Rothschild & Co v. Edmundson Carlyle and Clayton Commercial Real estate holdings llc / gary williams
Claim Number: FA2211002022174
Complainant is Rothschild & Co Continuation Holdings AG (“Complainant”), represented by Ann K. Ford of DLA Piper LLP (US), District of Columbia, USA. Respondent is Edmundson Carlyle and Clayton Commercial Real estate holdings llc / gary williams (“Respondents”), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lasallerothchild.com>, <rothchildcapitalsolutions.org>, <rothchildcapitalsolutions.com> and <rothchildcapitalsolutions.net>, registered with GoDaddy.com, LLC and NameCheap, Inc.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to Forum electronically on November 30, 2022. Forum received payment on November 30, 2022.
On November 30, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the <lasallerothchild.com> domain name is registered with GoDaddy.com, LLC and that Respondent Edmundson Carlyle and Clayton Commercial Real estate holdings llc is the current registrant of the name. Also on November 30, 2022, NameCheap, Inc. confirmed by e-mail to Forum that the <rothchildcapitalsolutions.org>, <rothchildcapitalsolutions.com> and <rothchildcapitalsolutions.net> domain names are registered with NameCheap, Inc. and that Respondent gary williams is the current registrant of the names. GoDaddy.com, LLC and NameCheap, Inc. have verified that Respondents are bound by the GoDaddy.com, LLC and NameCheap, Inc. registration agreements and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 6, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 2022 by which Respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents’ registrations as technical, administrative, and billing contacts, and to postmaster@lasallerothchild.com, postmaster@rothchildcapitalsolutions.org, postmaster@rothchildcapitalsolutions.com and postmaster@rothchildcapitalsolutions.net. Also on December 6, 2022, the Written Notice of the Complaint, notifying Respondents of the e-mail addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents’ registrations as technical, administrative and billing contacts.
Having received no formal response from Respondents, Forum transmitted to the parties a Notification of Respondent Default.
On January 3, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name 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 ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondents.
Complainant requests that the domain names be transferred from Respondents to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder”. Paragraph 1(d) of Forum's Supplemental Rules defines “The Holder of a Domain Name Registration” as “the single person or entity listed in the registration information, as verified by the Registrar, at the time of commencement” and sub-paragraph 1(d)(i) provides that a Complainant wishing to make an argument for a single Respondent having multiple aliases must comply with Supplemental Rules 4(c) and 17(a)(i).
Complainant contends that registrants “Edmundson Carlyle and Clayton Commercial Real estate holdings llc” and “gary williams” are the same person based on a prior UDRP proceeding involving Complainant and “Gary Williams / Edmundson Carlyle and Calyton” for the domain name <rothchildcapital.com> which resulted in transfer to Complainant: Rothschild & Co Continuation Holdings AG v. Gary Williams / Edmundson Carlyle & Calyton, FA 2206002001953 (Forum July 28, 2022). The domain names in the current proceeding were registered less than a month after the adverse ruling in that case and were registered on the same day. The content associated with <lasallerothchild.com> was, prior to the filing of the present Complaint, nearly identical to the content of <rothchildcapital.com>.
In the absence of any evidence to the contrary, the above circumstances demonstrate sufficient commonality as between the domain names to satisfy the Panel that they are commonly owned or controlled by a single person who is using multiple aliases. Henceforth this decision will refer to Edmundson Carlyle and Clayton Commercial Real estate holdings llc / gary williams as “Respondent”.
A. Complainant
Complainant, Rothschild & Co Continuation Holdings AG, has been a leading provider of financial services throughout the world for over two hundred years. Complainant has rights in the ROTHSCHILD marks through trademark registrations, including with the United States Patent and Trademark Office (“USPTO”). Respondent’s domain names are confusingly similar to the ROTHSCHILD mark.
