Rockefeller & Co., Inc. v. James McCallum / WORLDS-WISDOM-INC.
Claim Number: FA1701001711132
Complainant is Rockefeller & Co., Inc. (“Complainant”), represented by Todd Martin of Fross Zelnick Lehrman & Zissu, P.C., United States of America. Respondent is James McCallum / WORLDS-WISDOM-INC. (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <rockafellars.us>, <rockafellarswealth.us>, <rockafellarwealth.us>, and <rothschildrockafellar.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 5, 2017; the Forum received payment on January 5, 2017.
On January 6, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <rockafellars.us>, <rockafellarswealth.us>, <rockafellarwealth.us>, and <rothschildrockafellar.us> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On January 9, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 2017 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@rockafellars.us, postmaster@rockafellarswealth.us, postmaster@rockafellarwealth.us, postmaster@rothschildrockafellar.us. Also on January 9, 2017, 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 February 8, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 for usTLD Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant operates in the wealth planning industry, and uses the ROCKEFELLER mark on or in connection with its business. Complainant has registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,809,398, registered June 29, 2010). See Compl., at Attached Ex. D. The domain names are confusingly similar to the ROCKEFELLER mark because, while they each incorporate the “.us” country-code top-level domain (“ccTLD”) suffix, along with a misspelled version of the mark, ROCKAFELLAR, the domains either: add an “s,” add the term “wealth,” and/or the name “Rothschild.”
Respondent has no rights or legitimate interests in <rockafellars.us>, <rockafellarswealth.us>, <rockafellarwealth.us>, and <rothschildrockafellar.us>. There is no evidence that Respondent was ever commonly known by any of the domain names. Further, the domain names all redirect to <scots.tv>, an inactive site, and/or to sell the domain names at a price in excess of out-of-pocket costs.
Respondent registered or used the domain names in bad faith. Respondent’s attempts to sell the domain names in excess of out-of-pocket costs show bad faith under Policy ¶ 4(b)(i). Further, Respondent’s registration of the domain names shows its actual and/or constructive knowledge of the ROCKEFELLER mark and Complainant’s rights in the mark. Further, resolving to inactively held pages is further evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain names, <rockafellars.us>, <rockafellarswealth.us>, <rockafellarwealth.us>, and <rothschildrockafellar.us>, were registered on September 29, 2016.
The Panel finds that the disputed domain names are confusingly similar to Complainant’s valid and subsisting trademark; that the Respondent has not rights or legitimate interests in or to any of the disputed domain names; and that the Respondent has engaged in bad faith use and registration of the disputed domain names.
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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s valid and subsisting trademark, ROCKEFELLER. Complainant has adequately plead its rights and interests in and to that trademark. Respondent arrives at the disputed domain names by appending the ccTLD “.us” to misspellings of the trademark and including generic words such as “wealth.” This is insufficient to distinguish the disputed domain names from Complainant’s trademark.
As such, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademark.
Further, the Panel finds that Respondent has no rights or legitimate interests or to any of the disputed domain names. Respondent is not commonly known by the disputed domain names and has no license or other authority to register the disputed domain names. Neither the WHOIS information nor any other evidence in the record indicates that Respondent is commonly known by the disputed domain names.
Respondent apparently is not making a bona fide offering of goods or services via the domain names, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(ii) and (iv), respectively. Instead, the disputed domain names purportedly redirect to <scots.tv>, an inactive site, and/or to sell the domain names at a price in excess of out-of-pocket costs. Resolution to an inactive site cannot confer rights or legitimate interests.
As such, the Panel finds that Respondent has no rights or legitimate interests in or to any of the disputed domain names.
Finally, the Panel finds that Respondent registered and used the domain names in bad faith. Complainant contends that Respondent’s attempts to sell the domain names in excess of out-of-pocket costs show bad faith under Policy ¶ 4(b)(i). General offers to sell a domain name constitute evidence of bad faith. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (FORUM July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Notably, in Exhibit H, the resolving website shows “SAVE-DOMAIN-NAMES-SALE,” “DOMAINS-SALE-DIVISION,” and “PRICE IS RIGHT.” As these solicitations seem to show an intent by Respondent to sell the disputed domain names to Internet users for an amount in excess of out-of-pockets costs, the Panel finds that Respondent has engaged in bad faith use and registration under Policy ¶ 4(b)(i).
The Panel also finds that, given the fame of Complainant’s mark and the totality of the circumstances, Respondent’s registration of the domain names shows its actual knowledge of the ROCKEFELLER mark and Complainant’s prior rights in the mark. Complainant appropriately points out that the ROCKEFELLER mark is famous and that the domains are “so obviously connected with Complainant’s famous mark.” As such, the Panel concludes that Respondent had actual knowledge of Complaint’s mark and its rights in and to this trademark prior to creating the disputed domain names and, therefore, the domain names in dispute were registered and used in bad faith under Policy ¶ 4(a)(iii).
As such, the Panel finds that the disputed domain names were registered and used in bad faith.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <rockafellars.us>, <rockafellarswealth.us>, <rockafellarwealth.us>, and <rothschildrockafellar.us> domain names transferred from the Respondent to the Complainant.
Kenneth L. Port, Panelist
Dated: February 9, 2017
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