Complainant is Banque Pictet & Cie SA of Carouge, Switzerland, represented by B.M.G. Avocats, Switzerland.
Respondent is Claus Linder of Fichtenau, Germany. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with NameCheap, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2016. On June 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 2, 2016, 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 June 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 28, 2016. Several communications were received from Respondent. Informal Responses were filed with the Center in German on June 22, 2016 and July 7, 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 Germany.
Complainant uses its PICTET trademarks in connection with financial and monetary affairs.
Respondent registered the Disputed Domain Name on April 5, 2016. The Disputed Domain Name does not resolve to an active webpage.
On April 19, 2016, Complainant’s authorized representative sent a cease and desist letter to Respondent. In response, Respondent asked for a reasonable offer to acquire the Disputed Domain Name. When Complainant proposed to reimburse the direct out-of-pocket costs, Respondent asked for an offer in excess of CHF 4,000,000. 5. Parties’ Contentions A. Complainant
Complainant considers the Disputed Domain Name to be confusingly similar to trademarks and service marks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to Complainant, Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to Complainant, Respondent has not been commonly known by the Disputed Domain Name. Finally, Complainant claims that the Disputed Domain Name was registered and is used in bad faith. B. Respondent
The Respondent did not submit a formal response. However, in an informal submission he states that he does not consider his conduct as violating the Complainant’s trademark rights as he has solely offered the disputed domain name for sale. The Respondent also states that he will transfer the disputed domain name in exchange of EUR 100,000, excluding legal expenses. 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 Name is 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 Disputed Domain Name; and
iii. the Disputed Domain Name has been registered and is being used in bad faith.
The Panel will deal with each of these requirements in turn. A. 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 are registered PICTET trademarks in which Complainant has rights.
The Panel notes that the Disputed Domain Name incorporates Complainant’s PICTET trademark in its entirety. The Panel is of the opinion that the addition of generic Top Level Domains can be disregarded when comparing the similarities between a domain name and a trade mark (see Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck,WIPO Case No. D2014-0206; Zions Bancorporation v. Mohammed Akik Miah,WIPO Case No. D2014-0269). Therefore, the Panel considers the Disputed Domain Name to be identical to Complainant’s PICTET trademark.
Accordingly, Complainant has made out the first of the three elements that it must establish. B. 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 Respondent has not apparently been commonly known by the Disputed Domain Name and that Respondent does not seem to have acquired trademark or service mark rights. Respondent’s use and registration of the Disputed Domain Name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed.
In fact, Respondent is not making any use of the Disputed Domain Name. Therefore, the Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered and is 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).
Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith are the registration or acquisition of the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain names to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain names, and the registration of the domain names in order to prevent the holder 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.
In the instant case, the Panel finds that Respondent must have had knowledge of Complainant’s rights in the PICTET trademark at the moment it registered the Disputed Domain Name, since Complainant’s trademark is a widely known trademark. The Panel therefore finds that Respondent’s 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).
Respondent is not using the Disputed Domain Name. The passive holding of a disputed domain name may amount to bad faith when it is difficult to imagine any plausible future active use of the disputed domain name by the respondent that would be legitimate and not infringing the complainant’s well-known mark (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,WIPO Case No. D2000-0003). 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 use of domain names (Telstra Corporation Limited v. Nuclear Marshmallows, supra).
In the present case, the Panel is of the opinion that Complainant’s trademark has a strong reputation and is widely known, which makes it difficult to conceive any plausible legitimate future use of the Disputed Domain Name by Respondent. In response to Complainant’s cease and desist letter and the Complaint, Respondent offered the Disputed Domain Name for an amount in excess of EUR 100,000. This serves as an indication that Respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name to Complainant who is the owner of the trademark or service mark for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Disputed Domain Name.
Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. 7. Decision
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 Name, be transferred to Complainant.
Flip Jan Claude Petillion
Sole Panelist
Date: July 25, 2016
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