The Complainant is N. M. Rothschild & Sons Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Freshfields, Bruckhaus, Deringer LLP, UK.
The Respondent is Super Privacy Services LTD c/o Dynadot of San Mateo, California, United States of America (“US”) / RothschildFintrade Co. Ltd. 2. The Domain Name and Registrar
The disputed domain name is registered with Dynadot, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2018. On September 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 4, 2018.
The Center appointed Manuel Moreno-Torres as the sole panelist in this matter on October 18, 2018. 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 and its group, the Rothschild & Co group, provide financial services on a worldwide basis. The Complainant and affiliated entities are the registered owners of the following trademarks, amongst others: Registered European Union trademark No. 000206458 ROTHSCHILD, registered on October 8, 1998, in classes 14, 35, 36; Registered UK trademark No. 1285832 ROTHSCHILD, registered October 12, 1990, in class 36; and Registered US trademark No. 3447667 ROTHSCHILD, registered on June 17, 2008, in classes 35 and 36.
The disputed domain name was registered on April 27, 2018. The disputed domain name resolves to a website that uses the ROTHSCHILD trademark and advertises activities in the financial service sector. 5. Parties’ Contentions A. Complainant
The Complainant contends as follows:
The disputed domain name incorporates the ROTHSCHILD trademark in its entirety. The mere addition of a generic or descriptive term does not exclude the likelihood of confusion. The addition of “my” to the trademark in the disputed domain name is insufficient to prevent a likelihood of confusion.
The Respondent has no rights or legitimate interests in the disputed domain name: there is no relationship between the Parties, the Complainant has not licensed or otherwise permitted the Respondent to use its name or trademark or to register a domain name incorporating any of them, and the Respondent has not been known by the disputed domain name. Further, the Complainant points out that the domain name resolves to a website that uses the ROTHSCHILD trademark and advertises activities in the financial services sector. Therefore, the disputed domain name is not used in connection with a bona fide offering of goods or services.
The Complainant alleges that the Respondent registered and used the disputed domain name in bad faith. The ROTHSCHILD trademark is well known. Thus, the Respondent must have been aware of the Complainant’s rights at the time it registered the disputed domain name.
Finally, the Complainant submits that the 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 the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website and/or other online locations. The Respondent is using the ROTHSCHILD trademark in the corresponding website which advertises financial services. Accordingly, the Complainant concludes that the registration and use of the disputed domain name are in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order for the Panel to decide to grant the remedy of transfer of the disputed domain name to the Complainant, it is necessary that the Complainant proves, as required by paragraph 4(a) of the Policy, that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the 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.
There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response. Under paragraph 14(a) of the Rules in the event of such a “default” the Panel is still required “to proceed with a decision on the complaint”, whilst under paragraph 14(b) it “shall draw such inferences there from as it considers appropriate”. This dispute resolution procedure is accepted by the domain name registrant as a condition of registration. Therefore, a registrant should not gain any evidentiary benefit from its failure to participate. A. Identical or Confusingly Similar
It is apparent that the ROTHSCHILD trademark is entirely incorporated in the disputed domain name. Thus, the domain name is to be considered confusingly similar to ROTHSCHILD mark for purposes of the UDRP. See Alfred Dunhill, Inc. v. Registration Private, Domains By Proxy, LLC / Abdullah Altubayieb,WIPO Case No. D2017-0209.
The mere addition of the term “my” does not prevent a finding of confusing similarity. As stated at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the disputed domain name, the additions of other terms would not prevent a finding of confusing similarity.
It is well established that generic Top-Level Domains (“gTLDs”), in this case “.com”, are typically irrelevant to the consideration of identity or confusing similarity between a trademark and a domain name.
To the satisfaction of the Panel the first requirement is met under paragraph 4(a)(i) of the Policy B. Rights or Legitimate Interests
For the purposes of paragraph 4(a)(ii) of the Policy the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests. Indeed, the Complainant allegations in this regard are as follows: there is no relationship between the Parties, the Complainant has not licensed or otherwise permitted the Respondent to use its name or trademark or to register a domain name incorporating any of them, and that the Respondent has not been known by the disputed domain name.
Further, the domain name and the website content effectively impersonate or falsely suggest sponsorship or endorsement by the Complainant. The Panel refers to the WIPO Overview 3.0 section 2.5, which states that “Fundamentally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner”.
Since the Respondent has failed to respond, the prima facie case has not been rebutted. As a result, the Complainant has therefore demonstrated that the Respondent lacks rights or legitimate interests in the disputed domain name to the satisfaction of the Policy. C. Registered and Used in Bad Faith
For the purposes of the Policy, a Complainant must establish that the domain name was registered and used in bad faith by the Respondent.
Previous UDRP decisions have recognized the fame of the Complainant’s trademarks. See N. M. Rothschild & Sons Limited v. John Williams, Charles Hamilton,WIPO Case No. D2017-1439; N. M. Rothschild & Sons Limited v. Name Redacted,WIPO Case No. D2017-0922. Upon the recognition of the ROTHSCHILD trademark in the financial sector worldwide the Panel finds more likely that not that the Respondent knew of the Complainant, its trademarks, and activities. The fact that the disputed domain name resolves to a website offering services similar to the Complainant’s supports this finding.
With regard to the registration requirement the Panel finds that the use of the disputed the domain name and the website it resolves to was determined to mislead third parties into believing it is associated with the Complainant. The fictional distinctiveness of the disputed domain name heighten the likelihood of confusion as to the source or endorsement of the website to which the disputed domain name resolves. With reference to paragraph 4(b)(iv) of the Policy, the Panel notes that by using the disputed domain name, the Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement thereof.
The Panel also notes that the composition of the disputed domain names effectively impersonates or suggests sponsorship or endorsement by the Complainant. The lack of notice on the website in relation to any potential affiliation between the Parties further supports this finding.
Accordingly, the Complainant has succeeded on the third element of the Policy. 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 disputed domain name, be transferred to the Complainant.
Manuel Moreno-Torres
Sole Panelist
Date: October 25, 2018
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