ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Holding Benjamin et Edmond de Rothschild, Pregny Société Anonyme v. Patrick Shamblin, Billion.LLC Case No. D2023-3342 1. The Parties The Complainant is Holding Benjamin et Edmond de Rothschild, Pregny Société Anonyme, Switzerland, represented by OX Avocats, France. The Respondent is Patrick Shamblin, Billion.LLC, United States of America. 2. The Domain Name and Registrar The disputed domain name is registered with Squarespace Domains II LLC (the "Registrar")1. 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 3, 2023. On August 3, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 2023, 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 (Contact Privacy Inc. Customer 7151571251) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 11, 2023, 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 August 14, 2023. 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"). 1 The Complaint was filed identifying the Registrar as Google LLC. On September 29, 2023, Google LLC confirmed that the disputed domain name is registered with Squarespace Domains II LLC following a purchase agreement. Google LLC has confirmed both Registrars' compliance with the UDRP and the implementation of the decision by either Registrar. page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 30, 2023. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 25, 2023. The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on October 11, 2023. 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 Edmond de Rothschild group, are related with financial services on a worldwide basis. Edmond de Rothschild is a member of the Rothschild dynasty. The Edmond de Rothschild group has been a provider of financial services for decades. The family's banking tradition of the Complainant and its group has resulted in the creation, financing and running of numerous companies in the banking and asset management fields around the world. The Edmond de Rothschild group provides its services under the Edmond de Rothschild name and has established substantial goodwill and reputation in names and trademarks. The Complainant is the owner of registrations for the trademarks EDMOND DE ROTHSCHILD, including: - The French trademark EDMOND DE ROTHSCHILD, registered on December 29, 2009, under the number 3701735 for services in classes 35, 36, 38 and 41; - 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 Complainant is also the owner of the domain name , registered on November 26, 1996. The disputed domain name was registered on March 3, 2023, and resolves to an inactive website. 5. Parties' Contentions A. Complainant The Complainant argues that the disputed domain name entirely reproduces the Complainant's trademark EDMOND DE ROTHSCHILD, in addition to the term "group". The addition of "group" implies association with the Complainant's business organization and would not prevent a finding of confusing similarity between the disputed domain name and the Complainant's trademark. According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name and there is no evidence that the Respondent has been commonly known by the disputed domain name as an individual, business, or other organization. The Complainant informs that it has not authorized the use of its earlier trademark in the disputed domain name in any manner or form. The Complainant contends that the disputed domain name has been registered and is being used in bad faith. The Complainant mentions that it is impossible that the Respondent did not have the Complainant's trademark EDMOND DE ROTHSCHILD in mind when registering the disputed domain name. page 3 Finally, the Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings As per paragraph 4(a) of the Policy, the Complainant must prove that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. Identical or Confusingly Similar The evidence presented demonstrates that the Complainant is the owner of trademark registrations for EDMOND DE ROTHSCHILD. The Panel finds that the disputed domain name is confusingly similar to the Complainant's registered trademark EDMOND DE ROTHSCHILD, as it fully incorporates the Complainant's trademark. As stated at section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), where the relevant trademark is recognizable within the disputed domain name, the addition of other terms would generally not prevent a finding of confusing similarity. The Panel finds that the addition of the word "group" does not prevent a finding of confusing similarity between the disputed domain name and the Complainant's trademark EDMOND DE ROTHSCHILD. The Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name. While the burden of proof on this element remains with the Complainant, previous UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. See, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c). The Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant's trademark EDMOND DE ROTHSCHILD in a confusingly similar way within the disputed domain name. There is also no indication in the current record that the Respondent is commonly known by the disputed domain name. In the absence of a response, the Respondent has also failed to demonstrate any other nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name. page 4 Finally, the Panel notes that the composition of the disputed domain name carries a significant risk of implied affiliation or endorsement, as stated in section 2.5.1 of the WIPO Overview 3.0. As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith In the Panel's view, the Respondent has registered and is using the disputed domain name in bad faith. The Panel is convinced that the Respondent must have had the Complainant's trademark in mind when registering the disputed domain name. At the date of registration of the disputed domain name, the Complainant's EDMOND DE ROTHSCHILD trademark was already registered, and used for many years. Considering that the disputed domain name incorporates a very distinctive trademark of the Complainant, the Panel has no doubt that the Respondent has registered the disputed domain name to target and mislead Internet users who are searching for official information on the Complainant and its services. With respect to use of the disputed domain name in bad faith, as already indicated before, the disputed domain name has apparently not been linked to an active website yet. Nonetheless, and in line with previous UDRP decisions (e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003) and section 3.3 of the WIPO Overview 3.0, the Panel concludes that the non-use of the disputed domain name in this case does not prevent a finding of bad faith. Applying the passive holding doctrine as summarized in section 3.3 of the WIPO Overview 3.0, the Panel assesses the Complainant's trademark EDMOND DE ROTHSCHILD as sufficiently distinctive for financial services and known in the relevant customer circles, so that the Panel cannot conceive of any plausible and legitimate use of the inherently misleading disputed domain name that would be in good faith, except with an authorization of the Complainant. Furthermore, the Panel accepts that the failure of the Respondent to submit a response to the Complainant's contentions should be considered as an additional indication of bad faith. Taking all circumstances of this case into consideration, the Panel concludes that the disputed domain name has been registered in bad faith and that the passive holding of the disputed domain name constitutes bad faith use by the Respondent. Consequently, the Panel finds that the Complainant has satisfied the third element of the Policy, namely, 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 be transferred to the Complainant. /Mario Soerensen Garcia/ Mario Soerensen Garcia Sole Panelist Date: October 25, 2023
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