Complainant is Banque Pictet & Cie SA of Geneva, Switzerland, represented by B.M.G. Avocats, Switzerland.
Respondent is Cameron Jackson of Norfolk Island, Australia.
The disputed domain name <banquepictet.nl> (the “Domain Name”) is registered with SIDN through Uniregistrar.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2017. On March 7, 2017, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On March 8, 2017, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on March 16, 2017. In accordance with the Regulations, article 7.1, the due date for Response was April 5, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 6, 2017.
The Center appointed Dinant T. L. Oosterbaan as the panelist in this matter on April 21, 2017. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
Complainant is one of the leading wealth and asset managers in Europe. It was established in Geneva in 1805 and has establishments in 26 of the most important financial centers around the world.
According to the evidence submitted by Complainant, Complainant owns a large number of trademark registrations for PICTET, including the International Trademark Registration PICTET with number 748934, registration date November 24, 2000, also applicable in the Benelux. In addition, Complainant operates the website “www.pictet.com” containing the PICTET mark.
The Domain Name, <banquepictet.com>, was registered by Respondent on November 28, 2016. The Domain Name resolves to a completely unrelated YouTube page.
Complainant submits that the Domain Name is confusingly similar to its PICTET trademark as it wholly incorporates the highly recognizable PICTET trademark in its entirety. The addition of the word “banque” is not sufficient to distinguish the Domain Name from the PICTET trademark. In addition “Banque Pictet” is Complainant’s company name.
According to Complainant, Respondent has no rights or legitimate interests in respect of the Domain Name. Respondent is not a licensee of Complainant nor has Complainant granted Respondent authorization to use Complainant’s trademark. According to Complainant, the Domain Name resolves to a YouTube page showing a video presenting a tennis player. According to Complainant, Respondent has failed to make a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the Domain Name.
Complainant submits that Respondent has registered and is using the Domain Name in bad faith. Given the well-known character of the PICTET trademark it is highly likely that Respondent had knowledge of the mark of Complainant. In addition, in an email communication of December 5, 2016 to Complainant, Respondent offered to sell the Domain Name to Complainant for an amount exceeding the registration costs. Finally, Complainant already obtained the transfer of 23 domain names containing the PICTET mark in an earlier proceeding against Respondent under the Uniform Domain Name Dispute Resolution Policy1 (“UDRP”) (see Banque Pictet & Cie SA v. Cameron Jackson, WIPO Case No. D2016-2638).
Respondent did not reply to Complainant’s contentions.
Based on article 2.1 of the Regulations, a claim to transfer a domain name must meet three cumulative conditions:
a. the domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the complainant has rights, or other name mentioned in article 2.1(a) under II of the Regulations; and
b. the respondent has no rights to or legitimate interests in the domain name; and
c. the domain name has been registered or is being used in bad faith.
As Respondent has not filed a Response, the Panel shall rule on the basis of the Complaint. In accordance with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or in fact.
Pursuant to article 2.1(a) of the Regulations, Complainant must establish that the Domain Name is identical or confusingly similar to a trademark or tradename protected under Dutch law in which Complainant has rights.
Complainant has established that it is the owner of an International Trademark Registration for PICTET, which registration is also applicable in the Benelux.
The Domain Name, <banquepictet.nl>, incorporates the entirety of the PICTET trademark as its distinctive element. Many decisions under the Regulations have found that a domain name is confusingly similar to a complainant’s trademark where the domain name incorporates the trademark in its entirety. The addition of the common, descriptive and non-distinctive element “banque” (“bank” in English) only confirms this finding of confusing similarity. The country code Top-Level Domain “.nl” may be disregarded for purposes of article 2.1(a) of the Regulations.
The Panel finds that the Domain Name is confusingly similar to Complainant’s PICTET trademark.
In the Panel’s opinion, Complainant has made out a prima facie case that Respondent lacks rights to or legitimate interests in the Domain Name. Based on the record, the Panel finds that Respondent is not commonly known by the Domain Name nor has Respondent acquired trademark or other rights corresponding to the Domain Name. It appears that by using the Domain Name, Respondent diverts Internet users to an unrelated YouTube website. Such use of the Domain Name corresponding to Complainant’s trademark rights cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name.
Under these circumstances the Panel finds that Respondent has no rights to or legitimate interests in the Domain Name.
The Panel finds that the Domain Name has been registered and is being used in bad faith. Considering the distinctiveness of Complainant’s trademark the Panel finds that Respondent knew or should have known of Complainant’s rights. The Panel furthermore notes that the Domain Name was effectively offered for sale in excess of the cost of registration. The Panel also notes Respondent’s record as reflected in the decision in Banque Pictet & Cie SA v. Cameron Jackson, supra.
More generally, the Panel notes that Respondent lost a very large number of cases under the UDRP, pursuant to which Respondent is considered to be a serial cybersquatter (see extensively BHP Billiton Innovation Pty Ltd. v. Cameron David Jackson / PrivacyDotLink Customer 2415391 / PrivacyDotLink Customer 2463008, WIPO Case No. D2016-2020).
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name, <banquepictet.nl>, be transferred to Complainant.
Dinant T. L. Oosterbaan
Panelist
Date: May 1, 2017
1 In view of the fact that that the Regulations are to an extent based on the UDRP, it is well established that cases decided under both the Regulations and the UDRP are relevant to this proceeding (see, e.g., Aktiebolaget Electrolux v. Beuk Horeca B.V., WIPO Case No. DNL2008-0050).