WIPO Domain Name Decision D2019-0517 for rothschildscontinuationholdings.com
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION N. M. Rothschild & Sons Limited v. Domain Administrator, PrivacyG / Albert Rothschild Case No. D2019-0517 1. The Parties
Complainant is N. M. Rothschild & Sons Limited of London, United Kingdom, represented by Freshfields, Bruckhaus, Deringer LLP, United Kingdom.
Respondent is Domain Administrator, PrivacyG of Phoenix, Arizona, United States of America / Albert Rothschild of Zurich, Switzerland. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2019. On March 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 7, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 11, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 22, 2019.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on March 26, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 15, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 16, 2019.
The Center appointed John C. McElwaine as the sole panelist in this matter on April 29, 2019. 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 Rothschild & Co group, of which Complainant is a part, is a leader in mergers and acquisitions strategy and financing advice, as well as investment and wealth management solutions to large institutions, families, individuals and governments.
Complainant and affiliated entities are the registered owners of, or otherwise have rights in, a number of registrations throughout the world for the trademarks ROTHSCHILD & CO and ROTHSCHILD (the “ROTHSCHILD marks”), including a registration for the trademark ROTHSCHILD in Switzerland, Reg. No. 410382, registered on June 1, 1994 in classes 35 and 36.
On November 12, 2018, Respondent registered the Domain Name with the Registrar. The Domain Name redirected Internet traffic to Complainant’s website. 5. Parties’ Contentions A. Complainant
Complainant contends that the Rothschild & Co group is a well-known financial services company having been in business for over two hundred years. The Rothschild & Co group, of which Complainant is a part, provides services world-wide under the ROTHSCHILD & CO and ROTHSCHILD trademarks. In Annex 4 to the Complaint, Complainant provided a list of trademark registrations in many countries for the marks ROTHSCHILD & CO and ROTHSCHILD.
With respect to the first element of the Policy, Complainant asserts that its rights in the ROTHSCHILD marks predate Respondent’s registration of the Domain Name. Complainant also asserts that the Domain Name is confusingly similar to trademarks in which Complainant has rights. In particular, Complainant alleges that the Domain Name incorporates the ROTHSCHILD trademark in its entirety, without any variation, as its first and most prominent part followed by the letter “s” and the descriptive term “continuationholdings”. In addition, Complainant points out that Rothschild & Co Continuation Holdings AG (which, until recently, was named Rothschilds Continuation Holdings AG) is a company within the Rothschild & Co group.
With respect to the second element of the Policy, Complainant contends that there is no relationship between Respondent and Complainant, and that Complainant has not licensed or otherwise permitted Respondent to use the “Rothschild” name or the ROTHSCHILD marks to register a domain name incorporating any of them. Complainant also does not believe that Respondent is a customer of Complainant. Complainant acknowledges that the registrant of the Domain Name is listed as Albert Rothschild but submits that the true registrant has provided false information to the Registrar to register the Domain Name. Moreover, Complainant points out that Respondent has redirected the Domain Name to the Rothschild & Co Website. Complainant asserts that this is evidence of the fact that Respondent is: (i) aware of Complainant’s rights in the “Rothschild” name; and (ii) is only using the Domain Name to suggest a connection between the Domain Name and Complainant, rather than in connection with any bona fide offering of goods or services. Complainant asserts that Respondent is not making fair use of the Domain Name.
With respect to the third element of the Policy, Complainant submits that the Domain Name has been registered and is being used in bad faith because Respondent is intentionally attempting to attract, for commercial gain, Internet users to the website and/or other online locations by creating a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website and/or other online locations. Complainant asserts that Respondent must have been aware of Complainant’s rights at the time it registered the Domain Name because the Domain Name contains the ROTHSCHILD trademark and redirects to the Rothschild & Co Website and the Second Respondent falsely used the contact details of Complainant’s office in Zurich. Complainant notes that this same impersonation strategy was employed in another UDRP proceeding, N.M. Rothschild & Sons Limited v. Domain Administrator, PrivacyG / Albert Rothschild,WIPO Case No. D2018-0652.
In addition, Complainant contends that Respondent has registered and used the Domain Name in bad faith because (a) the Domain Name is being used by Respondent to impersonate Complainant’s group, by means of a redirect from the Domain Name to the Rothschild & Co Website; and (b) the Domain Name has been registered using a domain privacy service and false information to obfuscate the identity of the true registrant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainants must still prove their assertions with evidence demonstrating:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel s