N. M. Rothschild & Sons Limited, Baron Philippe de Rothschild SA, Soci�t� Civile de Ch�teau Lafite Rothschild v. Land Exchange, Inc. Case No. D2006-1140 1. The Parties The Complainant is N. M. Rothschild & Sons Limited, Baron Philippe de Rothschild SA, Soci�t� Civile de Ch�teau Lafite Rothschild, of United Kingdom of Great Britain and Northern Ireland, represented by Freshfields, Bruckhaus, Deringer, of United Kingdom of Great Britain and Northern Ireland. The Respondent is Land Exchange, Inc., of United States of America. 2. The Domain Names and Registrar The disputed domain names are registered with BulkR. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September�5,�2006. On September�6,�2006, the Center transmitted by email to BulkR a request for registrar verification in connection with the domain names at issue. On September�11,�2006, BulkR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September�15,�2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October�5,�2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October�11,�2006. The Center appointed Susanna H.S. Leong as the sole panelist in this matter on October�23,�2006. 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 comprises of the Rothschild Banking Group and the Rothschild Wine Group. The Rothschild Banking Group is an international organisation with offices in Amsterdam, Athens, Beijing, Bermuda, Birmingham, Cayman Islands, Frankfurt, Geneva, Guernsey, Hong Kong SAR of China, Jakarta, Johannesburg, Leeds, Lisbon, London, Madrid, Manchester, Melbourne, Mexico City, Milan, Moscow, Mumbai, Newcastle-upon-Tyne, New York, Paris, Perth, Rome, Sao Paulo, Shanghai, Singapore, Sydney, Tokyo, Toronto, Tortola, Warsaw, Washington and Zurich. The Rothschild Wine Group is engaged in the production and worldwide distribution of a broad range of wines produced from vineyards in the Bordeaux region of France, including the world-famous Premier Cru Class� wines “Ch�teau Lafite Rothschild” and “Ch�teau Mouton Rothschild”. Since the 19th century, the Trademark ROTHSCHILD has been used to denote wines produced and distributed by the Rothschild Wine Group or its predecessors-in-interest. The history and business of the Complainant in the banking and wine industries can be traced back over two hundred years. The Complainant and other members of the Rothschild Group are the respective owners and registered proprietors of the registered Trademarks for ROTHSCHILD, BARONS DE ROTHSCHILD, BARON PHILIPPE DE ROTHSCHILD and DOMAINES BARONS DE ROTHSCHILD LAFITE in more than 50 countries all over the world. The majority of the Trademarks are registered for “banking, financial management and investment, trusteeship and securities brokerage services” or wine and goods related to wine. The Complainant Rothschild Group is widely-known for using “Baron” in the course of trade, as is evidenced by the titles of its chairmen and the BARONS DE ROTHSCHILD, BARON PHILIPPE DE ROTHSCHILD and DOMAINES BARONS DE ROTHSCHILD LAFITE Trademarks. The Complainant Rothschild Group is also widely-known for its use of “de Rothschild”, which the Second and Third Complainants and other members of the Rothschild Group use in trade. They would be entitled to Germanicise their title if they were resident in a German-speaking country. Accordingly, they would be known by the name “von Rothschild”, “von” being the German translation of the French word “de”. The Trademarks, including the title “Baron”, are widely known in connection with the Rothschild Group. The Rothschild Group is famous for its wines and has been at the centre of the world’s financial markets for over two hundred years. The Rothschild Group has invested substantial sums of money in developing and marketing its wines, banking and business services under the Trademarks. In particular, the Rothschild Group advertises and markets its goods and services on websites with the following URLs: , , , and . The Respondent registered the disputed domain names recently between 2001 and 2006 whilst the Complainant has registered and used the Trademarks long before the Respondent’s registrations. 5. Parties’ Contentions A. Complainant Identical or Confusingly Similar The Complainant contends that the disputed domain names are confusingly similar to the Complainant’s ROTHSCHILD Trademarks for the following reasons: (a) In relation to the disputed domain name The Complainant contends that the disputed domain name is a combination of the name ROTHSCHILD, which is identical to the ROTHSCHILD Trademark, and the word “banks”, which describes banking services, one of the principal services provided by the Complainant. N M Rothschild & Sons Limited v. Corporate Internet Design Limited and Michael Decker, WIPO Case No. D2001-0854 was cited by the Complainant, in which the Panel held that in relation to the domain names and , “the addition of the ordinary word “bank” which is descriptive of the business in which the Complainant