ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION 1979 Family Trust Licensor, LLC and Rockefeller & Co., LLC v. Chris Ordway, The HEFAR Group Case No. D2023-4573 1. The Parties Complainants are 1979 Family Trust Licensor, LLC and Rockefeller & Co., LLC, United States of America ("United States"), represented by Fross Zelnick Lehrman & Zissu, PC, United States. Respondent is Chris Ordway, The HEFAR Group, United States. 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 3, 2023. On November 6, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 6, 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 (Domains by Proxy, LLC,) and contact information in the Complaint. The Center sent an email communication to Complainants on November 9, 2023 providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed the first amended Complaint on November 10, 2023, and the second amended Complaint on November 17, 2023. The Center verified that the Complaint together with the amended Complaints 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 November 20, 2023. In accordance with the Rules, paragraph 5, the due date for Response was December 10, 2023. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 19, 2023. page 2 The Center appointed Colin T. O'Brien as the sole panelist in this matter on January 4, 2024. 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 In 1882, John D. Rockefeller established an office to manage his family's assets, as well as to create and sustain wealth for future generations. The office provided investment management and financial counseling services for the Rockefellers and related organizations. Since 1979, Complainants and their predecessors in interest have expanded these services by offering them to the general public. Complainants registered with the Securities and Exchange Commission as an investment adviser in 1980 and chartered trust companies in New York and Delaware in 1985 and 1997, respectively. The New York Trust Company converted to a national trust bank regulated by the Office of the Comptroller of the Currency in 2009. Complainants own numerous registrations for their ROCKEFELLER trademarks in connection with a variety of goods and services, including Complainants' affiliated firms' wealth planning, investment advisory, asset management, fiduciary, family office and information management services including the following United States registration0F1: - ROCKEFELLER in Classes 35 and 36 Registration Number 3809398, Registered June 29, 2010, First Use December 21, 1979; - ROCKEFELLER & CO in Classes 35 and 36 Registration Number 3414179, Registered April 22, 2008, First Use December 21, 1979; - ROCKEFELLER ASSET MANAGEMENT in Class 36 Registration Number 5558998, Registered September 11, 2018, First Use November 15, 2012. Complainants operate a website at the domain name which extensively uses the ROCKEFELLER marks. Respondent registered the disputed domain name on May 11, 2021, and it redirects visitors to "www.stfwealth.com", the website of STF Wealth Management, a wealth management firm in Phoenix, Arizona. Respondent is the owner of STF Wealth Management. Respondent has also published a book called "Reveal the Rockefeller Within!" in 2009. 5. Parties' Contentions A. Complainants The disputed domain name is confusingly similar to the ROCKEFELLER trademark, merely adding the generic term "wealth" and the ".com" generic Top-Level Domain ("gTLD"). There can be no question that the disputed domain name is confusingly similar to the ROCKEFLLER marks. The disputed domain name incorporates the ROCKEFELLER trademark in its entirety. The addition of descriptive terms, such as "wealth," does not alleviate any confusion between a domain name and a complainant's registered trademark. The addition of the word "wealth" to Complainants' ROCKEFELLER mark is indicative of financial services and does nothing to distinguish the disputed domain name from Complainants' mark. 1 These trademarks have been or are in the process of being transferred from Complainant Rockefeller & Co., LLC (previously known as Rockefeller & Co., Inc.) and assigned to Complainant 1979 Family Trust Licensor, LLC. page 3 The registration of the disputed domain name occurred after Complainants had made extensive use of the ROCKEFELLER marks and after Complainants had obtained registrations for their trademarks in the United States and countries around the world. Given these facts, Respondent clearly was on actual, or at a minimum, constructive notice of Complainants' rights before it adopted this confusingly similar variation of Complainants' ROCKEFELLER marks as its domain name. There appears to be no relationship between Complainants and Respondent that would give rise to any license, permission or authorization by which Respondent could own or use the disputed domain name, which is being used to redirect visitors to a competitor's website. Complainants have never authorized Respondent to use the ROCKEFELLER