ADR Center for .eu attached to the Arbitration Court attached to the Czech Chamber of Commerce and the Agricultural Chamber of the Czech Republic (Czech Arbitration Court)

Panel Decision

§ B12 of the .eu Dispute Resolution Rules (ADR Rules)

Case No.: 07628
Time of Filing: 2018-04-03 09:44:19
Administrative Contact: Iveta Špiclová
 
Complainant
Name: Banque Pictet & Cie SA, Maria Buencamino
 
Complainant's Authorized Representative
Name: BMG-Avocats, Marie Pfammatter
 
Respondent
Name: Dariane Pictet
 
Respondent's Authorized Representative
Name:
 
Domain Name(s): PICTETGROUP.EU
 
Other Legal Proceedings
The Panel is not aware of other proceedings.
 
English summary of the decision: English summary of this Decision is hereby attached as Annex 1
 
Factual Background
The Complainant is a wealth and asset manager based in Switzerland known as the Pictet Group. It was founded in Geneva in 1805 and is now established in 26 of the most important financial centres internationally and employs more than 3,700 people. It manages around CHF 390 billion. 


The Complainant owns a large number of registered trade marks including its primary mark, the trade name and word mark, PICTET, in class 36, registered in many jurisdictions. It has registered marks in over 29 nations.  

In particular, the Complainant is the registered proprietor of the Swiss national mark, no. P-478932, for the word mark, filed in August 17, 2000, in Class 36. The Complainant has also registered an International trade mark, consisting of the word mark, in Class 36, No. IR 748934 which designates several European countries.  

The Complainant owns the domain name <pictet.com> and  <pictetgroup.com> and <grouppictet.com>, among others.  

Because of the Complainant’s extensive use in trade and its reputation in the financial world internationally, the PICTET name and mark is a well-known mark and enjoys extensive goodwill. When used in a finance-related context, the PICTET mark references and identifies the Complainant and its financial services.

The Respondent presents him/herself as an individual with the surname name, Picet, based in London. The disputed domain name was registered by the Respondent on January 22, 2018. The disputed domain name does not resolve to any website.
 
Parties’ Contentions
  1. Complainant
    Factual and Legal Grounds
    

    I. Factual Background:
    The Pictet Group is one of the leading wealth and asset managers in
    Europe. It was created in Geneva in 1805.

    The Pictet Group is now established in 26 of the most important
    financial centers across the world, and employs more than 3700 people.
    It manages around CHF 390 billion.

    The Complainant is notably the owner of the domain name
    <pictet.com>, as well as many others domain names containing the
    element "pictet", such as <pictetgroup.com> and
    <grouppictet.com>.

    Because of the Complainant’s extensive reputation in the financial
    world and of its international presence, the PICTET brand has become
    well-known and enjoys an important goodwill. When used in a
    finance-related context, the PICTET trademark is therefore immediately
    associated with the Complainant and its financial and monetary services.

    The Complainant owns a large number of trademark registrations
    consisting of or including the name PICTET in class 36 in numerous
    jurisdictions.

    In particular, the Complainant owns the Swiss trademark no. P-478932
    PICTET filed in August 17, 2000 in Class 36 for "Financial and monetary
    affairs".

    The Complainant also owns an International trademark PICTET in Class
    36 for “Financial and monetary affairs” (IR 748934) with designation of
    several European countries.

    According to the <whois.eurid.eu> database
    [www.whois.eurid.eu], the domain name <pictetgroup.eu > was
    registered on January 22, 2018, i.e. well after the Complainant secured
    registrations for its PICTET trademark around the world.

    As the <whois.eurid.eu> database only provides the e-mail
    address of the Respondent "dariane.pictet@yandex.com" as contact
    information, the Complainant requested a personal data
    disclosure and obtained the required information from the EURid whois
    database, such as the name, address and telephone number of the
    registered owner of the domain name  <pictetgroup.eu>.

    After having been informed of these elements, the Complainant
    contacted Ms. Dariane Pictet, who happens to be the daughter of a former
    partner of the Banque PICTET. She confirmed to the Complainant that she
    did not reserve the domain name <pictetgroup.eu> nor did she
    create the e-mail address "dariane.pictet@yandex.com".

    It has to be noted that the Complainant obtained the revocation of
    the domain name <pictetwealth.eu> in a precedent proceeding
    against the same registered Respondent (see panel decision No.
    07418). The former Panel decision ruled in favor of the Complainant on
    the grounds that the Respondent had no rights or legitimate interests in
    the disputed domain name, and that a likely risk of confusion subsided
    in linking the Complainant’s trademark PICTET to the word “wealth”.
    Furthermore, – and since Mrs. Dariane Pictet rebuted having registered
    the domain name herself – the Panel found the Respondent to have
    registered the domain name in bad faith.

