N. M. Rothschild & Sons Limited v. Robert De Rothschild / RothschildGroup
Claim Number: FA2209002010912
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rothschild.com.de>, registered with NameCheap, Inc..
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.
Darryl C. Wilson, as Panelist.
Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated.
Complainant submitted a Complaint to Forum electronically on September 6, 2022; Forum received payment on September 6, 2022.
On September 7, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <rothschild.com.de> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 September 12, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 3, 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.com.de. Also on September 12, 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, Forum transmitted to the parties a Notification of Respondent Default.
On October 10, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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, 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). Respondent’s <rothschild.com.de> domain name is identical or confusingly similar to Complainant’s mark because it incorporates the ROTHSCHILD mark in its entirety while adding the “.com” generic top-level domain (“gTLD”) along with the “.de” country code top-level domain (“ccTLD”).
Respondent has no rights nor legitimate interests in the <rothschild.com.de> domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized nor licensed Respondent to use 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, Respondent creates a sense of affiliation with Complainant.
Respondent registered or uses the <rothschild.com.de> domain name in bad faith. Respondent registered the disputed domain name in order to attract users for commercial gain while creating a likelihood of confusion. Additionally, Respondent may be engaging in phishing. Furthermore, Respondent had actual and/or constructive knowledge of Complainant’s rights in the ROTHSCHILD mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is N. M. Rothschild & Sons Limited (“Complainant”), of London, United Kingdom. Complainant is the owner of domestic and global registrations for the marks ROTHSCHILD and ROTHSCHILDS & CO which it has used continuously since at least as early as 2007 in connection with its provision of insurance, real estate, financial, and monetary products and services. Complainant does business internationally in real space and cyberspace conducting the latter principally at its web location <rothschildandco.com>.
Respondent is Robert De Rothschild / RothschildGroup (“Respondent”), of Bavaria, Germany. Respondent’s registrar’s address is listed as Phoenix, AZ, USA. The Panel notes that the <rothschild.com.de> domain name was registered on or about August 6, 2021.
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 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 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”).
Complainant claims rights in the ROTHSCHILD mark through its registration of the mark with the “USPTO (e.g., Reg. No. 3,447,667 registered March 26, 2007). Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). The Panel here finds that Complainant has rights in the mark under Policy 4(a)(i).
Complainant contends Respondent’s <rothschild.com.de> domain name is identical or confusingly similar to Complainant’s ROTHSCHILD mark. The addition of a gTLD and a ccTLD fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”); see also CloudFlare, Inc. v. [Registrant], FA 1624251 (Forum Aug. 1, 2015) (holding, “The inclusion of a ccTLD does not alleviate the similarity between a mark and a disputed domain name as per Policy ¶ 4(a)(i).”). Here, the disputed domain name incorporates the ROTHSCHILD mark in its entirety while adding the “.com” gTLD along with the “.de” ccTLD. The Panel here finds that Respondent’s domain name is identical and/or confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
Rights or Legitimate Interests
The Panel notes 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 here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent does not have rights or legitimate interests in the <rothschild.com.de> domain name because Respondent is not licensed or authorized to use Complainant’s ROTHSCHILD mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See PragmaticPlay Limited v. Robert Chris, FA2102001932464 (Forum Mar. 23, 2021) (“The WHOIS information of record lists the registrant as “Robert Chris,” and no other information of record suggests Respondent is commonly known by the domain name. Furthermore, where a domain name’s WHOIS shows a name or organization identical to the disputed domain name, past panels have still failed to find Respondent is commonly known as the disputed domain name where no further evidence was provided to affirm so. See Moneytree, Inc. v. Matt Sims / MoneyTreeNow, FA1501001602721 (Forum Mar. 3, 2015) (finding that even though the respondent had listed “Matt Sims” of “MoneyTreeNow” as registrant of the <moneytreenow.com> domain name, the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii), because he had failed to list any additional affirmative evidence beyond the WHOIS information). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Here the WHOIS information identifies Respondent as “Robert de Rothschild.” No other information is available nor evidence provided to refute Complainant’s assertions that Respondent lacks rights or legitimate interest in the disputed domain name. The Panel here finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant contends Respondent is not using the <rothschild.com.de> domain name for any bona fide offering of goods and services or legitimate noncommercial or fair use because Respondent attempts to create a false sense of affiliation with Complainant and its mark. Under Policy ¶¶ 4(c)(i) and (iii), creating a false sense of affiliation with a Complainant is not a bona fide offering of goods and services or legitimate noncommercial or fair use. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Complainant claims Respondent is using the disputed domain name’s resolving website to create a false sense of affiliation; however, Complainant fails to provide a copy of the domain name’s resolving website. Based on the identical nature of the domain name and Complainant’s mark, along with a lack of response or any evidence to controvert Complainant’s assertions, the Panel here finds Respondent is not using the disputed domain name for any bona fide offering of goods and services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant contends Respondent registered or uses the <rothschild.com.de> domain name in bad faith by attracting users for commercial gain and creating a likelihood of user confusion. Under Policy ¶ 4(b)(iv), attracting users for commercial gain and creating confusion is evidence of bad faith registration or use. See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). The Panel again notes Complainant’s unrefuted contentions that Respondent is creating a false sense of affiliation with Complainant for commercial gain by using a domain name identical to Complainant’s mark. The Panel here finds Panel Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant contends that in light of the fame and notoriety of Complainant’s marks, it is inconceivable that Respondent could have registered the <rothschild.com.de> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that constructive knowledge is inapplicable in these proceedings, however, a finding of actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name 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). Complainant asserts that its ROTHSCHILD mark is well-known and has a good reputation. The Panel here finds that the totality of circumstances supports a finding that Respondent had actual knowledge of Complainant’s rights in the mark. Respondent’s domain name is identical to Complainant’s mark, and Complainant’s mark is related to goods and services distributed globally, with a particular emphasis in the country designated by Respondent’s selected domain name country code. There is also no indication that the disputed domain name resolves to an active website at this time. Such inactivity can also support a finding of bad faith by a respondent. The Panel here finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the CDRP Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <rothschild.com.de> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 24, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page