N. M. Rothschild & Sons Limited v. MRG MOSES ROTHSCHILD GRUPPE / Moses Rothschild
Claim Number: FA2207002003549
Complainant is N. M. Rothschild & Sons Limited (“Complainant”), represented by Tochukwu Egenti of Freshfields Bruckhaus Deringer LLP, United Kingdom. Respondent is MRG MOSES ROTHSCHILD GRUPPE / Moses Rothschild (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rothschild.de.com>, registered with Cronon GmbH.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated.
Complainant submitted a Complaint to the Forum electronically on July 10, 2022; the Forum received payment on July 10, 2022.
On July 15, 2022, Cronon Gmbh; Cronon GmbH confirmed by e-mail to the Forum that the <rothschild.de.com> domain name is registered with Cronon GmbH and that Respondent is the current registrant of the name. Cronon GmbH has verified that Respondent is bound by the Cronon GmbH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the “CDRP Policy”).
On July 18, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@rothschild.de.com. Also on July 18, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 15, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the CDRP Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, CDRP Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, N. M. Rothschild & Sons Limited, offers banking and financial services. Complainant has rights in the ROTHSCHILD mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,447,667 registered March 26 2007). See Compl. Annex 2. Respondent’s <rothschild.de.com> domain name is virtually identical and confusingly similar to Complainant’s mark because it incorporates the ROTHSCHILD mark in its entirety and adds the “.de” country code top-level domain (“ccTLD”) and the “.com” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the <rothschild.de.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent any rights in the ROTHSCHILD mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain name resolves a page that displays Complainant’s mark and logo in an attempt to pass off Respondent as affiliated with and endorsed by Complainant.
Respondent registered or uses the <rothschild.de.com> domain name in bad faith. Respondent registered the disputed domain name in order to pass itself off as affiliated with Complainant and divert customers for commercial gain. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the ROTHSCHILD mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United Kingdom company engaged in the banking and financial services industries.
2. Complainant has established its rights in the ROTHSCHILD mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,447,667 registered March 26, 2007).
3. Respondent registered the <rothschild.de.com> domain name on February 6, 2020.
4. Respondent has caused the disputed domain name to resolve to a page that displays Complainant’s mark and logo in an attempt to pass Respondent off as being affiliated with and endorsed by Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon prior UDRP decisions as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it had rights in the ROTHSCHILD mark based upon the registration of the mark with the USPTO (e.g., Reg. No. 3,447,667 registered March 26, 2007). See Compl. Annex 2. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the ROTHSCHILD mark with the USPTO, the Panel finds that the Complainant has rights in the mark under Policy 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s ROTHSCHILD mark. Complainant argues Respondent’s <rothschild.de.com> domain name is identical or confusingly similar to Complainant’s ROTHSCHILD mark. The addition of a gTLD and a ccTLD fails to distinguish sufficiently a disputed domain name from a mark per Policy ¶ 4(a)(i). See Dansko, LLC v. zhang wu, FA 1757745 (Forum Dec. 12, 2017) (finding the <danskoshoes.us.com> domain name to be confusingly similar to the DANSKO mark under Policy ¶ 4(a)(i), despite the addition of the “.us” ccTLD and the “.com” gTLD). Here, the disputed domain name contains the ROTHSCHILD mark in its entirety while adding in the “.de” ccTLD and the “.com” gTLD. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s ROTHSCHILD mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s trademark and to use it in its domain name, adding the “.de” country code top-level domain (“ccTLD”) ;
(b) Respondent registered the disputed domain name on February 6, 2020;
(c) Respondent has caused the disputed domain name to resolve to a web page that displays Complainant’s mark and logo in an attempt to pass Respondent off as affiliated with and endorsed by Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent lacks rights or legitimate interests in the <rothschild.de.com> domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed to Respondent any rights in the ROTHSCHILD mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). In addition, a lack of authorization to use a complainant’s mark may also indicate that a respondent is not commonly known by the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sept. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). The WHOIS information for the disputed domain name lists the registrant as “MRG MOSES ROTHSCHILD GRUPPE /Moses Rothschild”. See Registrar Email Verification. Complainant further submits it has not licensed or otherwise authorized Respondent to use Complainant’s ROTHSCHILD mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as Respondent purports to be affiliated with and endorsed by Complainant through its use of a webpage bearing Complainant’s logo and mark. An attempt by a respondent to pass itself off as an affiliate of the complainant without a factual basis for doing so may support a finding of failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Here, Complainant provides evidence of Respondent’s use of Complainant’s copyrighted logo and mark at the resolving webpage. See Compl. Annex 4. Therefore, the Panel finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered or uses the <rothschild.de.com> domain name in bad faith because Respondent attempts to take advantage of confusion with Complainant’s well-known mark to attract Internet users to its competing website for commercial gain. Use of a domain name that is confusingly similar to a well-known mark can be evidence of a bad faith attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). See also Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Here, Complainant contends that Respondent takes advantage of confusing similarity with Complainant’s famous mark for commercial gain. As the Panel agrees, it finds that Respondent registered or used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent has registered and used the <rothschild.de.com> domain name in bad faith because the disputed domain name incorporates the ROTHSCHILD mark in an attempt to pass Respondent off as Complainant through the use of an inaccurate webpage. Use of a disputed domain name to mislead internet users as to the affiliation of a webpage can be evidence of an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”). As previously noted, Complainant has provided evidence that Respondent utilized Complainant’s logo and mark in an effort to misrepresent the disputed domain name as affiliated with and endorsed by Complainant. See Compl. Annex 4. Therefore, the Panel agrees and finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Thirdly, Complainant contends that in light of the fame and notoriety of Complainant’s ROTHSCHILD mark, it is inconceivable that Respondent could have registered the <rothschild.de.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here notes that arguments of bad faith based on constructive notice are irrelevant, because prior UDRP decisions tend to decline to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). In this case, the Panel notes the notoriety of Complainant’s ROTHSCHILD mark. As the Panel determines Respondent had actual knowledge of Complainant’s rights in the ROTHSCHILD mark, the Panel finds that Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the ROTHSCHILD mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rothschild.de.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC, Panelist
Dated: August 16, 2022
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