The Complainant is N. M. Rothschild & Sons Limited, United Kingdom, represented by Freshfields Bruckhaus Deringer, United Kingdom.
The Respondent is Kevin Sweeney, Kevin Sweeney Design, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2020. On May 18, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 19, 2020, 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 the Complainant on May 28, 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 June 1, 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 June 5, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 25, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2020. The Center appointed Cherise Valles as the sole panelist in this matter on July 28, 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 and its group, the Rothschild & Co group, provides financial services on a worldwide basis. The Rothschild & Co group has been a leading provider of financial services for over 200 years. In particular, it provides M&A, strategy and financing advice as well as investment and wealth management solutions to large institutions, families, individuals, and governments. The Complainant and its affiliated entities in the Rothschild & Co group provide services under various names containing the term “Rothschild”, and have established substantial goodwill and reputation in names containing these terms. The Complainant and its affiliates own a number of trademarks in jurisdictions around the world for the term “Rothschild”, including the following: - Malaysian trademark No. 97019070 for ROTHSCHILD, registered on August 5, 2004, in class 36; - Malaysian trademark No. 97019717 for ROTHSCHILD, registered on June 19, 2001, in class 35; - Malaysian trademark No. 93006001 for ROTHSCHILD, registered on August 9, 2001, in class 16; and, - United States trademark No. 77140244 for ROTHSCHILD, registered on June 17, 2008, in classes 35 and 36. The Complainant and its affiliates also own and operate numerous domain names incorporating the term “Rothschild”, including Where a ROTHSCHILD trademark or domain name is owned by an affiliate of the Complainant, there are intra-group arrangements in place through which the Complainant is licensed to make use of the trademarks and/or domain names. The disputed domain name was registered on February 20, 2019. It resolves to a website for “Rothschild Financial”, which purports to be a business operating from a head office in Malaysia with offices in the United Arabic Emirates and the United States of America, which offers financial services (the “Website”). No official record of this firm’s existence in Malaysia has been verified. In any event if it did exist, “Rothschild Financial” has been flagged by the Securities Commission of Malaysia (SCM) on the list of unauthorized websites as carrying out regulated activities without a licence. In addition, the United Kingdom Financial Conduct Authority (FCA) has issued a public notice stating that “Rothschild Financial” is a “clone firm” not authorized by the FCA. Both the SCM and FCA notices explicitly refer to the disputed domain name. 5. Parties’ Contentions A. Complainant The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that: The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. - The disputed domain name is confusingly similar to the Complainant’s registered ROTHSCHILD trademarks, in light of the fact that it wholly incorporates the Complainant’s mark. The Respondent lacks rights or legitimate interests in the disputed domain name. - The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks. The disputed domain name has been registered and is being used in bad faith. - The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use. The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements: (i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the domain name; and (iii) the domain name was registered and is being used in bad faith. The Complainant has the burden of proof in establishing each of these elements. The Respondent has failed to file a Response in this proceeding. The Panel may draw appropriate inferences from the available evidence submitted by the Complainant. A. Identical or Confusingly Similar To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark. The Complainant and its affiliates are the sole and exclusive owners of multiple registrations worldwide (including in Malaysia, where the Respondent purports to base its business) for the term “rothschild”, as indicated in Section 4 above. Trademarks incorporating the term “rothschild” are well-known in connection with the Complainant’s Rothschild & Co group. The Complainant asserts that it has invested substantial sums of money in developing and marketing its services under, and in protecting its rights in, such trademarks. Previous UDRP panels have recognized that the Complainant has established rights in the term ROTHSCHILD, such that domain names incorporating this term were ordered to be transferred to the Complainant. See, e.g., N.M. Rothschild & Sons Limited v. Corporate Internet Design Limited and Michael Decker,WIPO Case No. D2001-0854; and N.M. Rothschild & Sons Limited, Baron Philippe de Rothschild SA, Société Civile de Château Lafite Rothschild v. Land Exchange, Inc.,WIPO Case No. D2006-1140. The disputed domain name incorporates the Complainant’s ROTHSCHILD trademark in its entirety, followed by the term “-financial”. As stated in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. Previous UDRP panels have held that the generic Top-Level Domain (“gTLD”) “.com” is not to be taken into account when assessing whether a domain name is identical or confusingly similar to a trademark. In the light of the foregoing, the Panel finds that the disputed domain name Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent): “[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (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.” The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b). Previous UDRP panels have established that in order to shift the burden of production to the respondent, it is sufficient for the complainant to make a prima facie showing that the respondent has no rights or legitimate interests in the disputed domain name. Noting the facts and allegations mentioned above, the Panel finds that the Complainant has satisfied this burden. In the absence of a Response