The Complainant is Rockefeller & Co., Inc., of New York, United States of America (“US”), represented by Fross Zelnick Lehrman & Zissu, PC, US.
The Respondent is Rockefeller Oil Company Plc, c/o Norberto Ruiz, of London, England, The United Kingdom of Great Britain and Northern Ireland (“UK”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2015. On February 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceeding commenced on February 11, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 4, 2015.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on March 11, 2015. 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 is an investment advisor and a national trust bank which offers wealth planning, investment management, investment advice and other services to individuals and families, family offices, nonprofit organizations and other institutions. The Complainant has registered various trademarks in the US containing the element “Rockefeller” for goods and services in classes 35 and 36 (the “Trade Marks”). Complainant’s trademark ROCKEFELLER was registered in the US on June 29, 2010 (first used in commerce on December 21, 1979). The Complainant’s trademark ROCKEFELLER & CO was registered in the US on April 22, 2008 (first used in commerce on December 21, 1979). The Complainant’s trademark ROCKEFELLER FINANCIAL was registered in the US on August 23, 2011 (first used in commerce on March 1, 2010).
The Respondent registered the Domain Name on November 21, 2012.
In 2013, the Respondent submitted tax filings claiming that Steven Clark Rockefeller, Jr. owned a number of shares of its company stock. Mr. Rockefeller, Jr. confirmed that he has no interest in, involvement with or knowledge of the Respondent. The remaining shares were purportedly owned by Mr. Dietrich W.P. von Erbach-Schonberg who, after being contacted by the Complainant, denied having any involvement with the Respondent. Mr. Rockefeller, Jr. and Mr. Erbach-Schonberg were also listed as directors and/or shareholders of other companies that incorporated the term “Rockefeller” as part of their name, all of which have been dissolved.
On April 3, 2014, the Complainant’s counsel sent letters to the Metropolitan Police and to the Companies House in the UK to report the fraudulent information provided by the Respondent, after which the listings of Mr. Rockefeller, Jr. have been deleted. 5. Parties’ Contentions A. Complainant
The Complainant submits that the Domain Name and the Trade Marks are confusingly similar, as the Domain Name incorporates the ROCKEFELLER mark in its entirety. The addition of the term “oil” does not distinguish the Domain Name from the Trade Marks as it is a generic term which does not remove the confusion.
Furthermore, the Complainant states that Respondent does not have any legitimate interests in the Domain Name. The Complainant submits it has not given permission to the Respondent to incorporate the Trade Marks (including ROCKEFELLER ) in the Domain Name. According to the Complainant the Respondent has falsified its business filings to claim that Steven C. Rockefeller, Jr. was a director and shareholder of the company. Furthermore, the Complainant submits that there is no indication that the Respondent has ever been known by the Domain Name. As the Domain Name, to the Complainant’s knowledge, has only been used in connection with a website that creates the false impression that there is an association between the Respondent and the Complainant, there is no other legitimate interest of the Respondent in the Domain Name.
The Complainant states that the Domain Name has been registered in bad faith, as the Trade Marks enjoy wide spread recognition and the Respondent, according to the Complainant, clearly included the ROCKEFELLER mark in the Domain Name to profit from the reputation of the Trade Marks. As there is no actual link between the Respondent and the Complainant, the Complainant submits, and therefore no credible reason for the Respondent to incorporate the Trade Marks in the Domain Name, there is evidence of bad faith registration. In addition, the Complainant states that the use of the Domain Name containing the ROCKEFELLER mark is in bad faith since the only reason could be to cause confusion and trade off on the fame of the Complainant and the Trade Marks. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has demonstrated that it has rights in the Trade Marks.
The Domain Name contains the Complainant’s ROCKEFELLER mark in its entirety which is the dominant element of the Domain Name. The addition of the generic word “oil”, does not change the overall similarity so that the Panel concludes that the Domain Name is confusingly similar to the Trade Marks pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Complainant has made out an unrebutted prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name (WIPO Overview of WIPO Panel views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1).
It has not authorized, licensed or otherwise consented to the Respondent’s registration and use of the Domain Name. The Respondent’s use of the Domain Name to host a website of a company called Rockefeller Oil PLC cannot in this case be considered use for bona fide services, nor a legitimate noncommercial or fair use. The Respondent has filed fraudulent information with the UK Company House concerning its shareholders and directors, in particular by falsely claiming that Mr. Steven C. Rockefeller, Jr. was a shareholder and director of the Respondent. The fact that this information has now been deleted at the request of the Complainant from company documents confirms that there is no connection between the Respondent and the Rockefeller name which could possibly have provided a legitimate basis for the incorporation of the ROCKEFELLER mark in the Domain Name. Rather, the Respondent’s attempt to create a false impression of association with the Complainant does not provide a legitimate interest under the Policy.
Therefore, the Panel concludes that the Respondent does not have any rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
The Domain Name has been registered well after the first use of the Trade Marks and several years after registration thereof. As the Trade Marks - and especially the ROCKEFELLER mark - may be considered to be well-known the Respondent must have been aware of the Complainant and its Trade Marks when registering the Domain Name. It follows that the Respondent deliberately chose the Domain Name to be able to profit from the reputation of the Trade Marks and to confuse Internet users into believing that the website under the Domain Name is somehow connected to or authorized by the Complainant.
The Panel therefore concludes that the registration of the Domain Names was made in bad faith.
In addition, the use of the Domain Name in connection with a website for a company called Rockefeller Oil PLC, while the Complainant is the successor to the family office established by John D. Rockefeller - who made his fortune in the oil business during the late nineteenth and early twentieth centuries - in this case clearly indicates that the Respondent thereby intentionally attempts to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or of a product or service on the Respondent’s website.
The Panel concludes that the Domain Name is also being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Wolter Wefers Bettink
Sole Panelist
Date: March 25, 2015
Full & Egal Universal Law Academy