Complainants are N. M. Rothschild & Sons Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) and Banque Martin Maurel of Marseille, France, represented by Freshfields, United Kingdom.
Respondent is Xiamen PrivacyProtection Service Co. Ltd. of Xiamen, Fujian, China / Yang hongjuan of Beijing, China. 2. The Domain Name and Registrar
The disputed domain name is registered with eName Technology Co., Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2016. On December 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 14, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainants on December 16, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amended Complaint. Complainants filed an amended Complaint on December 20, 2016. In response to a notification by the Center that Complaint was administratively deficient, Complainants filed the amended Complaint on December 20, 2016.
On December 16, 2016, the Center sent an email communication to the parties in both Chinese and English regarding the language of the proceeding. On December 19, 2016, Complainants requested for English to be the language of the proceeding. Respondent did not comment on the language of the proceeding.
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 in both Chinese and English, and the proceedings commenced on December 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 12, 2017.
The Center appointed Yijun Tian as the sole panelist in this matter on January 18, 2017. 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
Complainant 1, N. M. Rothschild & Sons Limited., is a company incorporated in London, United Kingdom. Complainant 1 and its group, the Rothschild & Co group, is a recognised market leader in the financial world that provides services on a worldwide basis. The Rothschild & Co group has been a leading provider of financial services for over two hundred years.
Complainant 1 has exclusive rights in multiple trademarks incorporating its ROTHSCHILD mark. Complainant is the exclusive owner of the registered ROTHSCHILD mark globally (Annex 5 to the Complaint), including trademark registration in China (since September 30, 1993, registration no. 771133). Complainant also owns a few domain names containing ROTHSCHILD mark, such as (among others).
Complainant 2 is Banque Martin Maurel, is a company incorporated in Marseille, France.
Complainant 2 and its group, the Martin Maurel group, provides private banking, wealth management, asset management and financial advisory services to individuals, companies, foundations and associations in France and Monaco. Complainant 2 was formed in 1964 as a result of the merger between Banque Martin Frères, whose origins date back to 1825, and Maurel Bank, which was founded in 1929.
Complainant 2 has exclusive rights in multiple trademarks incorporating its MARTIN MAUREL mark. Complainant is the exclusive owner of the registered MARTIN MAUREL related mark in France (Annex 6 to the Complaint), including trademark registration MM BANQUE MARTIN MAUREL (since September 11, 2007, registration no. 3523673). Complainant also owns a few domain names containing MARTIN MAUREL mark, such as , , and .
Respondent is Xiamen PrivacyProtection Service Co. Ltd. of Xiamen, Fujian, China / Yang hongjuan of Beijing, China. The disputed domain name was registered on June 6, 2016, long after the ROTHSCHILD and MARTIN MAUREL marks were registered. 5. Parties’ Contentions A. Complainants
Complainants contend that the disputed domain name is confusingly similar to the trademarks in which Complainants have rights. It incorporates the ROTHSCHILD mark and MARTIN MAUREL mark in their entirely and without any variation or addition.
Complainants contend that Respondent has no rights or legitimate interests in the disputed domain name.
Complainants contend that the disputed domain name was registered and is being used in bad faith.
Complainants request that the disputed domain name be transferred to Complainant 1. B. Respondent
Respondent did not reply to Complainants’ contentions. 6. Discussion and Findings 6.1. Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainants and Respondent to the effect that the language of the proceeding should be English. Complainants filed initially their Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
(a) The disputed domain name uses Latin characters and is registered under the “.com” generic extension, which primarily targets English-speaking Internet users.
(b) All content on the website that resolves from the disputed domain name is exclusively in English (with no Chinese translation). This suggests that Respondent is familiar with English and would not be prejudiced by the administrative proceeding being conducted in English.
(c) The contact form on the webpage for selling the disputed domain name is in English only. Respondent expects that people using the contract form to communicate with Respondent will do so in English.
(d) Complainants are not able to conduct this proceeding in Chinese without significant additional expense and delay as they would need to engage a specialized translation service to translate the Complaint into Chinese. This would place an undue burden on Complainants and mean that the administrative proceeding could not proceed with due expedition.
Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the Parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593). The language finally decided by the Panel for the proceeding should not be prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further provides:
“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement” (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that Complainants are companies from the United Kingdom and France, and Complainants will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the fact that the website at the disputed domain name includes Latin characters “rothschild”, “martin”, and “maurel” (Compagnie Gervais Danone v. Xiaole Zhang,WIPO Case No. D2008-1047; Hugo Boss AG v. Guan Jing, Lin Jing, li xiaoyong,WIPO Case No. D2012-1690).