operates does not prevent the domain names from being confusingly similar to the Complainant’s ROTHSCHILD trademark.” The Complainant also cited N. M. Rothschild & Sons Ltd. v. Fine Art Investments Ltd., WIPO Case No. D2001-1029 in which it was held that “the addition to “rothschild” of the word “bank” in relation to the domain name , is purely descriptive of the Complainant’s widely-known activity. As such, the domain name is manifestly confusingly similar to the Trademark.” (b) In relation to the disputed domain names and The Complainant contends that these domain names are a combination of the mark ROTHSCHILD and the word “rothchild”, and also the words “baronvon”. These words are also extremely similar to the BARONS DE ROTHSCHILD Trademark. The Complainant contends that the omission of the letter “S” from the middle of the mark ROTHSCHILD is not aurally or visually significant. In support of this contention, the Complainant cites Rothschild Bank AG, N M Rothschild & Sons Limited and Rothschilds Continuation Holdings AG v. Rothchild Corporation and Rothchild Internet Development Corporation SA de CV/Joseph Martin Rothchild, WIPO Case No. D2001-1112 in which it was held that the only difference between , and and the Trademark ROTHSCHILD was the omission of the letter “S”. The Panel was of the opinion that these three disputed domain names represented “what is likely to be a common misspelling of the Complainants’ trademark and trade name”. Furthermore, the use of “baronvon” renders these domain names even more confusingly similar to the Complainant’s Trademarks because (i) the Rothschild Group has long been associated with the title “Baron”; (ii) some of the Trademarks (and, in particular, the BARONS DE ROTHSCHILD Trademark) incorporate “Baron” and “de”; and (iii) the titles “Baron de” (which is merely the French translation of “Baron von”) and “Baron von” are and have been used (and are entitled to be used) by members of the Rothschild Group in trade. Finally, the Complainant contends that even if “baronvon” was not distinctive, these domain names would be confusingly similar to their Trademarks. (c) In relation to the disputed domain name The Complainant contends that this is a combination of the name “rothschilds” (which is virtually identical to ROTHSCHILD because the addition of the letter “S” is not aurally or visually significant and is a mere plural of the ROTHSCHILD name and the word “europe”, which is merely a descriptive geographical indicator. The Complainant cites N M Rothschild & Sons Limited v. Corporate Internet Design Limited and Michael Decker, WIPO Case No. D2001-0854 in which it was held that the “plural or possessive version of the Complainant’s ROTHSCHILD mark” and the word “bank” “did not prevent the domain names and from being confusingly similar to the Complainant’s ROTHSCHILD Trademark”. The Complainant also cites NIKE, Inc. v. Jaeik Jung, WIPO Case No. D2000-1471 in which it was held, in relation to the domain names , , and , that “[g]eographical additions do not alter the underlying meaning of a domain name, so as to avoid confusing similarity”. Rights or Legitimate Interests The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain names. There is no relationship between the Respondent and the Complainants. The Complainants have not licensed or otherwise permitted the Respondent to use their name or the Trademarks or to register a domain name incorporating any of them. Furthermore, there is no suggestion that the Respondent is commonly known as “rothschildbanks”, “baronvonrothschild”, “baronvonrothchild” or “rothschildseurope” or that it has acquired any trademark rights in any of those names. The Respondent has not used (or made demonstrable preparations to use) the Domain Names in connection with a bona fide offering of goods or services before receiving notice of this dispute from the Complainant on February�2,�2006. As of July�20,�2006, the Respondent was using the URL to display sponsored links relating to, among other things, finance. At some time between July�20,�2006 and August�1,�2006, more than two and a half years following registration of the Domain Name in 2003, the Respondent amended the content of the Banks Website so that it displays information relating to the “The Rothschild Banking Family in England” which, the Banks Website states, has been retrieved from “”. It is submitted that the Respondent’s display of this content on the Banks Website is no basis for a finding of rights or legitimate interests because it took place after the Respondent had been notified of the dispute. Neither does it relate to an offering of goods or services, nor is it bona fide because the content is, in all material respects, a mere copy of content from the “” website that involved no monetary or intellectual investment by the Respondent. As such, it is submitted that the Respondent has placed this content on the Banks Website in a superficial attempt to show a