The Complainants are Rockefeller & Co. LLC and 1979 Family Trust Licensor, LLC, United States of America (“United States”), represented by Fross Zelnick Lehrman & Zissu, PC, United States.
The Respondents are António Daniel Serrão Brochado Pereira Coutinho, Portugal; Cnd - International Microbiology Descontamination Lda, Portugal; Rockefeller-Consulting Lda, Portugal; and Rockefeller Investments, United States. 2. The Domain Names and Registrars
The disputed domain names The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2021. On April 6, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On April 6, 2021, Tucows Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name The Center sent an email communication to the Complainants on April 16, 2021 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainants to submit an amendment to the Complaint. On April 16, 2021, the Center also communicated to the Parties the language of the Registration Agreements of three disputed domain names disclosed by the Registrar is Portuguese. The Complainants filed an amended Complaint on April 21, 2021 and requested the language of the proceedings to be English. The Respondents did not comment on the language of the proceeding. 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”). On April 27, 2021 the Center sent an email communication to the Complainants, confirming that there appeared to be prima facie grounds sufficient to warrant accepting the Complaint for the Panel’s final determination of the consolidation request on appointment. In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on April 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 17, 2021. The Respondents sent on April 16, 2021; April 27, 2021 and May 31, 2021 what appear to be automated responses in English to communications sent by the Center but did not submit any formal response. Accordingly, the Center notified the Respondents’ default on May 31, 2021. The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on June 4, 2021. 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 Complainants, created by the family of John D. Rockefeller (1839-1937), offer wealth planning, investment management, investment advice, trust services, family office services and information management to individuals, families and institutions, currently holding billions of dollars’ worth of assets under advisement. They are the owners of trademark registrations for ROCKEFELLER in more than 50 countries (Exhibits J and K to the Amended Complaint), amongst which are the following trademark registrations: - European Union Trademark Registration No. 014959514 for the word mark ROCKEFELLER, registered on April 29, 2016, in international classes 35 and 36; - United States Trademark Registration No. 3809398 for the word mark ROCKEFELLER registered on June 29, 2010, claiming first use in commerce on December 21, 1979 in international classes 35 and 36; - United States Trademark Registration No. 3414179 for the word mark ROCKEFELLER & CO. registered on April 22, 2008, claiming first use in commerce on December 21, 1979 in international classes 35 and 36; - United States Trademark Registration No. 5558998 for the word mark ROCKEFELLER ASSET MANAGEMENT registered on September 11, 2018, claiming first use in commerce on November 15, 2012 in international class 36; and - United States Trademark Registration No. 6110809 for the word mark ROCKEFELLER CAPITAL MANAGEMENT registered on July 28, 2020, claiming first use in commerce on March 2018 in international classes 35 and 36. The disputed domain names are the following and are presently used in connection with: Disputed domain name Registration Date Registrant Use February 5, 2021 António Daniel Serrão Brochado Pereira Coutinho No active webpage April 27, 2020 Rockefeller-Consulting Lda No active webpage February 5, 2021 Cnd - International Microbiology Descontamination Lda Active webpage May 3, 2020 Rockefeller Investments No active webpage 5. Parties’ Contentions A. Complainants The Complainants affirm that Rockefeller is one of the most prominent families and names in the United States, having John D. Rockefeller made one of the world’s largest private fortunes in the late 19th and early 20th centuries. Also according to the Complainants, in 1882, John D. Rockefeller established an office to manage his family’s assets, providing management and financial counselling for the Rockefellers and related organizations, having, as of 1979 the Complainants expanded these services by offering them to the general public. Presently, the Complainants assert to have billions of dollars’ worth of assets under advisement, having the ROCKEFELLER trademark become of significant value, as a result of decades of use and substantial investment in promoting its services and a high volume of wealth managed by the Complainants, in addition to the acclaim and renown associated with the Rockefeller family name. According to the Complainants, all of the disputed domain names are in fact held by António Daniel Serrão Brochado Pereira Coutinho, a Portuguese business man who falsely claims to have a business relationship with the Complainants and the Rockefeller family (Exhibit L to the Amended Complaint), stating at one of his LinkedIn profiles that he began his duties in the Rockefeller group in 1987 (Exhibit M to the Amended Complaint), what is not true according to the Complainants. Investigations conducted by the Complainants have further disclosed that the Respondent António Daniel Serrão Brochado Pereira Coutinho’s legal name appears at times as Antonio Jose Fernandes Coutinho and at other times as Antonio Jose Fernandes Brochado Coutinho (Exhibits N and O to the Amended Complaint). Also according to the Complainants, the Furthermore, the Complainants submit that the administrative contacts for the disputed domain names Under the Complainants’ view, the disputed domain names incorporate entirely the ROCKEFELLER trademark, being confusingly similar therewith, not being the addition of the descriptive terms “the”, “holding”, “holdings”, “investments” and/or the “c” letter sufficient to minimize the risk of confusion to Internet users associating them with the Complainants or their trademarks. Regarding the absence of the Respondents’ rights or legitimate interests, the Complainants argue that: i. the Respondents have no apparent relationship that would give rise to any license, permission or other right by which the Respondents could own or use any domain name incorporating or confusingly similar to the ROCKEFELLER trademark, having the Respondent António Daniel Serrão Brochado Pereira Coutinho falsified a claim to have worked with the Rockefeller family, adopting the Rockefeller name without any legal or other legitimate basis; ii. the mere admiration of famous business family name like the Rockefeller or a globally renowned business such as the Complainants cannot establish a legitimate interest on the disputed domain names; iii. the use made of one of the disputed domain names in connection with a website that promotes the Respondents’ commercial business venture that competes directly with the Complainants does not characterize a bona fide offering of goods or services under the Policy; and vi. the disputed domain names have not been and could never be put to legitimate use by the Respondents. As to the registration and use of the disputed domain names the Complainants state that: i. given that the Respondents have no connection with the Complainants or any of the Complainants’ member companies, any use of their ROCKEFELLER