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 Respondent is Imran Younas, Rockefeller Managment DWC LLC, United Arab Emirates.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 19, 2021. On July 20, 2021, the Center transmitted by email to AE Domain Administration (.aeDA) a request for registrar verification in connection with the disputed domain name. On July 25, 2021, .aeDA transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the UAE Domain Name Dispute Resolution Policy for – UAE DRP approved by .aeDA (the “Policy”), the Rules for UAE Domain Name Dispute Resolution Policy – UAE DRP (the “Rules”), and the Supplemental Rules for UAE Domain Name Dispute Resolution Policy – UAE DRP (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 10, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was August 30, 2021. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on September 1, 2021. On the same date, the Respondent sent an email to the Center.
The Center appointed Adam Taylor as panelists in this matter on September 13, 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 BackgroundThe Complainants are part of the Rockefeller group of companies, which have offered a range of financial services to the public since 1979. The Complainants are collectively referred to below as “the Complainant” unless it is necessary to refer to them separately.
The Complainant owns many registered trade marks for ROCKEFELLER including United states trade mark no. 3809398, filed on June 2, 2009, registered on June 29, 2010, in classes 35 and 36.
The disputed domain name was registered on December 14, 2020.
As of July 19, 2021, the disputed domain name was used for a website headed “Rockefeller Ventures”, which offered venture capital and asset management services.
5. Parties’ Contentions A. ComplainantThe following is a summary of the Complainant’s contentions.
As a result of decades of use, substantial investment in promoting its services, and a high volume of wealth managed by the Complainant, the Complainant has acquired exclusive rights in the famous “Rockefeller” name and marks.
The disputed domain name is confusingly similar to the Complainant’s trade mark, merely adding the word “ventures”. Addition of the term enhances the likelihood off confusion given the Complainant’s involvement in a range of business ventures.
The Respondent lacks rights or legitimate interests in respect of the disputed domain name.
The Complainant has not granted any licence entitling the Respondent to own or use the disputed domain name.
The Complainant has been unable to verify that “Rockefeller Management [sic] DWC LLC” is an active business entity.
The disputed domain name is being used for a website promoting commercial business ventures that compete directly with the Complainant.
Internet users are likely to be confused into thinking that the Respondent’s website is related to or approved by the Complainant.
The disputed domain name was registered or is being used in bad faith.
The Complainant’s marks long predate registration of the disputed domain name. The Respondent clearly registered and used the disputed domain name to capitalise on the Complainant’s fame.
B. RespondentThe Respondent did not reply to the Complainant’s contentions. The Respondent emailed the Center in response to the Center’s notification of default on September 2, 2021, claiming amongst other things to have “legally registered this domain by using our business license”.
6. Discussion and FindingsUnder the Policy, the Complainant is required to prove on the balance of probabilities that:
- the disputed domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name has been registered or is being used in bad faith.
The principles governing the question of whether a complaint may be brought by multiple complainants are set out in section 4.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”)1.
The Panel is satisfied that (a) the Complainants, which are part of a group of companies, have a specific common grievance against the Respondent and that the Respondent has engaged in common conduct that has affected the Complainants in similar fashion and (b) it would be equitable and procedurally efficient to permit the consolidation.
B. Identical or Confusingly SimilarThe Complainant has established rights in the term “Rockefeller” by virtue of its registered trade marks as well as unregistered trade mark rights deriving from the extensive and longstanding use of that name.
Section 1.8 of WIPO Overview 3.0 makes clear that, where the relevant trade mark is recognisable within the disputed domain name, the addition of other terms, whether descriptive or otherwise, would not prevent a finding of confusing similarity under the first element.
Here, the Complainant’s distinctive trade mark is readily recognisable within the disputed domain name and, accordingly, the addition of the term “ventures” does not prevent a finding of confusing similarity.
The Panel therefore finds that the Complainant has established the first element of paragraph 6(a) of the Policy.
C. Rights or Legitimate InterestsAs explained in section 2.1 of WIPO Overview 3.0, the consensus view is that, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If not, the complainant is deemed to have satisfied the second element.
Here, the Complainant has not licensed or otherwise authorised the Respondent to use its trade mark.
Paragraph 6(c) of the Policy gives examples of circumstances which, if proved, suffice to demonstrate that a respondent possesses rights or legitimate interests.
As to paragraph 6(c)(i) of the Policy, the Panel has concluded below that the Respondent has used the disputed domain name to intentionally attempt to attract, confuse and profit from Internet users seeking the Complainant’s products and services. Such use of the disputed domain name could not be said to be bona fide.
Paragraph 6(c)(ii) of the Policy does not avail the Respondent in the circumstances of this case whereby it deliberately adopted a name designed to target the Complainant’s rights.
Nor is there any evidence that paragraphs 6(c)(iii) of the Policy applies in the circumstances of this case.
The Panel finds that the Complainant has established a prima facie case of lack of rights or legitimate interests, which the Respondent’s email of September 2, 2021 does not rebut.
The Panel therefore finds that the Complainant has established the second element of paragraph 6(a) of the Policy.
D. Registered or is Being Used in Bad FaithIn the Panel’s view, it is obvious that the Respondent was aware of the Complainant when it registered the disputed domain name, which reflects the Complainant’s famous and highly distinctive name and trade mark.
The Respondent has used the disputed domain name for a website offering services similar to those of the Complainant.
The Panel also notes that the Respondent has not denied the Complainant’s allegations, including that the Respondent is connected with a defendant who was ordered by a court in New York to transfer the domain name
The Panel concludes from the foregoing that the Respondent has registered and used the disputed domain name in bad faith in accordance with paragraph 6(b)(iv) of the Policy. The Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trade mark.
The Panel therefore finds that the Complainant has established the third element of paragraph 6(a) of the Policy.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 6(i) of the Policy and 15 of the Rules, the Panel orders that the domain name
Adam Taylor
Panelist
Date: October 4, 2021
1 Although WIPO Overview 3.0 is directed to the Uniform Domain Name Dispute Resolution Policy (“UDRP”), given the similarity between the UDRP and the Policy, it is appropriate to have regard to these principles except to the extent that the Policy diverges from the UDRP.