Respondent lacks rights or legitimate interests in the domain names, as Complainant is neither affiliated with Respondent nor has Complainant ever authorized Respondent to use the ROTHSCHILD mark. Respondent is not commonly known by any of the domain names and is not making a bona fide use nor a legitimate noncommercial or fair use of them, but instead passes itself off as Complainant, causing confusion as to the affiliation of the domain names.
Respondent registered the domain names in bad faith with actual knowledge of Complainant’s rights in the ROTHSCHILD mark and uses them in bad faith by confusing Internet users and passing itself off as Complainant. Respondent was involved in a prior UDRP proceeding with Complainant that resulted in transfer. Respondent’s mere use of the domain names causes confusion and disruption of Complainant’s business. Respondent also failed to respond to a cease-and-desist letter.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. However, on December 7, 2022, Respondent communicated informally with Forum by e-mail:
“I work for marking [sic] company who registered this email, I have no attachment to this person, I don’t care about this domain.
I can give you the infor of the man who asked me to do this.”
In the view of the Panel, this communication does not affect the outcome of this decision.
Complainant has established all the elements entitling it to relief.
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 and is being used in bad faith.
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 has shown that it has rights in the ROTHSCHILD mark through trademark registrations, including with the USPTO (e.g., Reg. No. 3,447,667, registered on June 17, 2008). The Panel finds each of Respondent’s <lasallerothchild.com>, <rothchildcapitalsolutions.org>, <rothchildcapitalsolutions.com> and <rothchildcapitalsolutions.net> domain names to be confusingly similar to the ROTHSCHILD mark. They all merely delete the letter “s” from the name “Rothschild”, and add descriptive terms, three of which relate to Complainant’s financial services and none of which distinguish the domain names from Complainant’s mark. The inconsequential generic top-level domains “.com”, “.org” and “.net” may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <lasallerothchild.com>, <rothchildcapitalsolutions.org>, <rothchildcapitalsolutions.com> and <rothchildcapitalsolutions.net> domain names were all registered on August 12, 2022, long after Complainant has shown that its ROTHSCHILD mark had become famous worldwide and 15 days after the decision ordering transfer of the domain name <rothchildcapital.com> from the same Respondent to Complainant: Rothschild & Co Continuation Holdings AG v. Gary Williams / Edmundson Carlyle & Calyton, FA 2206002001953 (Forum July 28, 2022).
The <rothchildcapitalsolutions.org>, <rothchildcapitalsolutions.com> and <rothchildcapitalsolutions.net> domain names resolve to a parking page hosted by NameCheap, Inc. for inactive domains. The <lasallerothchild.com> domain name resolves to a website showing contact email addresses of g@LaSalleRothchild.com (Gary Williams), shelton@LaSalleRothchild.com (Gary Shelton), and alan@LaSalleRothchild.com (Alan Shelton) for LaSalle Rothchild Financial Enterprise, LaSalleRoth & Rose Capital Markets of Atlanta LLC, LaSalleRoth & Rose FP Inc, LaSalleRoth Capital Solutions of Illinois LLC, LaSalleRoth Capital Holdings Inc, SaSalleRoth Private Equity, and LaSalleRoth Holdings Inc. Complainant has shown that the Department of State websites for Illinois, Georgia, and North Carolina do not show a registered entity under any of the names listed on Respondent’s website.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <lasallerothchild.com>, <rothchildcapitalsolutions.org>, <rothchildcapitalsolutions.com> and <rothchildcapitalsolutions.net> domain names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain names in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iii) Respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s famous ROTHSCHILD mark when Respondent registered the <lasallerothchild.com>, <rothchildcapitalsolutions.org>, <rothchildcapitalsolutions.com> and <rothchildcapitalsolutions.net> domain names and that Respondent did so primarily for the purpose of disrupting the business of a competitor. Further, that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s <www.lasallerothchild.com> website, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s website and of the services promoted on that website. This demonstrates registration and use in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lasallerothchild.com>, <rothchildcapitalsolutions.org>, <rothchildcapitalsolutions.com> and <rothchildcapitalsolutions.net> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: January 5, 2023.
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