WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

N. M. Rothschild & Sons Limited v. Domains By Proxy, LLC and Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2019-2066

1. The Parties

The Complainant is N. M. Rothschild & Sons Limited, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Freshfields Bruckhaus Deringer, United Kingdom.

The Respondents are Domains By Proxy, LLC,United States of America (“United States”) and Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <rothchildandco.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2019. On August 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 26, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 27, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 30, 2019.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on September 9, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2019. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on October 8, 2019.

The Center appointed Andrew F. Christie as the sole panelist in this matter on October 16, 2019. 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 Background

The Complainant is a company incorporated in England and Wales on January 1, 1968. It is a member of the Rothschild & Co group of companies. The Rothschild & Co group has been a worldwide provider of financial services for over two hundred years. It provides M&A, strategy and financing advice, as well as investment and wealth management solutions to large institutions, families, individuals and governments. The Rothschild & Co group provides its services under names containing “Rothschild & Co” and “Rothschild”.

The Complainant and affiliated entities are the registered owners of a large number of registrations for the word trademarks ROTHSCHILD (dating from at least as early as 1982) and ROTHSCHILD & CO (dating from at least as early as 2015). The majority of these registrations are for services in Class 36 (insurance, financial affairs, monetary affairs and real estate affairs). There are arrangements in place through which the Complainant is licensed to use these trademarks where the registrations are held by connected entities. Rothschild & Co Continuation Holdings AG, an entity affiliated to the Complainant, is the registrant of the domain name <rothschildandco.com>, amongst others.

The disputed domain name was registered on March 18, 2019. A screenshot (undated, but stated to be as of August 20, 2019) provided by the Complainant shows that the disputed domain name resolved to a website displaying a number links (labelled “Related Links”), including to “Chateau Lafite Rothschild” (a renowned wine producer that has been owned by members of the Rothschild family since the 19th century), “Achat Vin” (French for “Purchase Wine”), “Outerwear” and “Girls Nearby”, amongst others.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to trademarks in which it has rights because it incorporates both the ROTHSCHILD and ROTHSCHILD & CO trademarks in their entirety, except for the omission of the letter “s”, which is not aurally or visually significant. There is therefore a real risk that Internet users will believe that there is a connection between the disputed domain name and the Complainant’s group.

The Complainant contends that the Respondents have no rights or legitimate interests in the disputed domain name because: (i) there is no relationship between the Respondents and the Complainant; (ii) “Rothschild” is not a descriptive term; (iii) the Complainant has not licensed or otherwise permitted the Respondents to use the “Rothschild” name or the ROTHSCHILD and ROTHSCHILD & CO trademarks, or to register a domain name incorporating any of them; (iv) so far as the Complainant is aware, the Respondents are not customers of the Complainant or vice versa; (v) the Complainant has not found any evidence that the Respondents have been commonly known by the disputed domain name; (vi) the Respondents are not currently using, and have not used, or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services, as it resolves to a website containing pay-per-click links; (vii) the Respondents are intentionally exploiting the Complainant’s reputation and goodwill in the ROTHSCHILD and ROTHSCHILD & CO trademarks to confuse Internet users into visiting the website resolving from the disputed domain name and, from that Internet traffic, to derive financial gain from the sponsored links displayed on that website; and (viii) the Respondents are not making any legitimate noncommercial or fair use of the disputed domain name as their motives for registering it were commercial, and it is clear that the disputed domain name has been registered to impersonate, or suggest endorsement by, the Complainant which is not fair use.

The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the Respondents are intentionally attempting to attract, for commercial gain, Internet users to the website resolving from the disputed domain name, and/or other online locations, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of that website and/or other online locations; (ii) the Respondents must have been aware of the Complainant’s rights at the time they registered the disputed domain name because it contains the extremely well-known ROTHSCHILD and ROTHSCHILD & CO trademarks; (iii) as the disputed domain name is confusingly similar to the well-known ROTHSCHILD and ROTHSCHILD & CO trademarks, and Internet users who access it are likely to be misled into believing that it is affiliated to, endorsed by, or otherwise connected to, the Complainant, the mere registration of it indicates bad faith on the part of the Respondents; (iv) the Respondents are using the disputed domain name to attract users to a website that displays pay-per-click advertisements, from which the Complainant assumes the Respondents are generating financial income; (v) the disputed domain name is virtually identical to the domain name for the Complainant’s website “www.rothschildandco.com”, thereby creating a real risk that Internet users seeking the Complainant’s website could inadvertently visit the website resolving from the disputed domain name; and (vi) the disputed domain name has been registered using a domain privacy service to obfuscate the identity of the true registrant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The disputed domain name incorporates the whole of the Complainant’s registered word trademark ROTHSCHILD minus the letter “s”, and the whole of the Complainant’s word trademark ROTHSCHILD & CO minus the letter “s” and with the ampersand symbol “&” replaced with the string “and”. The distinctive element of the disputed domain name is the string “rothchild”. Both visually and aurally, this string is almost identical to the Complainant’s word trademark ROTHSCHILD. The addition of the string “and co” and the generic Top-Level Domain (“gTLD”) identifier “.com” (which can be ignored in this case) does not avoid the confusing similarity between the disputed domain name and the Complainant’s ROTHSCHILD trademark, and sustains the confusing similarity between the disputed domain name and the Complainant’s ROTHSCHILD & CO trademark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondents are not a licensee of, or otherwise affiliated with, the Complainant, and have not been authorized by the Complainant to use its registered trademarks. The Respondents have not provided any evidence that they have been commonly known by, or have made a bona fide use of, the disputed domain name, or that they have, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a website containing a number links (labelled “Related Links”), two of which contain the name “Rothschild”, whilst others are unrelated to the Complainant and its financial services business. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, the Panel finds that the Respondents have no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The disputed domain name was registered many years after the Complainant first registered its ROTHSCHILD and ROTHSCHILD & CO trademarks. The evidence on the record provided by the Complainant with respect to the use of its ROTHSCHILD and ROTHSCHILD & CO trademarks, combined with the absence of any evidence provided by the Respondents to the contrary, is sufficient to satisfy the Panel that, at the time of registration of the disputed domain name, the Respondents knew of the Complainant’s trademarks and knew that they had no rights or legitimate interests in the disputed domain name. Furthermore, the evidence on the record provided by the Complainant with respect to the Respondents’ use of the disputed domain name indicates that the Respondents have used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <rothchildandco.com> be transferred to the Complainant.

Andrew F. Christie
Sole Panelist
Date: October 30, 2019