The Complainant is Banque Pictet & Cie SA of Carouge, Switzerland, represented by B.M.G. Avocats, Switzerland.
The Respondent is bamboo of Hangzhou, Zhejiang, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2016. On November 18, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 21, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On November 22, 2016, the Center sent an email communication to the Parties in Chinese and English regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 the Respondent in Chinese and English of the Complaint, and the proceedings commenced on November 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 18, 2016.
On December 19, 2016, an email communication in Chinese from the Respondent was received by the Center. On the same day, the Center acknowledged receipt of this email communication, and informed the Parties that it would proceed with panel appointment.
The Center appointed Jonathan Agmon as the sole panelist in this matter on December 23, 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
The Complainant, Banque Pictet & Cie SA of Carouge, from Switzerland, is one of the leading wealth and asset managers in Europe, created in Geneva in 1805.
The Complainant is established in 26 of the most important financial centers in the world, and employs more than 3,700 employees, and manages around CHF 390 billion.
The Complainant is the owner of several registered trademarks for PICTET. For example: Swiss trademark registration no. P-478932, with the registration date of November 24, 2000; International trademark registration no. 748934, with the registration date of November 24, 2000, and more.
The Complainant also owns and communicates on the Internet through and several other domain names containing the PICTET trademark.
The disputed domain name was registered on May 19, 2016.
Currently, the disputed domain name is inactive. 5. Parties’ Contentions A. Complainant
The Complainant argues that the disputed domain name wholly incorporates the Complainant’s registered PICTET trademark, and this may be sufficient to establish confusing similarity for purposes of the Policy.
The Complainant further argues that the extension “.vip” should be disregarded as irrelevant for the purpose of the comparison as it is a required extension for the registration of a domain name.
The Complainant further argues that the Respondent has no rights or legitimate interest in respect of the disputed domain name. The Complainant further argues that it did not license, nor granted the Respondent an authorization to use the disputed domain name.
The Complainant further argues that the Respondent is not making a legitimate noncommercial of fair use of the disputed domain name.
The Complainant further argues that the disputed domain name was registered and is being used in bad faith.
The Complainant argues that the Respondent has registered the disputed domain name long after the Complainant used its trademark PICTET, thereof it is highly likely that the Respondent had knowledge of the Complainant’s mark when he registered the disputed domain name.
The Complainant further argues that the Respondent has failed to make any use of the disputed domain name, and he has failed to reply to the cease-and-desist letter sent to him, and therefore this should be considered as elements proving the Respondent’s bad faith.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
In his email in response to the Center’s Notification of Respondent Default, the Respondent argues that he does not understand English, and that he only knows how to spell a few simple English words.
The Respondent argues that the meaning of the disputed domain name is related to the famous alien movie character “ET”.
The Respondent further argues that he intends to make a website to collect and publish pictures of ET.
The Respondent provided a breakdown of the disputed domain name meaning as such Pic (photo) T (small Ted) ET (race).
The Respondent also provided that he intends to use the disputed domain name to allow people to share and exchange issues regarding aliens.
The Respondent did not answer to any of the arguments made in the Complaint. 6. Discussion and Findings 6.1 Language of the Proceeding
Paragraph 11 of the Rules provides that:
“(a) Unless otherwise agreed by 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, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of the proceeding be English.
The Complainant, located in Switzerland, claims that it does not communicate in Chinese and submitting all documents in Chinese would entail substantial translation expenses on it.
The Respondent did not respond to the Center’s email of November 22, 2016 regarding the language of the proceeding. However, the Respondent indicated in his email of December 19, 2016 that he did not understand English and he knew how to spell a few simple English words.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not 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).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
(i) The disputed domain name consists of Latin letters, rather than Chinese letters;
(ii) The Respondent claimed his understanding of English was very basic but was able to respond to the Complaint and provided a breakdown of the disputed domain name to English components he devised; and
(iii) The Complainant has no knowledge of Chinese, and in the present case, the use of a language other than English would impose a significant burden on the Complainant in view of the facts in question.
Upon considering the above, the Panel determines that English be the language of the proceeding. 6.2 Substantive Matters A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous PICTET trademark registrations.