    Finally, the disputed domain name does not resolve to any website.

    There has been no contact between the Complainant and the Respondent before the submission of the present Complaint.


    II. Legal Background

    Under Article 21(1) of Regulation (EC) 874/2004  (“the Regulation”)
    and Paragraph B1(b) (10) of the ADR Rules, the disputed domain name is
    subject to revocation if it is identical or confusingly similar to a
    name in respect of which a right is recognized or established by
    national and/or Community law, such as the rights mentioned in Article
    10(1), and where it (a) has been registered by its holder without rights
    or legitimate interests in the name or (b) has been registered or is
    being used in bad faith.

    a) The disputed domain name is identical or confusingly similar to a name in
    respect of which a right or rights are recognized or established by
    national and/or Community law

    The rights mentioned in Article 10 (1) of the Regulation shall be
    understood to include: registered national and community trademarks,
    geographical indications or designations of origin, and, in as far as
    they are protected under national law in the Member-State where they are
    held: unregistered trademarks, trade names, business identifiers,
    company names, family names, and distinctive titles of protected
    literary and artistic works.

    As mentioned above, the Complainant has established rights regarding
    its trademark "Pictet" in several European countries and under national
    law in Switzerland.

    A comparison between the trademark and the disputed domain name itself must
    be made to determine whether there is a confusing similarity. According
    to the jurisprudence, "In order to satisfy this test, the relevant
    trademark would generally need to be recognizable as such within the
    domain name. An addition of common, dictionary, descriptive, or other
    descriptive terms is typically insufficient to prevent threshold
    Internet user confusion. Confusing similarity test typically involves a
    straightforward visual and aural comparison of the trademark with the
    domain name" (See ADR Case No. 07151 "Bayerische Motoren Werke AG (BMW
    AG)".

    The disputed domain name wholly
    incorporates the Complainant’s registered PICTET trademark, which may be
    sufficient to establish confusing similarity (See WIPO Cases, Playboy
    Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No.
    D2007-0768, Hitachi, Ltd. v. Arthur Wrangle, supra. Oki Data Americas,
    Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The
    Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Eauto,
    L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,
    WIPO Case No. D2000-0047; Bayerische Motoren Werke AG v. bmwcar.com,
    WIPO Case No. D2002-0615.


    This is all the more true since the trademark is highly
    recognizable. In the disputed domain name, the PICTET trademark stands
    out and leads the public to think that the Infringing domain name is
    somehow connected to the owner of the registered trademark.

    The adjunction of "group" further creates confusion with the prior
    PICTET trademark. In fact, the PICTET trademark associated with the
    mention “group” leads the public to think that the Infringing domain
    name is connected to the owner of the registered trademark. Indeed, the
    word "group" is very often associated with banks in the banking world
    and the Complainant refers to itself as the "Group Pictet". Even the domain name for the main webpage of the Complainant is
    [https://www.group.pictet/fr].  

    The extension ".eu" should be disregarded as irrelevant for the
    purpose of the comparison as it is a required extension for the
    registration of a domain name (See ADR cases No. 07280 "CONFÉDÉRATION
    NATIONALE DU CRÉDIT MUTUEL", No. 6442 "SWAROVSKI", No. 4477
    "WALTHER-PRAEZISION", No. 475 "HELSINKI", No. 387 "GNC", No. 596
    "RESTAURANT".

    Therefore, under Article 21 (1) of the Regulation the Infringing
    domain name is confusingly similar to a trademark owned by the
    Complainant.


    b) The Respondent has no rights or legitimate interests in respect of the disputed domain name

    The Respondent is not licensee of the Complainant, nor has the
    Complainant granted to the Respondent an authorization to use the
    disputed domain name. Moreover, there is no indication that the
    disputed domain name corresponds to the Respondents’ name. In fact,
    Ms. Dariane Pictet, who happens to be the daughter of a former Partner
    of the Banque Pictet, confirmed that she did not reserve the Infringing
    domain name and that she has nothing to do with it.
    Hence, Ms. Dariane Pictet did not create the e-mail address
    "dariane.pictet@yandex.com", which is the Respondent's e-mail address on
    the <whois.eurid.eu> database.

    In addition, the Respondent does not use the Infringing domain name
    in connection with a website. Indeed, there is no website available at
    the disputed domain name. The fact that there is no
    website available shows that the Respondent is not making a legitimate
    noncommercial or fair use of the disputed domain name. The Respondent has not
    made any demonstrable preparations to use the disputed domain name in connection
    with a bona fide offering of goods or services, since there is no
    website at the domain name providing contrary evidence.

