The Complainant is Holding Benjamin et Edmond De Rothschild, Pregny Société Anonyme, Switzerland, represented by OX Avocats, France.
The Respondent is Gibey Anne, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 30, 2021. On May 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 4, 2021, 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 the Complainant on May 5, 2021 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 May 5, 2021. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on May 5, 2021. 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 May 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2021. The Center appointed Jonas Gulliksson as the sole panelist in this matter on June 9, 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 Complainant is the proprietor of several trademarks consisting of or containing the wording “Edmond De Rothschild”, including the following trademarks: - French trademark EDMOND DE ROTHSCHILD registered on December 29, 2009 under the number 3701735 for services in classes 35, 36, 38, and 41; and - The international trademark EDMOND DE ROTHSCHILD registered on June 21, 2010, under the number 1046701, for services in classes 35, 36, 38, and 41. The Domain Name was registered on February 18, 2021. At the time of rendering this decision, the Domain Name fails to resolve to an active website. 5. Parties’ Contentions A. Complainant The Complainant alleges the following: The Complainant created, in 1953, “Compagnie Financiere”, an investment company which became an international banking group under the name “LCF Rothschild”, today renamed “Edmond De Rothschild”. The Complainant’s grandfather, also named Edmond de Rothschild, was a shareholder of the “Rothschild Freres” bank. The family’s banking tradition, which has resulted in the creation, financing, and running of numerous companies in the banking and asset management fields around the world, has contributed to the reputation of the Rothschild name and in particular, Edmond de Rothschild. Further, “Edmond De Rothschild Asset Management (UK) Limited” is the name of a United Kingdom company belonging to the Complainant’s group, incorporated under number 02144903 on July 6, 1987. It appears clearly, when comparing the Domain Name to the Complainant’s trademarks that they are confusingly similar, if not mainly identical. The only letters added to the domain name compared to the Complainant’s trademarks are “am”, which, as mentioned on the website formerly hosted on the Domain Name, correspond to the initials of “Asset Management”. The Respondent has no rights nor legitimate interests in respect of the Domain Name. No fair use of the Domain Name has been noticed by the Complainant in connection with a bona fide offering of goods or services. In addition, no third party other than the Complainant, the companies of its group or other licensees, has been commonly known by the Domain Name, which also corresponds to the personal name of Edmond de Rothschild. Finally, no legitimate noncommercial or fair use of such Domain Name can be claimed. The Domain Name has been registered and used in bad faith by the Respondent. The website formerly hosted on the Domain Name introduced a so-called company named “Edmond De Rothschild Asset Management”, which is the same company name as the abovementioned Complainant’s subsidiary. Said company seems to provide financial planning and investment management services, which are strictly identical to those covered by the Complainant’s trademarks. The aforementioned shows without a doubt that the Respondent registered the Domain Name in order to intentionally attempt to attract for commercial gain Internet users to its website by creating an obvious likelihood of confusion with the Complainant’s trademarks and services as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and its services. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The burden for the Complainant under paragraph 4(a) of the Policy is to prove: (i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has clearly established that it is the proprietor of at least two trademark registrations for EDMOND DE ROTHSCHILD, which were registered several years before the registration of the Domain Name. The Domain Name incorporates EDMOND DE ROTHSCHILD in its entirety while adding the letters “am”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, where the relevant trademark is recognizable within the 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. Therefore, the letters “am” in the Domain Name does not prevent a finding of confusing similarity. Further, it is well established that “.com”, as a generic Top-Level Domain suffix, is disregarded in the assessment of the similarity between the Domain Name and the Complainant’s mark (see section 1.11.1 of the WIPO Overview 3.0). Considering what has been stated above, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademarks. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, a complainant must first make out a prima facie case showing that the respondent lacks rights or legitimate interests in respect of a disputed domain name and then the burden of production, in effect, shifts to the respondent to come forward with evidence of its rights or legitimate interests (see section 2.1 of the WIPO Overview 3.0). In the present case, the Respondent failed to submit a Response. The Domain Name consists of the Complainant’s mark in its entirety, with the addition of the letters “am”, which could be reasonably interpreted to refer to “asset management” (a term descriptive of the services offered by the Complainant and incorporated into the company name of the Complainant’s United Kingdom-based subsidiary, as mentioned above). Accordingly, the nature of the domain name is such that it carries a high risk of implied affiliation, which cannot constitute fair use. Considering all of the evidence presented in this matter and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the Domain Name, the Panel concludes that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant. C. Registered and Used in Bad Faith The Complainant’s trademarks were registered several years before the Domain Name. The Complainant’s trademarks contain an inherent degree of distinctiveness that strongly suggest that the Respondent must have been aware of the Complainant’s trademarks when registering the Domain Name. The Domain Name incorporates EDMOND DE ROTHSCHILD in its entirety while adding the letters “am”. The combination of EDMOND DE ROTHSCHILD and the letters “am” strongly suggests that the addition of “am” is a reference to the service “asset management”. The service “asset management” is a service that is of the same nature as the services covered by the Complainant’s trademark registrations. This fact and what has otherwise been stated above, supports the Complainant’s statement that the Respondent registered the Domain Name in order to intentionally attempt to attract, for commercial gain, Internet users to its website by creating an obvious likelihood of confusion with the Complainant’s trademarks and services as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and its services. The Complainant’s has alleged that the website formerly hosted on the Domain Name introduced a company named “Edmond De Rothschild Asset Management”. While this would be clear bad faith, no evidence supporting such a statement has been presented in this matter by the Complainant. The Panel notes that the Domain Name currently resolves to a blank website. Non-use of a Domain Name does not necessarily prevent a finding of bad faith under the doctrine of passive holding (section 3.3 of the WIPO Overview 3.0). Considering what has been stated above regarding the Complainant’s trademarks distinctiveness and the knowledge that the Respondent must have had of the Complainant’s trademarks, the Panel finds that the third UDRP element is fulfilled. 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 Jonas Gulliksson
Sole Panelist
Date: June 23, 2021
Full & Egal Universal Law Academy