Respondent sent Complainant's counsel an email offering to transfer that Domain Name "for a fee". Complainant offered to pay USD 200. Respondent responded with a request for EUR 400, and indicated that he owned other Domain Names (not all of which are part of this proceeding) containing the mark PICTET. Respondent followed up several times with chaser emails, adding PICTET-formative domain names along the way.
On the last three days of November 2016, Respondent registered the other 22 Domain Names at issue in this case. The majority of the Domain Names resolve to Registrar parking pages, while others redirect to "www.youtube.com". .
5. Parties' Contentions
Complainant contends that it has satisfied all three elements required under the Policy for the transfer of each of the Domain Names.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant clearly holds rights, through registration and use, in the mark PICTET. The Panel also finds each of the Domain Names to be confusingly similar to the PICTET mark. Two of Domain Names are comprised solely of the PICTET mark and the generic Top-Level Domain ("gTLD"). Those two Domain Names are identical to Complainant's mark. With respect to the other 21 Domain Names, they are comprised of the dominant element PICTET plus a descriptive word or two – 14 are "banquepictet" plus the gTLD (one plus a country-code Top Level Domain ("ccTLD")), six are "grouppictet" plus the gTLD, and one is "banquepictetnews" plus the TLD. These additional words – banque (French for "bank"), group, and news – do little or nothing to diminish the confusing similarity between the strong and distinctive PICTET mark and the Domain Names.
Complainant has established Policy paragraph 4(a)(i).
B. Rights or Legitimate Interests
With respect to each of the Domain Names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Names. Respondent has not come forward to explain any possible bona fides. In his communications with Complainant's counsel, Respondent did not even try to explain why he registered the first of the Domain Names at issue. On the evidence, the Panel finds that the Respondent registered the Domain Names with a view to prevent the Complainant from reflecting its mark in a corresponding domain name and to sell to the Complainant, which does not provide any rights or legitimate interests.
Complainant has established Policy paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
With respect to each Domain Name, paragraph 4(b) of the Policy provides that the following circumstances, "in particular but without limitation," are evidence of the registration and use of the Domain Name in "bad faith":
(i) circumstances indicating that Respondent has registered or has acquired the 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 that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the 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) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the 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.
On this record, the Panel finds that Respondent has registered and used all 23 Domain Names in bad faith within the meaning of paragraph 4(b)(ii), quoted above. In addition, with respect to the 22 Domain Names registered after the Parties' communications, the Panel finds that Respondent registered and used those Domain Names in bad faith within the meaning of paragraph 4(b)(i) of the Policy, quoted above.
Complainant has established Policy paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <banquepictet.click>, <banquepictet.club>, <banquepictet.co>, <banquepictet.host>, <banquepictet.link>, <banquepictet.net>, <banquepictetnews.com>, <banquepictet.online>, <banquepictet.org>, <banquepictet.press>, <banquepictet.site>, <banquepictet.space>, <banquepictet.stream>, <banquepictet.tech>, <banquepictet.website>, <grouppictet.club>, <grouppictet.online>, <grouppictet.site>, <grouppictet.space>, <grouppictet.website>, <grouppictet.xyz>, <pictet.space> and <pictet.website> be transferred to Complainant.
Robert A. Badgley
Date: February 1, 2017