    Therefore, under Article 21 (1) (a), (2) of the Regulation the
    Respondent has no rights or legitimate interests in the disputed
    domain name.

    c) The disputed domain name was registered and is being used in bad faith

    As mentioned above, there is no website related to the disputed
    domain name. According to constant jurisprudence, passive holding of a
    domain name can result as a use in bad faith of the domain name (See ADR
    case no.07211 "CONFÉDÉRATION NATIONALE DU CRÉDIT MUTUEL").

    In the present case, the Respondent has registered the disputed
    domain name long after the Complainant’s use and registration of its
    trademark PICTET in various regions of the world. The mark PICTET is not
    a dictionary word and has no particular meaning.

    Furthermore, as demonstrated above, the Complainant is one of the
    most important European asset management groups (see Annexes 2 and 4).
    The Complainant is established in 26 important financial centers across
    the world.

    In addition, the fact that the Respondent used the name of the
    daughter of a former Partner of the Banque Pictet to register the
    disputed domain name and to create the related contact email address
    on the EURid database shows that the Respondent reserved the disputed
    domain name in bad faith. The Complainant cannot think of another reason
    that would lead the Respondent to choose the first name "Dariane" and
    the second name "Pictet" to register the disputed domain name and to
    create the contact email address.

    Therefore, given the well-known character of the trademark PICTET
    and its distinctive character, it is highly likely that Respondent had
    knowledge of the Complainant’s mark when he registered the disputed
    domain name.

    The fact that the disputed domain name is not being used shows that
    it was registered for the purpose of selling or otherwise transferring
    the disputed domain name.  It contends that Respondent, by his inaction, is
    attempting to disrupt Complainant’s business by misleading potential
    customers and giving them the impression that the Complainant is not
    operating.  It thus is creating confusion with the Complainant’s
    trademark as to source, sponsorship, affiliation or endorsement of the
    Respondent’s website.

    There is no plausible reason for the Respondent's choice of the
    disputed domain name other than the will to profit unfairly from the
    confusion with the Complainant’s trademark PICTET.

    In fact, any future use of the disputed domain name would mainly cause
    confusion with the Complainant and its trademark, especially regarding
    the fact that the Complainant’s trademark is famous and has been used
    for a very long time in the banking and wealth management business (See
    WIPO Cases, CBS Broadcasting, Inc. v. LA-Twilight-Zone, WIPO Case No.
    D2000-0397).

    The lack of website related to the disputed domain name, coupled
    with the choice to use the element “Pictet” with connection to the
    descriptive term "group" should be considered as elements proving its
    bad faith. The identity of Ms. Dariane Pictet was indeed misused by the
    Respondent.

    In addition and as mentioned above, the Complainant has obtained the
    revocation of the disputed domain name against the same
    Respondent in a previous procedure.

    Respondent's behavior therefore demonstrated bad faith as required under to Article 21 (1) (b), (3) of the Regulation.
  2. Respondent
    The Respondent says the Complainant does not have any exclusive legal right to the name PICTET. The name PICTET is associated with a family and anyone with the surname PICTET is entitled to use the name PICTET.
 
Discussion and Findings
Article 22(1)(a) of Commission Regulation (EC) No 874/2004 of 28  April 2004 ("the Policy Regulation") allows a party to initiate an ADR procedure where a registration is speculative or abusive, as defined in Art. 21. This provides for revocation where a domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by national or Community law and where registered without rights or legitimate interest and registered or used in bad faith. This is reflected in §11 of the ADR Rules.  The Policy Regulation Art. 21(2) provides examples of how legitimate interest may be demonstrated, and Art. 21(3) provides examples of bad faith. 



Rights

The Complainant clearly has Rights in its international and national marks and unregistered rights arising from its worldwide use of the name and marks in trade.  The Panel finds the Complainant has the requisite rights and that the word mark is a famous or well-known mark.  In common law countries, these rights will also be protected by the law of passing-off.  

The word mark is highly distinctive yet used in its entirety in the disputed domain name.  See Playboy Enterprises International, Inc. v. Zeynel Demirtas , WIPO Case No. D2007-0768, and Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615. The word group is generic and would not usually add anything to the similarity analysis, but here it is relevant as discussed below in relation to the second factor.  The suffix is irrelevant for the analysis, see Case No. 6442, Swarovski. The Complainant's submissions are accepted on this issue. The Panel finds the disputed domain name is confusingly similar to the name and mark in which the Complainant has rights.