marks, or any marks confusingly similar thereto, for any purpose, including as a domain name. Respondent cannot demonstrate how its use of the ROCKEFELLER mark in the disputed domain name is for a legitimate commercial purpose. Respondent is clearly not named "Rockefeller." Thus, the adoption and use of the ROCKEFELLER marks by Respondent is itself bad faith use in view of the renown of the ROCKEFELLER marks and absence of likely legitimate use by an unauthorized party like Respondent. Respondent's only use of the disputed domain name is in connection with the redirection to a competing financial services website. Such use demonstrates neither a bona fide offering of goods or services nor a right or legitimate interest. Respondent's use of the confusingly similar variant of the ROCKEFELLER mark in the disputed domain name shows both Respondent's familiarity with the marks and Respondent's recognition of the connection between the marks, and the renown of the marks. Given that Respondent has no connection with Complainants and has never been authorized by Complainants to use or register the disputed domain name, the very fact that Respondent registered the disputed domain name establishes opportunistic bad faith use and registration. The ultimate effect of any use of the disputed domain name will be to cause confusion with complainants, the use and registration of the disputed domain name must be considered to be in bad faith. B. Respondent The Respondent did not reply to the Complainants' contentions. 6. Discussion and Findings A. Identical or Confusingly Similar Complainants have demonstrated they own registered trademark rights in their ROCKEFELLER mark which is globally famous, and is fully incorporated in the disputed domain name. The addition of the term "wealth" does not prevent a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"). Accordingly, the disputed domain name is confusingly similar to a mark in which Complainants have rights. B. Rights or Legitimate Interests Complainants have presented a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name and has not been commonly known by the disputed domain name. The fact that Respondent obtained the disputed domain name decades after Complainants had begun using their globally famous ROCKEFELLER marks indicates that Respondent sought to piggyback on the mark for illegitimate reasons. After a complainant has made a prima facie case, the burden of production shifts to a respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. page 4 Here, Respondent has provided no evidence of any rights or legitimate interests in the disputed domain name. Moreover, the disputed domain name incorporates Complainants' trademark in its entirety, along with the descriptive term "wealth", potentially conveying to unsuspecting Internet users the false belief that any website connected to the disputed domain name is associated with Complainants' wealth management services. Such a risk of implied affiliation cannot constitute fair use. WIPO Overview 3.0, section 2.5.1. In the absence of any evidence rebutting Complainants' prima facie case indicating Respondent's lack of rights or legitimate interests in respect of the disputed domain name, the Panel finds that Complainants have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The disputed domain name was registered years after Complainants first registered and used their ROCKEFELLER mark. The evidence provided by Complainants with respect to the extent of use and global fame of their ROCKEFELLER mark combined with the absence of any evidence provided by Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the disputed domain name was registered, Respondent undoubtedly knew of Complainants' widely-known ROCKEFELLER mark, and knew it had no rights or legitimate interests in the disputed domain name. Moreover, UDRP panels have consistently found that the mere registration of a domain name that is confusingly similar (particularly domain names incorporating the mark plus a descriptive term such as "wealth") to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0. While Respondent did write a book called "Reveal the Rockefeller Within!", the disputed domain name does not resolve to a website advertising or selling this book rather it goes to a website which promotes services of a wealth management company that is directly competing with Complainants. Paragraph 4(b)(iv) of the Policy states that evidence of bad faith may include a respondent's use of a domain name to intentionally attempt to attract, for commercial gain, by creating a likelihood of confusion with the complainant. It is clear to the Panel that is what Respondent is doing with the registration and use of the disputed domain name in this case. Accordingly, 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 be transferred to Complainant Rockefeller & Co., LLC. /Colin T. O'Brien/ Colin T. O'Brien Sole Panelist Date: January 18, 2024
Full & Egal Universal Law Academy