trademarks is evidence of bad faith; ii. given the widespread recognition of the ROCKEFELLER trademark, the Respondents clearly adopted the Rockefeller name to capitalize on the Complainants’ stellar reputation and thus the Respondents’ bad faith may be presumed; iii. the Respondents’ use of the Rockefeller name is based on the false assertion that the Respondent António Daniel Serrão Brochado Pereira Coutinho and his family have worked with members of the Rockefeller family in the past, not being the Complainants aware of any such business relationship between the Respondent António Daniel Serrão Brochado Pereira Coutinho and any member of the Rockefeller family or the Complainants; and iv. the use made of the disputed domain name seeks to cause confusion and trade off the fame of the Complainants and the Rockefeller family. Lastly, the Complainants request that English be the language of this proceeding, in spite of three of the 4 disputed domain names Registration Agreements being in the Portuguese language given that the disputed domain name themselves contain terms in the English language (“the”, “holding”, “holdings” and “investments”) and the Respondent António Daniel Serrão Brochado Pereira Coutinho is fluent in this language and can be seen from the activities conducted at one of the disputed domain names and his profiles on social networks. B. Respondent The Respondents did not formally reply to the Complainants’ contentions. The Respondents sent on April 16, 2021; April 27, 2021 and May 31, 2021 what appear to be automated responses in English to communications sent by the Center, but did not submit any formal response. 6. Discussion and Findings Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for this Panel to order the transfer of the disputed domain names to the Complainants: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and (ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and (iii) the disputed domain names have been registered and are being used in bad faith. The Complainants must prove in this administrative proceeding that each of the aforesaid three elements is present in order to obtain the transfer of the disputed domain names. Before turning to these questions, however, the Panel needs to address the procedural issues of the consolidation of multiple Respondents and of the language of the proceedings. A. Request for consolidation The Complainants have requested the consolidation of the four disputed domain names in this proceeding arguing that they are under common control. Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) establishes that “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.” All of the aforementioned criteria are present in this case in relation to the disputed domain names The same link however is not entirely made between the Respondent António Daniel Serrão Brochado Pereira Coutinho and the This Panel is satisfied, in view of the evidence submitted and on balance that the disputed domain names In accordance with paragraph 11 of the Rules, the Panel has the authority to determine the language of proceedings. Considering the circumstances of this case and the fact that the Respondent did not formally reply to any of the communications sent by the Center, both in English and in Portuguese, this Panel does not consider it prejudicial to the Respondent if English were adopted as the language of the proceeding, especially in view of the fact that the Respondent uses English in his social network profiles and interactions (Exhibit M to the Amended Complaint). The proceeding would be unduly delayed if the Complaint had to be translated into Portuguese. Accordingly, the Panel accepts the Complainants’ request for English to be the language of this proceeding. C. Identical or Confusingly Similar The Complainants have established rights over the ROCKEFELLER trademark. The disputed domain names, according to the chart below all incorporate the trademark with the addition of either a letter or dictionary terms: Disputed domain name Additional element “c” “holding” “the” and “holdings” Given that “the relevant trademark is recognizable” within the disputed domain names” such additional terms do not avoid a finding of confusing similarity under the Policy, as recognized by the WIPO Overview 3.0, section 1.8. For the reasons above, the Panel finds that the disputed domain names are confusingly similar to the Complainants’ trademark. D. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights or legitimate interests in the disputed domain names. These circumstances are: i. before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names 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 names, in spite of not having acquired trademark or service mark rights; or iii. the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names. This entitles the Panel to draw any inferences from such default as it considers appropriate, pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden of proof is still on the Complainants to make at least a prima facie case against the Respondent under the second UDRP element. In that sense, there is no evidence that the Respondent has been granted permission to register the disputed domain names nor to display the Complainants’ trademarks on the websites associated with the disputed domain names, not being the Respondent a licensee of the Complainants, nor having the Respondent received any consent, express or implied to do so, nor there being any connection or affiliation between the Parties. Furthermore, and also according to the evidence submitted, the Panel concurs with the Complainants assertion that the Respondent falsified a claim to have worked with the Rockefeller family, adopting the Rockefeller name without any legal or other legitimate basis, thus making the use made of one of the disputed domain names in connection with a website that promotes the Respondent’s commercial business venture that competes directly with the Complainants not a bona fide offering of goods or services under the Policy. Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain names. E. Registered and Used in Bad Faith The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in respect of a disputed domain name, where a respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. In this case, both the registration and use of one of the disputed domain names in bad faith can be found pursuant to Policy paragraph 4(b)(iv) in view of the Respondent’s false claim to have worked with the Complainants’ group seeking to create a false impression of affiliation with the Complainants. In the case of the other two disputed domain names, non-use of a domain name does not prevent a finding of bad faith under the doctrine of passive holding. See section 3.3 of the WIPO Overview 3.0. Other factors corroborate a finding of bad faith: a. the Respondent reproduced the Complainants’ well-known Rockefeller Center pictures in posts in one of his social network profiles (Exhibit P to the Amended Complaint); b. the absence of any formal response to the Complaint, failing thereby to invoke any circumstance which could demonstrate good faith in the registration or use of the disputed domain names; and c. the indication of what appear to be false addresses not being the Center able to fully deliver communications to them. For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain names. 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 names Wilson Pinheiro Jabur
Sole Panelist
Date: June 18, 2021
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