ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Holding Benjamin et Edmond De Rothschild, Pregny Société Anonyme v. Edmond Rothschild Case No. D2024-4363 1. The Parties The Complainant is Holding Benjamin et Edmond De Rothschild, Pregny Société Anonyme, Switzerland, represented by OX Avocats, France. The Respondent is Edmond Rothschild, United States of America. 2. The Domain Name and Registrar The disputed domain name is registered with eNom, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2024. On October 23, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2024, 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 (Unknown / Whois Agent (057097283), Whois Privacy Protection Service, Inc.) and contact information in the Complaint. The Center sent an email communication to the Complainant on October 30, 2024, 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 October 31, 2024. 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 November 1, 2024. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2024.
page 2 The Center appointed Dietrich Beier as the sole panelist in this matter on November 26, 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 The Complainant is active in the investment business for many decades and was founded initially by Edmond de Rothschild, a member of the well-known family Rothschild active in the banking business for a long time. The complainant is the proprietor of trademark registrations for EDMOND DE ROTHSCHILD, among them the International Registration No. 1046701 in International Classes 35, 36, 38, and 41, registered on June 21, 2010, and being in effect. The disputed domain name was registered on December 28, 2023. The disputed domain name redirects to the original website of the Complainant under “www.edmond-de-rothschild.com”. The Respondent had registered the disputed domain name initially through a privacy shield service. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. The Complainant contends that the EDMOND DE ROTHSCHILD trademark is a well-known trademark. Notably, the Complainant contends that the disputed domain name is confusingly similar to the trademarks of the Complainant which is even stressed by redirecting users to the Complainant’s own website. The Complainant has not authorized the use of its trademarks in the disputed domain name or otherwise. Further, the Respondent has not been commonly known by the disputed domain name and is not making a legitimate noncommercial or fair use of the disputed domain name. The Respondent must have been aware of the Complainant’s rights at the time it registered the disputed domain name, in particular because the disputed domain name reproduces the distinctive elements of the trademarks. Also, there is a risk that the Respondent might in the future use e-mail addresses associated with the disputed domain name. If this is the case, recipients of emails from a “[…]@edmondrothschild.com” email address may be confused into thinking that these emails have been sent by the Edmond de Rothschild group (which is not the case), due to the incorporation of the trademarks in the disputed domain name. This means there is a heightened risk that the disputed domain name could be used to send phishing emails to Edmond de Rothschild group clients or otherwise be used for other fraudulent purposes. B. Respondent The Respondent did not reply to the Complainant’s contentions.
page 3 6. Discussion and Findings A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. The Complainant has shown rights in respect of a trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the trademark is recognizable within the disputed domain name. The only missing element is “de” between the first and the last name which does not prevent a finding of confusing similarity. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The addition of the generic Top-Level Domain (“gTLD”) “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. This is in particular the case since the Complainant did not grant any permission or consent to the Respondent to use its trademark. In other words, the Complainant had not authorised the Respondent to make use of its mark. The Panel notes in this regard that the registrant identified himself in the registration details of the disputed domain name as “Edmond Rothschild”. However, the Respondent has not filed a response and has not shown that it registered the disputed domain name in connection with any non-trademark related meaning of the terms it comprises rather than in reference to the Complainant’s trademark nor that it is commonly known by the name “Edmond Rothschild”. Furthermore, the Respondent is using the disputed domain name to redirect users to the website of the Complainant, which is not a use in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, and supports a finding that such details were chosen specifically to target the Complainant. The Panel therefore finds that the Respondent does not have rights or legitimate interests in the disputed domain name. The Panel finds the second element of the Policy has been established.
page 4 C. Registered and Used in Bad Faith The Respondent must have been aware of the trademark of the Complainant for which the use of the disputed domain name for redirecting users to the Complainant’s website is good evidence. The Respondent’s failure to come forward with any explanation for the registration of the disputed domain name in a response further supports the finding that the Respondent targeted the Complainant. UDRP panels (Ann Summers Limited v. Domains By Proxy, LLC / Mingchun Chen, WIPO Case No. D2018-0625 with further references) have found that a respondent redirecting a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant. The Panel therefore considers the disputed domain name to have been registered and used in bad faith in accordance with paragraph 4(a)(iii) of the Policy. The Panel finds the third element of the Policy has been established. 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. /Dietrich Beier/ Dietrich Beier Sole Panelist Date: December 10, 2024
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