WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

N. M. Rothschild & Sons Limited v. Carmelo Marcuccio

Case No. D2020-3317

1. The Parties

The Complainant is N. M. Rothschild & Sons Limited, United Kingdom, represented by Freshfields, Bruckhaus, Deringer, United Kingdom.

The Respondent is Carmelo Marcuccio, Italy.

2. The Domain Name and Registrar

The disputed domain name <rothschildloans-serbia.net> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2020. On December 8, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 8, 2020, 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 December 28, 2020 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 amendment to the Complaint on January 13, 2021.

The Center verified that the Complaint together with the amendment to the 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 Respondent of the Complaint, and the proceedings commenced on January 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 3, 2021. The Respondent contacted the Center on December 30, 2020 and on February 3, 2021, but did not submit any response. Accordingly, the Center notified the Commencement of Panel Appointment on February 18, 2021.

The Center appointed Knud Wallberg as the sole panelist in this matter on March 1, 2021. 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 and its group, the Rothschild & Co group, provides financial services on a worldwide basis. The Rothschild & Co group has been a leading provider of financial services for over 200 years. The Complainant and its affiliated entities in the Rothschild & Co group provide services under various names that all contain the term “Rothschild”, and have established substantial goodwill and reputation in names that contain this term.

The Complainant and its affiliates own a number of trademarks in jurisdictions around the world for trade ROTHSCHILD, including European Union Trademark no. 000206458 filed on April 1, 1996 and registered on October 8, 1998 for goods and services in classes 14, 35 and 36.

The Complainant and its affiliates also own and operate numerous domain names incorporating the trademark ROTHSCHILD, including <rothschildandco.com>.

The disputed domain name was registered on February 1, 2016. At the time when the Complaint was filed the disputed domain name resolved to an active website, which appeared to offer inter alia financial services. The disputed domain name is currently not used for an active website.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s registered ROTHSCHILD trademarks, since it wholly incorporates the Complainant’s mark with the addition of the words “loans-serbia”.

The Complainant further states that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks, nor is the complainant using the disputed domain name in connection with a bona fide offering of goods or services. On the contrary, in addition to the disputed domain name itself, the prominent use of the heading “Rothschildloans-serbia.net” at the top of each page and the reference to services being aimed at entrepreneurs clearly suggests an association with the financial services industry – an industry in which the Complainant has substantial goodwill and reputation.

The Complainant finally asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use. In addition, the Respondent’s use of the disputed domain name is intended to attract Internet users to the website so that the Respondent can either generate revenue by offering loans and other financial services through the website and/or drive traffic to “www.marcuccio.net” if the consumers click on the website’s prominent links to “Other Financial Services” to offer financial services via that website, in each situation thereby causing confusion for commercial gain.

Based on the above arguments, the Complainant requests that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

As mentioned above in section 3 the Respondent did not file a reply to the Complainant’s contentions the Respondent contacted the Center two times during the proceeding.

In an email of December 30, 2020, the Respondent thus informed the Center of the following:

“Good morning
The site was deleted and will go extinct on 1/2/2021
Best regards”

After having received the formal notification of the Complaint from the Center the Respondent sent an email to the Center with the following content:

“Dear sirs
Thank you for the report
I have already communicated that renewal has been inhibited,
So the site is no longer visible.
Thanks so much
Good day”

6. Discussion and Findings

According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:

(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark ROTHSCHILD, since the disputed domain name contains this mark in its entirety together with the words “serbia-loans”. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The generic Top-Level Domain (“gTLD”) “.net” is a standard registration requirement and as such they are generally disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview 3.0.

The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.

B. Rights or Legitimate Interests

It is obvious from the Complaint, that the Complainant has not licensed or otherwise permitted the Respondent to use the trademark ROTHSCHILD.

Further, given the circumstances of this case, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this. Furthermore, the way the Respondent has used the disputed domain name, supports a finding that the Respondent lacks of rights or legitimate interests in the disputed domain name.

Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires the complainant to prove both registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances, which shall be evidence of registration and use in bad faith:

(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the holder’s website or location.

Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain names have been registered and are being used in bad faith.

Given the circumstances of the case, including the evidence on record of the use and worldwide reputation of the Complainant’s trademark ROTHSCHILD and the way the disputed domain name has been used, it is obvious to the Panel in the current circumstances that the Respondent registered the disputed domain names in bad faith.

It is equally obvious to the Panel that the disputed domain name has been used in bad faith in order to intentionally attempt “to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website”. The fact that the disputed domain is currently inactivated does not alter this finding.

Noting that the disputed domain name incorporates the Complainant’s distinctive and reputed trademark ROTHSCHILD and the gTLD “.net”; that the Respondent has not substantively replied to the Complainant’s contentions; and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, and considering all the facts and evidence of the case, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.

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 <rothschildloans-serbia.net> be transferred to the Complainant.

Knud Wallberg
Sole Panelist
Date: March 26, 2021