Complainant is N. M. Rothschild & Sons Limited, United Kingdom, represented by DLA Piper US LLP, United States of America (“United States” or “USA”).
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Domain Accounts, 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 May 28, 2020. On May 29, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 29, 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 Complainant on June 5, 2020 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 June 11, 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 Respondent of the Complaint, and the proceedings commenced on June 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 2, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 21, 2020. The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on July 30, 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 Complainant is N. M. Rothschild & Sons Limited, a company, which is part of the group The Rothschild & Co, controlled by members of the well-known throughout the United States and the world. In the United States, Complainant’s affiliated and world-famous Rothschild Family. Complainant is a company that conducts financial services businesses entity Rothschild & Co US Inc. is registered with the Financial Industry Regulatory Authority (FINRA) as a broker-dealer, and provides a full range of corporate finance, financial, advisory, and general investment banking service. In addition, Complainant’s affiliated Rothschild & Co Asset Management US Inc. provides asset management services, including managed funds, to institutional clients, pension funds and high net worth individuals and families. Both entities, acting pursuant to licenses, have made extensive use of the mark ROTHSCHILD. Seeking adequate protection for the sign ROTHSCHILD, Complainant and its affiliated entities have registered many trademarks before the United States Patent and Trademark Office (“USPTO”) containing the referred sign in order to protect its investments and rights over the financial services that the company provides, for example: Trademark Owner Registration No. Registration Date International Class ROTHSCHILD Rothschild & Co 3,447,667 June 17, 2008 35, 36 ROTHSCHILD &CO Rothschild & Co Continuation 5,614,371 November 27, 35, 36 “Five Arrows Device”(figurative mark) Rothschild & Co Continuation 5,090,183 November 29, 35, 36 At last, it is important to note that the disputed domain name Complainant submits that the disputed domain name is confusingly similar to its registered trademark ROTHSCHILD. This is because the disputed domain name incorporates the mark ROTHSCHILD in its entirety with the addition of generic terms “stock” and “investment”, which makes explicit reference to Complainant’s business. Therefore, the disputed domain name will likely be associated with the mentioned trademark regardless the existence of other terms. In this regard, Complainant argues that the addition of generic terms, such as “stock” and “investment”, does not materially differentiate it from the ROTHSCHILD trademark. On the contrary, the insertion of these terms to the disputed domain name exacerbates confusion, once they are commonly associate with Rothschild & Co group and their services provided under the trademark ROTHSCHILD. Complainant affirms, thus, that the consumers when visiting the website hosted by the disputed domain name will reasonably believe that it is associated or affiliated with the Rothschild & Co group. However, Respondent is not sponsored by or affiliated with Complainant, nor is licensed, authorized, or otherwise permitted to use its registered ROTHSCHILD trademark. Complainant also claims that Respondent displays the distinctive “Five Arrows Device” on the issued website in the same way it appears in Complainant’s website: next to the company’s name on the upper-left hand corner of a banner that appears as each page’s header. Considering this scenario, Complainant believes that the similarities mentioned hereto are persuading its consumers to wrongly believe that the website under the disputed domain name has any association with Rothschild & Co group, which is not true, fulfilling paragraph 4(a)(i) of the Policy and paragraph 3(b)(viii), (b)(ix)(1) of the Rules. Furthermore, Complainant affirms that Respondent does not have any rights or legitimate interests in respect of ROTHSCHILD trademark, since it is has no prior right to ROTHSCHILD sign and is not commonly known by the disputed domain name. Complainant also alleges that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. On the contrary, Respondent would be showing a clear intent to usurp the goodwill amassed by the ROTHSCHILD trademark and obtain an unfair commercial gain by misleading Complainant’s consumers. Complainant mentions that a respondent can make a bona fide offering of goods or services and thus have a legitimate interest in the disputed domain name only if certain requirements are met. However, in this case, Respondent would not have complied with those requirements. Therefore, paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules would also be fulfilled. Moreover, Complainant affirms that the term “Rothschild” is a non-descriptive term, making a direct reference to the Rothschild Family and its historical influence in the financial segment. This means that the term is not used in any other circumstance in the financial segment but to make reference to the business founded by the family. This way, there is no legitimate interest of the Respondent in the disputed domain name other than to intentionally cause a misleading association with Complainant. ln conclusion, Complainant alleges that Respondent intentionally attempts to attract, for commercial gain, consumers to its website, by creating a likelihood of confusion with Complainant and its ROTHSCHILD trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy. Thus, Complainant sustains that paragraph 4(a)(iii) and 4(b) of the Policy and paragraph 3(b)(ix)(3) of the Rules would have been fulfilled. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings To succeed, in a UDRP complaint, complainants must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as 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. The burden of proving these elements is upon Complainant. Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the Complaint, the Panel’s decision shall be based upon the Complaint. A. Identical or Confusingly Similar Complainant showed that it and its affiliated entities own several trademark registrations in the United States for the sign ROTHSCHILD and that its influence in the financial segment with regard to Rothschild Family’s history predate the registration of the disputed domain name by the Respondent. The Panel finds that, in the present case, the disputed domain name not only incorporates the entirety of Complainant’s trademark, but it is also followed by the terms “stock” and “investment” which do not prevent a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.7 and 1.8. Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark and that the requirements of the first element of paragraph 4(a) of the Policy are satisfied. B. Rights or Legitimate Interests The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview 3.0 as follows: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” In this case, noting the facts and contentions listed above, the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not replied to Complainant’s contentions, that burden has not been discharged, and the Panel has considered Complainant’s prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that Respondent’s use of the disputed domain name incorporating Complainant’s trademark with the addition of the terms “stock” and “investment” does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. In that regard, the use of the disputed domain name is not a fair use as it falsely suggests affiliation with Complainant, noting also the composition of the disputed domain name incorporating Complainant’s trademark with the terms “stock” and “investment”. See WIPO Overview 3.0, section 2.5. Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.” Firstly, the Panel finds that it is highly unlikely that Respondent had no knowledge of Complainant’s rights to the trademark ROTHSCHILD at the time of registration of the disputed domain name, especially because: (i) Respondent uses without authorization in its website not only the trademark ROTHSCHILD, but also Complainant’s distinctive “Five Arrows Device”; (ii) Complainant’s trademark ROTHSCHILD was registered in at least 2008, while the disputed domain name was registered by Respondent only in 2019; and, (iii) the term ROTHSCHILD is not used in any other circumstance in the financial segment but to make reference to the famous Rothschild Family. It is therefore clear that Respondent was aware of Complainant’s business and had the intention of making a misleading association with Complainant when registering the disputed domain name. The evidence also shows that Respondent was attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its services. For the Panel, it is clear that Respondent, has attempted to attract Complainant’s clients to its website for commercial gain by using the distinctive and well-known mark ROTHSCHILD as the distinctive part of its disputed domain name. Furthermore, the addition of the terms “stock” and “investment” exacerbates potential Internet user confusion as these terms are commonly associated with Complainant and its services provided under the ROTHSCHILD trademark. Lastly, the Panel notes that, in conjunction with all of the abovementioned, the fact that Respondent did not present a reasonable response to the Complaint reinforces the conclusion that Respondent acted in bad faith. Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy. As such, the Panel finds that Complainant has satisfied 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 Gabriel F. Leonardos
(word mark)
Continuation
Holdings AG
(word mark)
Holdings AG
2018
Holdings AG
2016
Sole Panelist
Date: August 13, 2020
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