Complainant is N. M. Rothschild & Sons Limited, United Kingdom, represented by Freshfields, Bruckhaus, Deringer, United Kingdom.
Respondent is WhoisGuard, Inc., Panama / Rondo Smith, France. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2019. On October 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, 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 October 24, 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 October 29, 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 November 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 26, 2019. The Center appointed Marina Perraki as the sole panelist in this matter on December 2, 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 Per Complaint, Complainant and its group, the Rothschild & Co group, is a market leader in financial services worldwide, operating for over 200 years. It provides M&A, strategy and financing advice, as well as investment and wealth management services to large institutions, individuals and governments. Complainant’s group has invested substantial sums of money in developing and marketing its services under the ROTHSCHILD brand. The group’s official website operates at “www.rothschildandco.com”. Complainant owns several trademark registrations throughout the world for the ROTHSCHILD and ROTHSCHILD & CO marks, including: - European Union Trade Mark registration No. 000206458 for ROTHSCHILD (word), filed on April 1, 1996, and registered on October 8, 1998, for goods and services in International classes 14, 35, 36; and - Australian trademark registration No. 1688365 for ROTHSCHILD & CO (word), filed on April 20, 2015, and registered on November 18, 2015, for services in International class 36. Complainant’s group owns the domain name The Domain Name was registered on November 29, 2018, and does not resolve to an active web page. 5. Parties’ Contentions A. Complainant Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (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. A. Identical or Confusingly Similar The Domain Name incorporates Complainant’s trademark ROTHSCHILD in its entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525). The additional letters “andco” do not avoid a finding of confusing similarity, as Complainant’s trademark is recognizable within the Domain Name, whereas the said letters coincide with the pronunciation of the abbreviation “& CO” of Complainant’s ROTHSCHILD & CO marks (see Accenture Global Services Limited v. Jean Jacque / Luck Loic,WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin,WIPO Case No. D2015-0135 and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8). The inversion of the letters “i” and “l” in the “rothschlidandco” portion of the Domain Name is disregarded, as it is not readily noticeable. Furthermore, such replacement is an obvious or intentional misspelling of Complainant’s trademark ROTHSCHILD which further supports the finding of confusing similarity to such trademark (Sanofi, Genzyme Corporation v. Domain Privacy,WIPO Case No. D2016-1193; WIPO Overview 3.0, section 1.9). The generic Top-Level Domain (“gTLD”) “.com” is also disregarded, as gTLDs typically do not form part of the comparison on the grounds that they are required for technical reasons (see Rexel Developpements SAS v. Zhan Yequn,WIPO Case No. D2017-0275; Hay & Robertson International Licensing AG v. C. J. Lovik,WIPO Case No. D2002-0122). The Panel finds that the Domain Name is confusingly similar to the ROTHSCHILD and ROTHSCHILD & CO marks of Complainant. Complainant has established Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, 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 concludes that Respondent lacks rights or legitimate interests in respect of the Domain Name. Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Name. As per Complaint, Respondent was not authorized to register the Domain Name. Respondent did not demonstrate, prior to the notice of the dispute, any use of the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. On the contrary, as Complainant demonstrates, the Domain Name employs a minor misspelling (inversion of the letters “i” and “l”) which signals an intention on the part of Respondent to confuse users seeking or expecting Complainant (Edmunds.com, Inc. v. Digi Real Estate Foundation,WIPO Case No. D2006-1043). Furthermore, as Complainant has demonstrated, the Domain Name leads to an inactive website. Lastly, the Domain Name, per Complainant, was initially registered with a privacy shield service. The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Name. Complainant has established Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, are evidence of the registration and use of the Domain Name in bad faith: (i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or (ii) that 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 Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel concludes that Respondent has registered and used the Domain Name in bad faith. As per Complaint, Complainant’s ROTHSCHILD trademark is well known. Furthermore ROTHSCHILD is a natural entity’s surname and therefore highly distinctive. Because the ROTHSCHILD and ROTHSCHILD & CO marks had been widely used and registered at the time of the Domain Name registration by Respondent, the Panel finds it more likely than not that Respondent had Complainant’s mark in mind when registering the Domain Name (Tudor Games, Inc. v. Domain Hostmaster, Customer ID No. 09382953107339 dba Whois Privacy Services Pty Ltd / Domain Administrator, Vertical Axis Inc.,WIPO Case No. D2014-1754; Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net,WIPO Case No. D2000-0226). Respondent should have known about Complainant’s rights, due to the fact that Complainant’s mark had significant goodwill and reputation when the Domain Name was registered. Furthermore, such knowledge is readily obtainable through a simple browser search due to Complainant’s use of ROTHSCHILD and ROTHSCHILD & CO marks on the Internet (“www.rothschildandco.com”) (Caesars World, Inc. v. Forum LLC,WIPO Case No. D2005-0517; Compart AG v. Compart.com / Vertical Axis Inc.,WIPO Case No. D2009-0462). Respondent could have searched the European Union Intellectual Property Office’s registry and would have found Complainant’s prior registration in respect of ROTHSCHILD (Citrix Online LLC v. Ramalinga Reddy Sanikommu Venkata,WIPO Case No. D2012-1338). Furthermore, the Domain Name incorporates in whole Complainant’s mark with the non-discernible inversion of the letters “i” and “l”, plus the additional letters “andco” which correspond to the “& CO” portion of the ROTHSCHILD & CO marks of Complainant and is also practically identical ( Lastly, as Complainant has demonstrated, the Domain Name was registered with a privacy shield service to hide the holder’s identity. As regards bad faith use, Complainant demonstrated that the disputed Domain Name leads to an inactive website. The non-use of a domain name would not prevent a finding of bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003;WIPO Overview 3.0, section 3.3). The Panel considers the following factors: (i) the reputation of Complainant’s mark, which has been repeatedly recognized (in, inter alia, N.M. Rothschild & Sons Limited v. Super Privacy Service LTD c/o Dynadot / Rothschild Fintrade Co. Ltd.,WIPO Case No. D2018-2036; N. M. Rothschild & Sons Limited v. Domain Administrator, PrivacyGuardian.org / Albert Rothschild,WIPO Case No. D2019-0517), (ii) the failure of Respondent to submit a response, (iii) the concealment of the Domain Name holder’s identity through use of a privacy shield, and (iv) the implausibility of any good faith use to which the Domain Name may conceivably be put, given that as Complainant has demonstrated, the corresponding website is inactive. Under these circumstances and on this record, the Panel finds no good-faith basis for Respondent’s conduct vis-à-vis the Domain Name. Complainant has established Policy paragraph 4(a)(iii). 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 Marina Perraki
Sole Panelist
Date: December 16, 2019
Full & Egal Universal Law Academy