The disputed domain name reproduces entirely the Complainant’s PICTET trademark with the addition of the generic Top-Level Domain (gTLD) “.vip”.
The addition of the gTLD suffix “.vip” does not have the capacity to distinguish the disputed domain name from the Complainant’s registered trademark and is disregarded when comparing the disputed domain name with the Complainant’s trademark. See Volkswagen AG v. Todd Garber,WIPO Case No. D2015-2175; see also Dassault (Groupe Industriel Marcel Dassault) v. Ma Xiaojuan,WIPO Case No. D2015-1733; Lego Juris A/S v. Chen Yong,WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei,WIPO Case No. D2014-0080.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical to the PICTET trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the disputed domain name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to submit any evidence asserting such rights or legitimate interests.
The Respondent has belatedly submitted a short response to the Complaint in which he argued that the disputed domain name was registered to operate a website concerning the famous alien movie character named “ET” and other aliens, however the Respondent did not allege nor provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.
The Panel finds that the Respondent did not sufficiently demonstrate that he has rights or legitimate interests in respect to the disputed domain name, and therefore the Panel finds that the Complainant has managed to establish a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Complainant’s trademarks or a variation thereof and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned a registration for the PICTET trademark since at least the year 2000. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
As mentioned in his response, the Respondent stated that he is intending to use the disputed domain name in connection with the uploading of pictures of the famous alien movie character named “ET” and other extraterrestrials in general, and that it is why he registered the disputed domain name. The Respondent failed to present evidence in support of his contentions or plans for a website under the disputed domain name, apart from a picture of a green alien holding a camera said to be the intended logo of the new website. Moreover, the Respondent’s attempt to break apart the disputed domain name into three elements in the English language – “PIC”, “T” and “ET” fails logic or reason. The use is the letter “T” between the letters “PIC” and “ET” does not make any sense for a website to provide pictures of “ET”. The Respondent’s contentions in this matter are strenuous at best. No other evidence was provided to show the Respondent’s intent has any substance or that any real actions were taken by the Respondent to fulfil his said intent. Having reviewed the evidence, the Panel rejects the Respondent’s arguments in this matter and finds that the disputed domain name is identical to the Complainant’s trademark and could not be broken into various components in the English language in order to attempt to give them some meaning to support an unsupported and realized future intent by the Respondent. In fact, in this case, since the PICTET trademark is so connected with the Complainant, any use of the disputed domain name would likely cause confusion with the Complainant and its trademark, especially regarding the fact that the Complainant’s trademark has been used for a very long time (See CBS Broadcasting, Inc. v. LA-Twilight-Zone,WIPO Case No. D2000-0397).
Also, the disputed domain name is currently inactive which can, in appropriate circumstances, indicate the Respondent’s bad faith. (See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.) Such appropriate circumstances can include for example, the fact that a respondent provides false information during the registration process. (See CACEIS (Societe Anonyme) v. Wilson Ronald Douglas,WIPO Case No. DCO2016-0001; Dreamhack AB v. Eighty Business Names,WIPO Case No. D2015-1288). In the present case, the Complainant sent a cease and desist letter to the Respondent and the letter was returned by the post office with the indication that the address was insufficient. As such, the Respondent acted to prevent the Complainant from contacting him. Such behavior is an indication of the Respondent’s bad faith for failure to provide sufficient and accurate information at the time the disputed domain name was registered.
Having regard to the evidence submitted by the Complainant and the Respondent’s informal response, the Panel finds that the disputed domain name was registered and is being used by the Respondent with knowledge of the Complainant and in bad faith with the intent to create an impression of an association with the Complainant. (See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”.)
Based on the evidence that was presented to the Panel, including the Complainant’s registered trademark, the use of the Complainant’s trademark in the disputed domain name, the Respondent’s failure to provide accurate and real contact information, the Respondent’s unfounded answer to the Complaint and the passive use of the disputed domain name, the Panel finds that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 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 the Complainant.
Jonathan Agmon
Sole Panelist
Date: January 6, 2017
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