The Complainant is N. M. Rothschild & Sons Limited, United Kingdom, represented by DLA Piper US LLP, United States of America (“United States”).
The Respondents are Perfect Privacy, LLC, United States / Joshua Bowman (a/k/a Joshua Bowman Rothschild, a/k/a Joshua Jermaine Bowman, a/k/a Joshua Terrance Bowman), United States, and Michael Manos (a/k/a Michael Bowman Rothschild, a/k/a Michael A. Rothschild, a/k/a M. Niklaus Rothschild, a/k/a Michael Medici, a/k/a Michael Morgan), United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2019. On December 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 30, 2019, the Registrar transmitted by email to the Center its verification response: (a) it is the Registrar for the disputed domain name; (b) disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint and, in particular, that the disputed domain name is registered to one “Michael Rothschild” with an address in Phoenix, Arizona in the United States; (c) the registrant registered the disputed domain name on January 29, 2019; (d) the language of the registration agreement is English; (e) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name. On January 8, 2020, following a further request from the Center, the Registrar confirmed that its principal domicile was in Jacksonville, Florida in the United States. The Center sent an email communication to the Complainant on January 10, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 17, 2020. 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 the Respondent of the Complaint, and the proceedings commenced on January 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 10, 2020. The Center appointed Warwick A. Rothnie as the sole panelist in this matter on February 14, 2020. 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 a member of the Rothschild group, ultimately controlled by members of the Rothschild family. The Rothschild group carries on financial services business throughout the world, including in the United States. One member of the group, Rothschild & Co US Inc. is registered with the Financial Industry Regulatory Authority in the United States where it provides a full range of corporate finance, financial advisory and general investment banking services. Another member of the group, Rothschild & Co Asset Management US Inc. provides asset management services in the United States. In the United States, another member of the group owns registered trademarks: (a) No. 3,447,667, ROTHSCHILD for a wide range of relevant services in International Classes 35 and 36. This trademark was registered on June 17, 2008 and claims that it was first used in commerce in the United States in 1982; and (b) No. 5,614,371, ROTHSCHILD & CO, also for a wide range of relevant services in International Classes 35 and 36. This trademark was registered on November 27, 2018 and claims that it was first used in commerce in the United States in 2016. The two United States members of the Rothschild group mentioned above use these trademarks under license. The Rothschild group provides services and promotes their activities, amongst other things, from a website at “www.rothschildandco.com”. As noted above, the disputed domain name was registered on January 29, 2019. The Complaint includes a print-out of pages from a website to which the disputed domain name resolved in October 2019. It is headed “Rothschild USA” and features what appears to be the Rothschild family crest, or something very close to it. According to the home page, the website is operated by “Rothschild and Co USA”, the world’ largest multilateral lender and the biggest provider of climate finance. Its focus is “Innovative skills and thinking”, “Small businesses”, “Infrastructure” and “Climate and environment”. 5. Discussion and Findings No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates specified by the Registrar in accordance with paragraph 2(a) of the Rules and numerous other physical and electronic addresses potentially associated with the Respondent. Accordingly, the Panel finds that the Respondent has been given a fair opportunity to present his or its case. When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable. Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (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. A. The Respondent Paragraph 1 of the Rules defines the respondent to a complaint under the Policy as the holder of the domain name against which the complaint has been initiated. According to the Registrar, the disputed domain name is held by one Michael Rothschild. As discussed in section 5C below, that appears to be a name used by the third-named Respondent above. B. Identical or Confusingly Similar The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights. There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark. The Complainant has proven the Rothschild group’s ownership of at least the two registered trademarks for ROTHSCHILD and ROTHSCHILD & CO identified in section 4 above. For present purposes, it is sufficient just to refer to the former. This is sufficient for the purposes of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.4.1. The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. e.g. WIPO Overview 3.0, sections 1.7 and 1.11. The disputed domain name differs from the Complainant’s ROTHSCHILD trademark by the addition of the gTLD, “.com” and the descriptor “-usa”. The Complainant’s trademark is wholly contained in the disputed domain name and is clearly and unambiguously recognizable. The addition of the hyphen and the geographical element do not avoid a finding of confusing similarity. See WIPO Overview 3.0, section 1.8. Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. C. Rights or Legitimate Interests The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name: (i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or (ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or (iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name. The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1. The Complaint alleges that “Michael Rothschild” is one of many aliases used by one Michael Manos who, the Complaint alleges, has numerous convictions in the past for offences including kidnapping, robbery and theft. The Complaint also alleges that this person has operated as a “‘celebrity’ scam artist”. The Complainant makes similar allegations of criminal history against the second-named Respondent under various names. The second-named Respondent appears to have a LinkedIn page under the name Joshua Bowman-Rothschild which, amongst other things, boasts he is “Wanted by the police in 4 states”. This page also includes a number of endorsements by “Michael Rothschild”. The Complainant states that neither the Michael Rothschild identified by the Registrar as the registrant of the disputed domain name, nor the second-named Respondent, is a member of the Rothschild family. Neither has any association with or license from the Rothschild family or the Rothschild group to use the name “Rothschild”. The adoption by both of names ending in Rothschild appears to have been very recent, certainly long after the Rothschild group. Neither of the third-named Respondent nor the second-named Respondent have denied the allegations made in the Complaint against them. In any event, the disputed domain name resolves to a website which purports to be the website of Rothschild & Co in the United States. On the basis of the undisputed allegations in the Complaint, that representation is false. Attempting falsely to pass off the website as a business associated with the Complainant and the Rothschild group does not constitute carrying on business in good faith under the Policy. Accordingly, the Complainant has established at least a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. That prima facie case is unrebutted. Therefore, the Panel finds the Complainant has established the second requirement under the Policy also. D. Registered and Used in Bad Faith Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470. Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant. The nature of the website to which the disputed domain name resolves, as described above, leaves no doubt that the Respondent is well and truly aware of the Complainant and the Rothschild group. As the disputed domain name began resolving to that website shortly after the disputed domain name was registered, it appears more than likely that the disputed domain name was registered for the purpose of using it in connection with an unauthorized website of the kind described. In these circumstances, therefore, the Panel has no hesitation in finding that the disputed domain name has been registered and used it in bad faith. Accordingly, the Complainant has established all three requirements under the Policy. 6. 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 Warwick A. Rothnie
Sole Panelist
Date: February 25, 2020
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