{
    "case_number": "CAC-ADREU-007628",
    "time_of_filling": null,
    "domain_names": [
        "pictetgroup.eu"
    ],
    "case_administrator": "  Iveta Špiclová   (Czech Arbitration Court) (Case admin)",
    "complainant": [
        "Maria Buencamino (Banque Pictet & Cie SA)"
    ],
    "complainant_representative": null,
    "respondent": [
        "Dariane Pictet"
    ],
    "respondent_representative": null,
    "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. \r\n\r\nThe 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.  \r\n\r\nIn 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.  \r\n\r\nThe Complainant owns the domain name <pictet.com> and  <pictetgroup.com> and <grouppictet.com>, among others.  \r\n\r\nBecause 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.\r\n\r\nThe 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.",
    "other_legal_proceedings": "The Panel is not aware of other proceedings.",
    "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. \r\n\r\n\r\nRights \r\n\r\nThe 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.  \r\n\r\nThe 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.\r\n\r\n\r\nLegitimate Interests\r\nTurning now to legitimate interests, we must determine if any of the factors in §B11(e) of the ADR Rules apply: \r\n\r\n“Any of the following.. shall demonstrate the Respondent’s rights or\r\n legitimate interests to the domain name for purposes of Paragraph \r\nB11(d)(1)(ii): \r\n\r\n(1) prior to any notice of the dispute, the Respondent has used the \r\ndomain name or a name corresponding to the domain name in connection \r\nwith the offering of goods or services or has made demonstrable \r\npreparation to do so; \r\n\r\n(2) the Respondent, being an undertaking, organization or natural \r\nperson, has been commonly known by the domain name, even in the absence \r\nof a right recognized or established by national and\/or Community law; \r\n\r\n(3) the Respondent is making a legitimate and non-commercial or fair\r\n use of the domain name, without intent to mislead consumers or harm the\r\n reputation of a name in which a right is recognized or established by \r\nnational law and\/or Community law. ”\r\n\r\nHere 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. \r\n\r\nFurther, 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. \r\n\r\nWe 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.\r\n\r\nBad Faith\r\nThis 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.\r\n\r\nThe 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\r\n\r\nthe Complaint is allowed.\r\n\r\nthe domain name PICTETGROUP.EU be revoked",
    "panelists": [
        null
    ],
    "date_of_panel_decision": "2018-07-12 00:00:00",
    "informal_english_translation": "Summary \r\n\r\nI.      Disputed domain name: Pictetgroup.eu\r\n\r\nII.     Country of the Complainant: Switzerland, country of the Respondent: Unknown\r\n\r\nIII.    Date of registration of the domain name: 22 January 2018\r\n\r\nIV.    Rights relied on by the Complainant (Art. 21 (1) Regulation (EC) No 874\/2004) on which the Panel based its decision:\r\n\r\n1. Word mark registered in Switzerland as a national mark; \r\n2. National marks in 29 countries under international registration in class 36. \r\n3. Common law mark in common law jurisdictions. \r\n4. Portfolio or family of marks with variations. \r\n5.   geographical indication: No\r\n6.   designation of origin: Yes\r\n7.   unregistered trademark: Yes\r\n8.   business identifier: Yes\r\n9.   company name: Yes\r\n10.  family name: Yes\r\n11.  title of protected literary or artistic work: No\r\n12.  other: No\r\n\r\nV.    Response submitted: Yes\r\n\r\nVI.   Domain name is confusingly similar\/neither identical nor confusingly similar to the protected rights of the Complainant\r\n\r\nVII.  Rights or legitimate interests of the Respondent (Art. 21 (2) Regulation (EC) No 874\/2004):\r\n        1. No\r\n        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. \r\n\r\nVIII. Bad faith of the Respondent (Art. 21 (3) Regulation (EC) No 874\/2004):\r\n        1. Yes.\r\n        2. Why: Suspected impersonation. Lack of proof of identity. Prior proceedings and knowledge and intent.  \r\n\r\nIX.   Other substantial facts the Panel considers relevant: As above. \r\n\r\nX.    Dispute Result: Revocation of the disputed domain name. \r\n\r\nXI.   Procedural factors the Panel considers relevant: -\r\n\r\nXII.  [If transfer to Complainant] Is Complainant eligible? -",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}