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 shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant to show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. Here, Complainant has provided evidence of ownership of numerous registrations for the ROTHSCHILD trademark in numerous jurisdictions. The Panel finds that Complainant owns valid trademark rights in the ROTHSCHILD trademark and said rights predate the registration of the Domain Name.
With respect to confusing similarity, the Domain Name contains the ROTHSCHILD trademark but for the addition of the letter “s” creating a plural version of the ROTHSCHILD trademark. The addition of the letter “s” does not distinguish the Domain Name from the ROTHSCHILD trademark. See ESH Strategies Branding, LLC v. Kumpol Sawaengkarn,WIPO Case No. D2011-0843. In addition, the Domain Name contains the term “continuationholdings”, which is a descriptive term related to Complainant’s services. The addition of the term “continuationholdings” does not distinguish the Domain Name but instead serves to increase the likelihood of confusion because the Domain Name is virtually identical to Rothschild & Co. Continuation Holdings AG (which, until recently, was named Rothschilds Continuation Holdings AG), a company within the Rothschild & Co group.
Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s ROTHSCHILD mark in which Complainant has valid trademark rights. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant asserts that Respondent is not a licensee or customer of Complainant and that Respondent is not authorized to use the ROTHSCHILD marks. Although properly notified by the Center, Respondent failed to submit any response justifying its use of the Domain Name and explaining its decision of redirecting Internet traffic to Complainant’s website. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of a domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond,WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S.,WIPO Case No. D2000-0011. Complainant has made a prima facie showing on this element, at which point the burden shifts to Respondent to present evidence that it has some rights or legitimate interests in the Domain Name. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name:
“(i) before any notice to you 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 (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 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.”
Complainant asserts that the Domain Name redirects to its Rothschild & Co. website without Complainant’s permission. The Panel finds that Respondent’s intentional action to redirect Internet traffic to Complainant’s website is evidence of the fact that Respondent must be aware of Complainant’s rights in the ROTHSCHILD marks and is using the Domain Name to suggest a connection with Complainant. At best, this connection suggests a false affiliation and at worst this type of behavior could be used to perpetuate fraud. The Panel finds that Respondent’s use of the Domain Name to divert Internet traffic to is not a bona fide offering of goods or services. See Chicago Mercantile Exchange Inc., CME Group Inc. v. Registration Private, Domains By Proxy, LLC, DomainsByP / Nikolay Korobeynikov,WIPO Case No. D2016-0654 (finding no legitimate interest in a website resolving from the disputed domain name, which mirrored, and purported to be, the website of “CME Group” and which provided information relating to the trading of futures and options).
With respect to Complainant’s contention that Respondent is not commonly known by the Domain Name, the Panel notes that the WhoIs information lists Respondent as Albert Rothschild. However, Complainant has established that this registrant information is false. Complainant points out that Respondent’s contact information associated with the Domain Name is the postal address and telephone number of Complainant’s group’s office in Zurich and that “Albert Rothschild” was a prominent member of the Rothschild banking family in Austria, who lived from 1844 to 1911. Complainant also notes that the contact information for Respondent is the same as the false information that was provided in N.M. Rothschild & Sons Limited v. Domain Administrator, PrivacyG / Albert Rothschild,WIPO Case No. D2018-0652, which also involved the same named Respondent to this Complaint.
Lastly, Respondent has used a false name to register a Domain Name that purports to be the name of a company with Complainant’s corporate group structure and which was redirected, without authorization, to Complainant’s website. Such activity does not amount to a fan site, criticism, or other activity that may be considered noncommercial or fair use. See, e.g., Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647.
Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests and Respondent has failed to come forward with facts to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. For all these reasons, the Panel finds that the second element of the Policy is established by Complainant, and Respondent has no rights or legitimate interests in respect of the Domain Name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Names in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Bad faith registration can be found where respondents “knew or should have known” of complainant’s trademark rights and nevertheless registered a domain name in which he had no right or legitimate interest. See Accor v. Kristen Hoerl,WIPO Case No. D2007-1722. Here, the ROTHSCHILD marks represents the goodwill of a well-known global financial services company. Complainant has used its ROTHSCHILD marks for 200 years and had advertised such marks extensively. Based on Complainant’s submission, which was not rebutted by Respondent, Respondent must have known of Complainant’s ROTHSCHILD marks when it registered the Domain Name. See WhatsApp Inc. v. Francisco Costa,WIPO Case No. D2015-0909 (finding that “it is likely improbable that Respondent did not know about Complainant’s WHATSAPP trademark at the time it registered the Disputed Domain Name considering the worldwide renown it has acquired amongst mobile applications, and the impressive number of users it has gathered since the launch of the WhatsApp services in 2009”.) Supporting the inference that Respondent knew of Complainants’ trademark rights, Respondent registered a Domain Name that was virtually identical to a company with Complainant’s corporate group and used contact information of a former member of the Rothschild family and Complainant’s current corporate address.
There is also substantial authority that registration of a domain name that is confusingly similar to a well-known trademark by any entity that has no relationship to that mark, is itself sufficient evidence of bad faith use. See Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael,WIPO Case No. D2009-0942 (“the Panel concurs with previous WIPO UDRP decisions holding that registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements”), citing, Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Pepsico, Inc. v. “null,” aka Alexander Zhavoronkov,WIPO Case No. D2002-0562; Pepsico, Inc. v. Domain Admin,WIPO Case No. D2006-0435. Moreover, redirecting a confusingly similar domain name to a complainant’s official website has been found to be bad faith use of a disputed domain name. MARLINK SAS v. Stephen Okonkwo,WIPO Case No. D2017-1356.
The fact that the Domain Name was not used in connection with a competing website does not obviate a finding of bad faith. In fact, section 3.1.4 of the WIPO Overview 3.0 indicates that redirecting a disputed domain name to a complainant’s website is evidence to support a finding that a respondent has registered a disputed domain name to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark. A respondent redirecting a domain name to a complainant’s website can establish bad faith insofar as the respondent retains control over the redirection, thus creating a real or implied ongoing threat to the complainant.
Complainant’s ROTHSCHILD marks a distinctive, strong and widely known throughout the world. Complainant asserts that Respondent likely registered the Domain Names to send fraudulent email messages, including those that contain spam or phishing attempts. Keeping control over the redirection of a confusingly similar Domain Name that could easily be used in such manner could constitute a disruption of Complainant’s business and also establishes bad faith registration and use pursuant to paragraph 4(b)(iii) of the Policy. Securitas AB v. Whois Privacy Protection Service, Inc. / A. H.,WIPO Case No. D2013-0117 (Finding bad faith based upon the similarity of the disputed domain name and the complainant’s mark, the fact that the complainant is a well-known global security company and the fact that the disputed domain name is being used to perpetrate an email scam.) As discussed above, Respondent also used false contact information that it initially concealed. In light of the actions undertaken by Respondent, it is inconceivable that Respondent coincidentally selected the Domain Name without any knowledge of Complainant. See e.g., Arkema France v. Steve Co., Stave Co Ltd.,WIPO Case No. D2017-1632.
For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name 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 Complainant.
John C McElwaine
Sole Panelist
Date: May 13, 2019
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