Westmore · UDRP DecisionBanquepictet.com
The Panel ordered transfer of <banquepictet.com>. It found the domain confusingly similar to the Complainant’s PICTET mark because it combined the mark with the descriptive French word “banque,” meaning bank, and corresponded closely to the Complainant’s corporate name and financial activities. The Respondent had no demonstrated rights or legitimate interests. Passive holding, the well-known character of the mark, and the domain’s reference to the Complainant’s banking business supported the finding of registration and use in bad faith.
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The decision illustrates how a domain combining a distinctive financial-services mark with a term describing the complainant’s exact industry can support both confusing similarity and an inference of targeted bad faith. It also shows that passive holding may satisfy the bad-faith element where the domain’s composition points directly to the complainant and the respondent offers no countervailing explanation.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Banque Pictet & Cie SA v. Laura Yun, Offshore Hosting Solutions Ltd. Case No. D2016-1988 1. The Parties The Complainant is Banque Pictet & Cie SA of Carouge, Switzerland, represented by B.M.G. Avocats, Switzerland. The Respondent is Laura Yun, Offshore Hosting Solutions Ltd. of Victoria, Seychelles. 2. The Domain Name and Registrar The disputed domain name <banquepictet.com> (“the Domain Name”) is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2016. On September 30, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 2, 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 October 6, 2016, the Center sent an email to the Registrar asking for confirmation of the expiry date. The Registrar responded to this email on October 8, 2016, confirming the expiry date and sent a second email on October 10, 2016, confirming the Lock of the disputed domain name. 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 of the Complaint, and the proceedings commenced on October 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 31, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 2, 2016. The Center appointed Dawn Osborne as the sole panelist in this matter on November 17, 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 owns, inter alia trade mark registrations consisting of or including the name PICTET for financial services, the earliest registration dating back to 1999. The Pictet Group has traded since 1805 in the financial sector. The Domain Name does not resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant’s contentions can be summarised as follows: The Complainant owns a large number of trade mark registrations consisting of or including the name PICTET for financial services. The Pictet Group has traded since 1805. It is established in 26 important financial centres across the world. The Domain Name wholly incorporates the Complainant’s PICTET mark. In the Domain Name this mark is highly recognizable leading the public to think that the Domain Name is connected to the owner of the registered trade mark. Indeed Banque Pictet is the corporate name of the trade mark owner and banking is the core business of the Complainant meaning that the addition of “banque” to “pictet” in the Domain Name creates further confusion especially since the Complainant is based in a French speaking part of Switzerland and “banque” means bank in French. The extension “.com” should be ignored for the purposes of comparing the Complainant’s PICTET mark with the Domain Name under the Policy. The Domain Name is confusingly similar to the Complainant’s PICTET mark. The Respondent is not licensed or authorised by the Complaint to use the Domain Name. There is no indication that the Domain Name corresponds to the Respondent’s name. The Domain Name does not resolve to any web site. As such the Respondent has no rights or legitimate interest in the Domain Name. The non-use of the Domain Name constitutes passive holding. “Pictet” is not a dictionary word and has no meaning. The Domain Name was registered in 2016 long after use and registration by the Complainant of the PICTET mark. The use of “banque” in the Domain Name shows that the Respondent is referring to the activity and business of the Complainant. The Domain Name has been registered and used in bad faith. The Complainant received no reply to a letter before action to the Respondent. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Domain Name consists of the Complainant’s PICTET mark (which is registered, inter alia , in Switzerland for financial services with use in commerce going back to 1805), the generic word “banque” meaning bank in French and the generic Top-Level Domain (“gTLD”) “.com”. The corporate name of the Complainant also starts with “Banque Pictet”. Previous UDRP panels have found confusing similarity when a respondent merely adds a generic term to a complainant’s mark. See paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) (finding the addition of common, dictionary or descriptive, terms typically being regarded as insufficient to prevent threshold Internet user confusion). The Panel agrees that the addition of the generic term “banque” to the Complainant’s PICTET mark does not distinguish the Domain Name from the Complainant’s trade mark pursuant to the Policy especially as the Complainant offers financial services and “banque” means bank in French. The gTLD “.com” does not serve to distinguish the Domain Name from the PICTET mark, which is the distinctive component of the Domain Name. See paragraph 1.2 of the WIPO Overview 2.0 (concluding that the applicable top-level suffix in the domain name ( e.g., “.com”) would usually be disregarded under the confusing similarity test as it is a technical requirement of registration). Accordingly, the Panel holds that the Domain Name is confusingly similar to a mark in which the Complainant has rights. B. Rights or Legitimate Interests The Respondent has not answered this Complaint and has not provided any legitimate reason why it should be able to use the Complainant’s mark in the Domain Name. It does not appear to be commonly known by the Domain Name or authorised by the Complainant. There is no evidence of any bona fide use by the Respondent of the Domain Name. As such the Panel finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy. C. Registration and Use in Bad Faith The Respondent has not made any active use of the Domain Name. Previous UDRP Panels have found evidence of bad faith registration and use pursuant to Policy 4 (c) (iii) where a respondent fails to make any active use of a domain name. See DCI S.A. v. Link Commercial Corporation , WIPO Case No. D2000-1232 (concluding that the respondent’s [failure to make active use of the] domain name satisfies the requirement of 4 (a)(iii) of the Policy). The Complainant asserts that the Respondent must have known of its name due to the fame of its mark and the use of “banque” in the Domain Name which directly refers to the Complainant’s activity and business especially as the Complainnat’s name begins with “Banque Pictet”. The Respondent has not responded and, therefore, has not denied that this is the case. The Panel is of the opinion that the use of the French word for bank in the Domain Name does indeed indicate that the Respondent had knowledge of the Complainant’s business at the time of registration and is passively holding a Domain Name containing the Complainant’s well-known PICTET mark, as does the correlation with the Complainant’s corporate name which begins with “Banque Pictet”. As such, the Panel finds that that the Respondent has engaged in bad faith registration and use under Policy 4 (a)(iii). 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 <banquepictet.com> be transferred to the Complainant. Dawn Osborne Sole Panelist Date: November 29, 2016
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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