Legitimate Interests
Turning now to legitimate interests, we must determine if any of the factors in §B11(e) of the ADR Rules apply:

“Any of the following.. shall demonstrate the Respondent’s rights or
legitimate interests to the domain name for purposes of Paragraph
B11(d)(1)(ii):

(1) prior to any notice of the dispute, the Respondent has used the
domain name or a name corresponding to the domain name in connection
with the offering of goods or services or has made demonstrable
preparation to do so;

(2) the Respondent, being an undertaking, organization or natural
person, has been commonly known by the domain name, even in the absence
of a right recognized or established by national and/or Community law;

(3) the Respondent is making a legitimate and non-commercial or fair
use of the domain name, without intent to mislead consumers or harm the
reputation of a name in which a right is recognized or established by
national law and/or Community law. ”

Here both (2) and (3) are in issue. The Policy Regulation, like the UDRP, reflects harmonised norms from international trade mark laws and (2) above reflects the "own name defence."  This is common to most trade mark law regimes and permits individuals to use their own names in trade even where there is an established mark or brand, with the important proviso that they must do so honestly and without attempting to leverage the earlier mark.  The key issue in this case therefore, is whether, (assuming for now that the Respondent’s legal surname is Picet), the Respondent would be entitled to this "own name defence." It is now clear in EU law (following Article 1(13) of Regulation 2015/2424), that this is a defence that is only applicable to individuals and not to companies.  The Respondent is not a company. However, the disputed domain name references a corporate name by the inclusion of the work group.

Further, certainly in common law jurisdictions, the requirement of honesty requires that any use be fair in relation to the rights of others. This overlaps with factor (3) as to whether the use is fair and legitimate.  Here we find the simple answer is clearly, no.  Even if all other matters were equal, the fair and legitimate use of the own name of an individual, would not require the selection of the same formulation of a corporate name used by the well-known earlier mark, nor would the selection of the word group be natural for an individual. Many other formulations could have been selected. The choice here demonstrates a desire to free-ride on, and leverage, the reputation of the Complainant.

We also note for completeness, that the Respondent does not use the disputed domain name in connection with a website and the fact that there is no website available also suggests the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name. The Respondent has not provided any evidence of demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant has made a compelling prima facie case on this limb and the Respondent has failed to rebut it.

Bad Faith
This also leads us to the final issue of bad faith.  The same reasoning that was relevant to legitimate and fair use, is again relevant here.  The Panel notes that the evidence shows that Ms. Dariane Pictet, the daughter of a former partner of the Complainant, has confirmed to the Complainant in writing that she did not register the disputed domain name or create the email address used by the Respondent and therefore she is not the Respondent. Who then is the Respondent? We have no proof that they bear the surname. We also note that the Complainant submits that it obtained revocation of the domain name <pictetwealth.eu> in an earlier proceeding against the same Respondent by panel decision No. 07418 (the Panel found the Respondent registered the domain name in bad faith due to lack of proof of the legal surname).  The fact that no proof of identity has been provided, plus the denial of the family member bearing the name, suggests that whoever the Respondent is, they are not a family member and are not acting in good faith and are not entitled to the own name defence. Indeed, this and the fact of the previous proceeding, mean actual and express knowledge and a clear intention to profit. This is paradigm bad faith. See CBS Broadcasting, Inc. v. LA-Twilight-Zone, WIPO Case No. D2000-0397.

The Complainant has discharged its burden of proof.
 
Decision
For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that


the Complaint is allowed.

the domain name PICTETGROUP.EU be revoked
 
Panelists
  • Ms. Victoria McEvedy
Date: 2018-07-13
Annex 1
Summary 


I.      Disputed domain name: Pictetgroup.eu

II.     Country of the Complainant: Switzerland, country of the Respondent: Unknown

III.    Date of registration of the domain name: 22 January 2018

IV.    Rights relied on by the Complainant (Art. 21 (1) Regulation (EC) No 874/2004) on which the Panel based its decision:

1. Word mark registered in Switzerland as a national mark;
2. National marks in 29 countries under international registration in class 36.
3. Common law mark in common law jurisdictions.
4. Portfolio or family of marks with variations.
5.   geographical indication: No
6.   designation of origin: Yes
7.   unregistered trademark: Yes
8.   business identifier: Yes
9.   company name: Yes
10.  family name: Yes
11.  title of protected literary or artistic work: No
12.  other: No

V.    Response submitted: Yes

VI.   Domain name is confusingly similar/neither identical nor confusingly similar to the protected rights of the Complainant

VII.  Rights or legitimate interests of the Respondent (Art. 21 (2) Regulation (EC) No 874/2004):
        1. No
        2. Why: Failure to prove legal surname and that was ground relied on in Response. Formulation not consistent with own name fair usage. No use and no fair or legitimate use.

VIII. Bad faith of the Respondent (Art. 21 (3) Regulation (EC) No 874/2004):
        1. Yes.
        2. Why: Suspected impersonation. Lack of proof of identity. Prior proceedings and knowledge and intent.  

IX.   Other substantial facts the Panel considers relevant: As above.

X.    Dispute Result: Revocation of the disputed domain name.

XI.   Procedural factors the Panel considers relevant: -

XII.  [If transfer to Complainant] Is Complainant eligible? -