or assertion that any such right or legitimate interest exists, this must lead to a presumption that the Respondent is unable to show that such a right or legitimate interest exists. To the best of the Complainant’s knowledge, the Respondent is not commonly known under the disputed domain name. The term “rothschild” is not descriptive in any way and to the best of the Complainant’s knowledge, the Respondent does not make use of a business name, which includes the term “rothschild” nor has the Respondent registered any trademarks incorporating this term. Moreover, there has never been any relationship between the Complainant and the Respondent. The Respondent is not licensed, or otherwise authorized, be it directly or indirectly, to register or use the Complainant’s trademarks in any manner whatsoever, including in, or as part of, the disputed domain name. There is no evidence that the Respondent is using, or has made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods and services. Given the actual use being made of the Website, as set out in Section 4 above, the Complainant has reason to believe that the disputed domain name is being used to facilitate fraud. This is supported by the official notices from the SCM and FCA referenced above. The Respondent appears to have put up a page on the Website entitled “Fraud Alert”, claiming that “legal agents” are challenging the FCA’s “false claim”. The Complainant has not identified any record of such a challenge. Nothing on the “Fraud Alert” page suggests that the Respondent has rights or legitimate interests in the disputed domain name. Furthermore, the content on the Website suggests that the disputed domain name is not related to an actual authorized business and that it therefore appears that both the SCM and the FCA’s notices regarding the Respondent’s unauthorized scam tactics are justified. For instance, there are significant factual discrepancies and errors on the Website regarding the date of establishment of the “Rothschild Financial” business, its trading name, its privacy policy and the biographical information of its employees. Given the Respondent’s use of the Website, the Panel concludes that the Respondent chose to register a domain name that is confusingly similar to the Complainant’s ROTHSCHILD mark in order to knowingly and intentionally confuse Internet users who arrive at the Website by seeking to cause them to believe such website is the Complainant’s website, or is associated with the Complainant’s website, in order to commit fraud. Previous UDRP panels have held that the use of a domain name for illegal activity (including fraudulent or phishing activities) can never confer rights or legitimate interests on a respondent. In addition, the Complainant has been a provider of financial services for over 200 years. The majority of the Complainant’s and its affiliates’ ROTHSCHILD trademarks have been registered for services in classes related to financial services. The term “financial” is therefore likely to be interpreted by Internet users as a reference to the Complainant’s primary business activities in the financial sector. Section 2.5.1 of the WIPO Overview 3.0 states that even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. The likelihood of confusion of Internet users is increased by the Respondent’s use of the disputed domain name to resolve to a website purporting to offer financial services, as set out in Section 4 above. The financial services industry is one in which the Complainant has substantial goodwill and reputation, and use of the disputed domain name in the context of this industry is likely to cause Internet users to believe there is a connection between the disputed domain name and the Complainant. In light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; (ii) the 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 the respondent has engaged in a pattern of such conduct; (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location. The Complainant’s rights in the ROTHSCHILD trademarks predate the Respondent’s registration of the disputed domain name. The Panel concludes that the Respondent must have been aware of the Complainant’s rights at the time it registered the disputed domain name, in particular because the disputed domain name contains the ROTHSCHILD trademark. Previous UDRP panels have held that the Complainant’s ROTHSCHILD trademark is distinctive in the sector of banking and financial services. It has been in use for 200 years to distinguish the Complainant’s services from those of other financial institutions. It is therefore likely that the Respondent will have been aware of the marks, given the financial services being offered through the Website. Furthermore, the Respondent must be aware of the Complainant’s group’s ROTHSCHILD trademarks, given that the FCA notice is specifically referenced on the Website. UDRP panels have found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel concludes that the disputed domain name has been registered and is being used in bad faith, since the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the Website by creating a likelihood of confusion with the Complainant’s group’s trademarks as to the source, sponsorship, affiliation or endorsement of the Website. The disputed domain name is confusingly similar to the Complainant’s ROTHSCHILD trademarks, and Internet users who access the Website are therefore likely to be misled into believing that the Website and/or the disputed domain name are affiliated to, endorsed by, or otherwise connected to, the Complainant and/or its group. The FCA reached the same conclusion, and in its notice referenced above it described the Website as a “clone of authorized firm”, which the FCA describes as a situation where “[f]raudsters are using the details of firms [the FCA authorizes] to try to convince people that they work for a genuine, authorized firm” (i.e. the Rothschild & Co group). Previous UDRP panels have found that where a domain name appears to be used to perpetuate fraudulent activity, this constitutes evidence of bad faith. See, e.g., Ferring BV v. Name Redacted,WIPO Case No. D2019-0559. Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) 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 Cherise Valles
Sole Panelist
Date: August 11, 2020
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