On the record, Respondent appears to be a Chinese company/individual and is thus presumably not a native English speaker, but the Panel finds persuasive evidence in the present proceeding to suggest that Respondent has sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainants, (a) the disputed domain name was registered in Latin characters, rather than Chinese script; (b) the website resolved from the disputed domain name is in English, and Respondent is offering to sell the disputed domain name in English through the website; (c) the website appears to have been directed to users worldwide (particularly English) rather than Chinese speakers (because the default language of the website is English). The Panel also notes that the Center has notified Respondent of the proceeding in both Chinese and English and it informed Respondent that it would accept a Response in either English or Chinese.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this proceeding. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainants must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainants have rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Preliminary Issue - Consolidation of Complainants
The Panel notes that the present Complaint has been filed by multiple Complainants who have submitted a request for consolidation of their respective complaints. On this subject, paragraph 4.16 of the WIPO Overview 2.0 provides inter alia as follows:
“Can multiple complainants bring a single consolidated complaint against a respondent? Can a single consolidated complaint be brought against multiple respondents?
WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; or in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
In order for the filing of a single complaint brought by multiple complainants or against multiple respondents which meets the above criteria to be accepted, such complaint would typically need to be accompanied by a request for consolidation which establishes that the relevant criteria have been met. The onus of establishing this falls on the filing party/parties, and where the relevant criteria have not been met, the complaint in its filed form would not be accepted.”
The Panel is satisfied that Complainants each have rights in the ROTHSCHILD mark and MARTIN MAUREL mark respectively as set out in the Factual Background section above. The Panel notes that Complainants assert that they have been the target of common conduct by Respondent and that as there is a common grievance on the part of each of them and a single disputed domain name so it would be procedurally efficient to deal with all matters in the one proceeding, given the almost identical facts. Respondent has not filed a Response and thus remains silent on this issue.
The Panel finds that Complainants have established that they have a common grievance against Respondent which would affect their individual rights on substantially the same basis. Respondent has not indicated that it would suffer any prejudice from consolidation of the complaints and no potential prejudice is apparent to the Panel. Respondent has not otherwise contested the request for consolidation. In all of these circumstances, the Panel considers that it is procedurally efficient to allow Complainants to proceed with the single Complaint as filed and is content that such consolidation is fair and equitable to all of the Parties. With regard to the remedy sought by Complainants, the Panel notes that, if the Complaint succeeds, Complainants have specifically requested that the disputed domain name be transferred to Complainant 1. B. Identical or Confusingly Similar
The Panel finds that Complainant 1 has rights in the ROTHSCHILD marks acquired through registration. The ROTHSCHILD mark has been registered worldwide, including trademark registration in China (since September 30, 1993, registration no. 771133). Complainant 2 has rights in the MARTIN MAUREL mark acquired through remigration. The MARTIN MAUREL related marks have been registered in France (Annex 6 to the Complaint), including trademark registration MM BANQUE MARTIN MAUREL (since September 11, 2007, registration no. 3523673).
The disputed domain name, , comprises the ROTHSCHILD mark and the MARTIN MAUREL mark in their entireties. The disputed domain name only differs from Complainants’ trademarks by the generic Top-Level Domain (“gTLD”) suffix “.com”. This does not eliminate the identity or confusing similarity between Complainants’ registered trademarks and the disputed domain name. WIPO Overview 2.0 states:
“The applicable top-level suffix in the domain name (e.g., “.com”) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark”. (paragraph 1.2).
Thus, the Panel finds that the gTLD suffix “.com” is not sufficient to negate the confusing similarity between the disputed domain name and the ROTHSCHILD and MARTIN MAUREL marks.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) use of, or preparations to use, the disputed domain name in connection with a bona fide offering of goods or services;
(ii) the fact that Respondent has commonly been known by the disputed domain name; or
(iii) legitimate noncommercial or fair use of the disputed domain name.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
Complainant 1 has rights in the ROTHSCHILD marks, including trademark registration in China (since September 30, 1993, registration no. 771133). According to Complainant, it is a recognised market leader in the financial world that provides services on a worldwide basis. It has been a leading provider of financial services for over two hundred years.