legitimate interest in the Domain Name in the context of these proceedings. See DHL Operations B.V. v. Ali Kazempour, WIPO Case No.D2004-1094; CBS Broadcasting Inc. f/k/a CBS Inc. v. Goldmark, WIPO Case No.D2004-0330; Corinthians Licenciamentos LTDA v. David Sallen, Sallen Enterprises, and J.D. Sallen Enterprises, WIPO Case No.D2000-0461; and Microsoft Corporation v. StepWeb, WIPO Case No.D2000-1500. The URLs and were used to display sponsored links relating to, among other things, finance and wine. The Respondent has no bona fide interest in “baronvonrothschild” or “baronvonrothchild”, especially in relation to finance or wine. At some time between July�20,�2006, and August�1,�2006, the Respondent took down the content of the website. In respect of the inactive website, the Respondent cannot show any use of the Domain Name in connection with goods or services, bona fide or otherwise. In relation to website with the URL , it was used to display a history of the “Mayer Amschel Rothschild family”, which, the Europe Website states, has been retrieved from “”. It is submitted that the Respondent’s display of this content on the Europe Website is no basis for a finding of rights or legitimate interests because, given that the Respondent registered the Domain Name on June�23,�2006, it took place after the Respondent had been notified of the dispute. Neither does it relate to an offering of goods or services, nor is it bona fide because the content is, in all material respects, a mere copy of content from the “” website that involved no monetary or intellectual investment by the Respondent. As such, it is submitted that the Respondent has placed this content on the Europe Website (as it did for the Banks Website) in a superficial attempt to show a legitimate interest in the Europe Domain Name in anticipation of these proceedings. The Complainant further contends that the Respondent is not making any legitimate non-commercial or fair use of the Domain Names because of the following reasons: (i) The websites display sponsored links which are commercial and it is submitted that the Respondent’s motive for registering them was to obtain a commercial benefit by using names confusingly similar to the famous Trademarks; and (ii) The websites which display information about the Rothschild family are commercial because the Respondent has described one of the websites as producing “an income stream…on monetization of that name” with “an income approach of well over $50,000” and the other website as a “revenue builder” which receives “tremendous traffic” and which it would be prepared to sell for USD5,000. Registered and Used in Bad Faith The Complainant submits that the disputed domain names have been registered and are being used in bad faith for the following reasons: (a) The Respondent has registered the disputed domain names primarily for the purpose of selling them to the Complainant for valuable consideration in excess of Respondent’s documented out-of-pocket costs. The Complainant has adduced evidence to show that the Respondent has made an unsolicited offer to sell the one of the disputed domain names for the price of USD12, 500. After a series of email correspondences of offers and counter-offers between the parties, during which the Respondent registered the other three domain names of ; ; and , the Respondent was willing to sell all four domain names to the Complainant for the price of USD12, 500. The Complainant asserts that through all these correspondences the Respondent has demonstrated its intention to sell the disputed domain names to the Complainant for a sum vastly in excess of its out-of-pocket costs directly related to the domain names. (b) The Respondent has offered for sale the domain names and on its websites. The Complainant asserts that each of the Respondent’s’ websites contained, as of July�20,�2006, a statement that it is for sale and inviting Internet users to make an offer via a hyperlink. That hyperlink directed users to websites where they were invited to make an offer for the relevant domain name, which the websites stated “must exceed $400”. (c) The Respondent has engaged in a pattern of registrations which prevent the owner of a Trademark or service mark from reflecting the mark in a corresponding domain name. The Complainant has adduced evidence in the form of an email which demonstrated the Respondent’s opportunistic approach to domain name registration in which it indicated that the Complainants have “been highly remiss to have missed the boat years ago by not registering” the Banks Domain Name. (d) The Respondent intentionally attempted to attract, for commercial gain, Internet users to the websites of the domain names by creating a likelihood of confusion with the Complainant’s’ Trademarks as to the source, sponsorship, affiliation or endorsement of the websites. (e) As of July�20,�2006, the Respondent was using the “” website homepage to display sponsored links to websites for a “dating service” and “Russian mail order bride”. The Respondent’s use of the domain name was likely to misleadingly divert customers wishing to visit one of the Complainant’s websites to the Respondent “” website, which contains links to inappropriate material. As a result, those customers may (wrongly) associate the Complainant with that material, thereby tarnishing the Complainant’s good reputation. