WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Banque Pictet & Cie SA v. Domain Administrator, See PrivacyGuardian.org / Domain Admin
Case No. D2018-2553
1. The Parties
The Complainant is Banque Pictet & Cie SA of Geneva, Switzerland, represented by Inlex IP Expertise, France.
The Respondent is Domain Administrator, See PrivacyGuardian.org of Phoenix, Arizona, United States of America / Domain Admin of Hong kong, China.
2. The Domain Names and Registrar
The disputed domain names <pictet-collection.com> and <pictetcollection.com> are registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2018. On November 8, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 8, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 13, 2018 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 the same day.
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 14, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2018.
The Center appointed Daniel Peña as the sole panelist in this matter on December 17, 2018. 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 a Swiss private bank and financial services company founded and based in Switzerland. Headquartered in Geneva, it is one of the largest Swiss banks in the world and primarily offers services in wealth management, asset management, and asset servicing to private clients and institutions.
The Complainant employs more than 4,300 people and it has a network of 27 offices in financial services centers, including registered banks in Geneva, Luxembourg, Nassau, Hong Kong, and Singapore.
The Complainant is also involved in art sector, among others, creating its own collection of works of art. Historically, these works have remained within the bank.
Given the scale and management needs of this sector, the works have been grouped into a collection, the so-called “Pictet Collection”. It is its official name and it is also a registered trademark.
The Complainant owns trademarks PICTET for financial services and PICTET COLLECTION for its complementary services in art sector, as follows:
- International trademark PICTET No. 748934 registered on November 24, 2000, in Bahrain, Colombia, Denmark, Estonia, Finland, United Kingdom, Ghana, Japan, Cambodia, Republic of Korea, Lithuania, Mexico, New Zealand, Norway, Sultanate of Oman, Sweden, Syrian Arab Republic, Turkey, Austria, Benelux, China, Cyprus, Czech Republic, Germany, Egypt, Spain, France, Croatia, Hungary, Islamic Republic of Iran, Italy, Kenya, Kazakhstan, Liechtenstein, Monaco, Morocco, Poland, Portugal, Romania, Russian Federation, Slovakia, Ukraine to designate financial and monetary affairs in class 36;
- Swiss trademark PICTET COLLECTION No. 719993 registered on July 2, 2018, to designate notably promotional services in class 35, financial and monetary affairs in class 36 and artistic sponsorship services in class 41.
The Complainant is the owner of the domain name <pictet.com> registered on February 8, 1996, as well as many other domain names containing the name “Pictet”.
5. Parties’ Contentions
The disputed domain names are confusingly similar to the Complainant’s prior rights on PICTET as they are composed of this term.
The disputed domain names are identical to the Complainant’s prior trademark PICTET COLLECTION as they entirely reproduce it.
The Complainant previously obtained the revocation or transfer of various domain names in similar cases, in particular: <pictetbkandtrust.com> in Banque Pictet & Cie SA v. [Name Redacted], WIPO Case No. D2016-1255 and <pictetchina.com> in Banque Pictet & Cie SA v. tungchan, tung / Xiamen eNameNetwork Co., Ltd, WIPO Case No. D2015-2013.
The Respondent has no rights or legitimate interests in respect of the disputed domain names reproducing identically the Complainant’s trademark PICTET COLLECTION, creating the confusion with the Complainants trademarks and activities.
The fact that the Respondent registered domain names identical to trademark PICTET COLLECTION is evidence of bad faith while filing the registrations.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the 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 names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has 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.
On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, the Panel concludes as follows:
A. Identical or Confusingly Similar
The Panel holds that the disputed domain names are identical to the Complainant's trademark PICTET COLLECTION. The Respondent’s incorporation of the Complainant’s trademark in full in the disputed domain names is evidence that the disputed domain names are likely to cause confusion among consumers about the Complainant’s mark. It is also evident that both domain names are confusingly similar to the PICTET trademarks of the Complainant since they fully incorporate the expression “pictet”.
The confusion between the disputed domain names and the PICTET COLLECTION and PICTET trademarks is reinforced as a result of the widespread registration of the Complainant’s trademark and business throughout the world.
The Panel is satisfied that the disputed domain names are identical to the Complainant’s name and PICTET marks and confusingly similar to other trademarks also registered by the Complainant.
Therefore, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence by the Respondent will lead to this ground being set forth.
Refraining from submitting a Response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain names.
The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain names.
The Complainant has provided ample evidence of its established rights in the PICTET and PICTET COLLECTION trademarks including registrations issued by several trademark offices around the world.
The disputed domain names were registered anonymously. Such circumstance is regarded by this Panel as an indication that the Respondent is willing to hide his identity because it has no rights or legitimate interests in respect of the disputed domain names. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner.
The disputed domain names are being used to misdirect Internet traffic from the Complainant, preventing the Complainant from reflecting its mark in a corresponding domain name, such a use is contrary to a bona fide offering of goods or services or a legitimate interest.
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain names, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain names and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the 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 the respondent has engaged in a pattern of such conduct;
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent's web site or location or of a product or service on its website or location.
The Panel considers that the disputed domain names were registered with the knowledge of the Complainant’s rights in the PICTET and PICTET COLLECTION trademarks, as it seemed that the Respondent was aware of the Complainant’s rights in the PICTET and PICTET COLLECTION trademarks. Concerning the use of the disputed domain names, in this Panel’s view, the Respondent has done nothing to identify itself as being independent from the Complainant. On the contrary, the Respondent has incorporated the PICTET and PICTET COLLECTION trademarks in the disputed domain names, throughout the website connected to the disputed domain names and attempts to attract consumers for commercial gain by purporting to misdirect the users to a parking website.
It is also evidenced that the Complainant tried to contact the Respondent via the anonymous email address provided in the publicly available Internic WhoIs database. The Respondent asked for US D7,500 for both domain names. This act shows that there is no legitimate or fair use of the disputed domain names. The main intention of the Respondent was to obtain a significant profit without keeping a relation with the registration costs
In the Panels view a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the disputed domain names. In this case, the widespread commercial recognition of the trademarks PICTET and PICTET COLLECTION are such that the Respondent, must have had knowledge of the trademarks before registering the disputed domain names.
The Complainant has demonstrated that its trademarks are widely recognized and that the disputed domain names incorporates in full its trademarks.
Based on the evidence submitted by the Complainant and having regard to all the relevant circumstances, the Panel accepts the Complainant’s contentions that the disputed domain names were registered and are being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
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 <pictet-collection.com> and <pictetcollection.com> be transferred to the Complainant.
Date: December 28, 2018