Complainant 2 has rights in the MARTIN MAUREL mark in France, including trademark registration MM BANQUE MARTIN MAUREL (since September 11, 2007, registration no. 3523673). Formed in 1964, it provides private banking, wealth management, asset management and financial advisory services to individuals, companies, foundations and associations in France and Monaco.
On June 6, 2016, Complainants announced their plan to merge their respective French activities in private banking and asset management (Annex 1 to the Complaint).
Moreover, Respondent is not an authorized dealer of the ROTHSCHILD and MARTIN MAUREL branded products or services. Complainants have therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden to Respondent to produce evidence to rebut this presumption (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the word “rothschild” and/or “martin maurel” in its business operation. There has been no evidence to show that Complainants have licensed or otherwise permitted Respondent to use the ROTHSCHILD and MARTIN MAUREL marks or to apply for or use any domain name incorporating the ROTHSCHILD and MARTIN MAUREL marks;
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. The disputed domain name was registered on June 6, 2016, which is long after the ROTHSCHILD and MARTIN MAUREL marks became widely known, and the same day as the announcement regarding the merger of Complainants. The disputed domain name is identical or confusingly similar to Complainants’ ROTHSCHILD and MARTIN MAUREL marks.
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the information provided by Complainants, Respondent was providing the links to Complainants and their competitors through the website resolved by . It also offered the disputed domain name for sale. The website resolved by the disputed domain name contains a notice stating: “The domain may be for sale. Click here to inquire about this domain”.
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds also taking into consideration the Panel’s findings below, that Complainant has established the second element of paragraph 4(a) of the Policy. D. 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 disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainants who are the owners of the trademarks or service marks or to a competitor of Complainants, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owners of the trademarks or service marks from reflecting the marks in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites or other on-line location, by creating a likelihood of confusion with Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites or location or of a product or service on Respondent’s websites or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith.
a) Registered in Bad Faith
The Panel finds that Complainants have a widespread reputation in the ROTHSCHILD and MARTIN MAUREL marks respectively with regard to their products or services. Complainant 1 is a recognised market leader in the financial world that provides services on a worldwide basis, and it has been a leading provider of financial services for over two hundred years. Complainant 2 was formed in 1964, and it provides private banking, wealth management, asset management and financial advisory services in France and Monaco. Particularly, on June 6, 2016, Complainants announced their plan to merge their respective French activities in private banking and asset management.
Respondent would likely not have provided the links to Complainants and their competitors on the website if it was unaware of the ROTHSCHILD and MARTIN MAUREL marks reputation. Respondent would likely not have registered the disputed domain name (which contains both ROTHSCHILD and MARTIN MAUREL marks) on the same day as the announcement of the merger of Complainants. In other words, it is not conceivable that Respondent would not have had actual notice of Complainants’ trademark rights at the time of the registration of the disputed domain name.
The Panel therefore finds that the ROTHSCHILD and MARTIN MAUREL marks are not marks that a trader would randomly adopt for the purpose other than to create an impression of an association with Complainants (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainants’ ROTHSCHILD and/or MARTIN MAUREL-branded products or services.
b) Used in Bad Faith
Complainants have adduced evidence to prove that by using the confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites”.
To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, supra).
Given the widespread reputation of the ROTHSCHILD and MARTIN MAUREL marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainants, contrary to the fact. There is a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. In other words, Respondent has through the use of the disputed domain name created a likelihood of confusion with the ROTHSCHILD and MARTIN MAUREL marks. Noting also that apparently no clarification as to Respondent’s relationship to Complainants is made on the homepage of the disputed domain name, potential Internet users are led to believe that the website at is either Complainants’ site or the site of an official authorized agent of Complainants, which is not the case.
Moreover, according to Complainants, Respondent is using the website resolved by the disputed domain name to provide the links to Complainants and Complainants’ competitors (as introduced above), and even offered the disputed domain name for sale (as introduced above). The Panel therefore concludes that the disputed domain name is being used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use the disputed domain name, intended to ride on the goodwill of Complainants’ trademarks in an attempt to exploit, for commercial gain, Internet users destined for Complainants. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves is indicative of registration and use of the disputed domain name in bad faith.
The Panel therefore holds that the Complaint fulfils the third element of paragraph 4(a) 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 disputed domain name be transferred to Complainant 1.
Yijun Tian
Sole Panelist
Dated: January 24, 2017
Full & Egal Universal Law Academy