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In accordance with paragraph�4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied: 1. the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and 2. the Respondent has no rights or legitimate interests in respect of the domain name; and 3. the domain name has been registered and is being used in bad faith. Paragraph�4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding. Furthermore, pursuant to paragraph�15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph�14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate. On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs�4(a),�(b),�(c) of the Policy), the Panel concludes as follows: A. Identical or Confusingly Similar The Complainant has produced substantial evidence to demonstrate that it is the registered owner of the ROTHSCHILD trademark in many countries throughout the world. The Panel accepts the evidence adduced by the Complainant and finds that the Complainant has trademark rights in the ROTHSCHILD trademarks. The disputed domain names are constituted by a combination of (a) an exact reproduction of one portion for example ROTHSCHILD of the Complainant’s trademarks or a misspelling of the Complainant’s ROTHSCHILD trademarks by the omission or an addition of the letter ‘s’; (b) the suffixes of descriptive or geographical terms such as “banks” or “europe” or (c) the prefix of the word “baronvon”. In assessing the degree of similarity between the Complainant’s marks and the disputed domain names, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s marks and the disputed domain names is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download the Complainant’s banking services or wine products. Although the “Rothschild” portion of the Complainant’s marks is a family name, through the years, it has gained tremendous goodwill and has become a highly distinctive portion of the Complainant’s marks. This highly distinctive portion has been reproduced in its entirety or in ways that are not significantly different from the Complainant’s distinctive trademarks in the disputed domain names. The Panel finds that the “Rothschild” portion is the most prominent part of the disputed domain names which will attract consumers’ attention. The Panel accepts the Complainant’s contention that the misspellings and the additions of the suffixes of “banks” and “europe” or the prefix “baronvon” are merely descriptive as they either indicate the kinds of activities that the Complainant is principally involved in or the geographical locations of the principal activities or the title by which the Complainant is commonly known in the course of trade. These misspellings and additions do not provide any additional specification or sufficient distinction from the Complainant or its ROTHSCHILD trademarks. Bearing in mind in particular the distinctive character of the word “Rothschild” in the Complainant’s trademarks, the dominant component of the disputed domain names, and the visual, aural and similarities between them, the Panel finds that the disputed domain names ; ; ; and are confusingly similar to Trademarks in which the Complainant has rights. The Panel therefore finds that the Complainant satisfies paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests According to paragraph�4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements: “(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph�4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain names. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against him. In particular, the Respondent has failed to make submissions to demonstrate that he has rights or legitimate interests to the domain names. In accordance with the Rules paragraph�14, the Panel thus draws such inferences as she considers appropriate, which are that the Respondent is unable to adduce evidence of any rights or legitimate interests to the disputed domain names. Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names: (i) the “Rothschild” portion of the Complainant’s Trademarks is a family name with no meaning or connection with the goods or services sold under it. Thus the Respondent could not be using the word “Rothschild” in a descriptive sense. Therefore, the Respondent must provide plausible explanations in its choice of the disputed domain names which are confusingly similar to the Complainant’s ROTHSCHILD Trademarks; (ii) the Respondent has not provided evidence of a legitimate use of the domain names or reasons to justify the choice of the word “Rothschild” in its business operations; (iii) there was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its Trademarks or to apply for or use any domain names incorporating the Trademarks; (iv) there is no indication whatsoever that the Respondent is commonly known by the disputed domain names and/or is using the domain names in connection with a bona fide offering of goods or services. In fact, there is substantial evidence adduced by the Complainant which indicates that the Respondent has registered and used the disputed domain names in order to make a quick profit from the transfers of the domain names to interested parties; (v) the Complainant and its ROTHSCHILD Trademarks enjoy a considerable reputation with regard to banking services and wine products in many countries all over the world. Consequently, in the absence of contrary evidence from the Respondent, the ROTHSCHILD mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant; (vi) The Panel accepts the Complainant’s argument that the mere display of sponsored links and content pages describing the Complainant and its businesses taken from “” do not demonstrate that the Respondent is using the websites or the disputed domain names in a bona fide legitimate offering of goods or services over the Internet. In fact, there are no goods or services being offered by the Respondent on all of the websites to which the disputed domain names resolve. The Panel therefore finds that the Complainant satisfies paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph�4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely: (i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or (iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product. The Panel concludes based on the case file that the circumstances referred to in Paragraph�4(b)(i) and (iv) of the Policy are applicable to the present case and upon the evidence of these circumstances it is adequate to conclude that the Respondent has registered and used the disputed domain names in bad faith. Firstly, the Panel finds that the Complainant and its ROTHSCHILD Trademarks enjoy a long history and considerable reputation with regard to banking services and wine products in many countries all over the world. Therefore, the Panel finds that it is unlikely that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the domain names. Consequently, it would have been pertinent that the Respondent provide an explanation of its choice in the disputed domain names, failing which the Panel draws the conclusion that the disputed domain names were registered in bad faith with intent to create an impression of an association with the Complainant and its banking services or wine products. Secondly, the Complainant has adduced evidence to show that the Respondent did not have any legitimate interest or rights in the disputed domain names. Mostly importantly, there are no bona fide legitimate offerings of goods or services by the Respondent on the websites of the disputed domain names. In fact, the websites merely display sponsored links or copied content pages from “” on the facts of the Complainant’s history and businesses. The Complainant has also adduced evidence to show that the Respondent has offered for sale the domain names and on its websites. Interested parties can click on a hyperlink which directed users to websites where they were invited to make an offer for the relevant domain name, which “must exceed $400”. Furthermore, the Complainant has adduced evidence that the Respondent has agreed, after a series of offers and counter-offers, to sell all four domain names to the Complainant for the price of USD12, 500, a price which is in excess of the Respondent’s documented out-of-pocket costs directly related to the domain names. Thirdly, the Complainant has adduced evidence and proved that by using confusingly similar disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites. Furthermore, the Respondent has through the use of these confusingly similar domain names created a likelihood of confusion with the Complainant’s Trademarks and this constitutes a fraudulent misrepresentation to the public that its websites are associated or connected with the Complainant. In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain names and the conduct of the Respondent as far as the websites on to which the domain names resolve are indicative of registration and usage of the disputed domain names in bad faith. The Panel accepts the Complainant’s submission that this fact coupled with all the other evidence proves that the Respondent has registered and used the disputed domain names in bad faith. The Panel therefore find that the Complainant satisfies paragraph 4(a)(iii) of the Policy. 7. Decision For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, ; ; ; and be transferred to the Complainant. Susanna H.S. Leong Sole Panelist Dated: November 6, 2006
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