WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NM Rothschild & Sons Limited v. Corporate Internet Design Limited and Michael Decker
Case No. D2001-0854
1. The Parties
Complainant: NM Rothschild & Sons Limited, New Court, St Swithun’s Lane, London, EC4P 4DU, UK.
Respondents: Corporate Internet Design Limited and Michael Decker of 14 Baden Place, Crosby Row, London, SE1 1YW, UK
2. The Domain Names and Registrars
3. Procedural History
The Complaint was filed on July 4, 2001, and re-filed on July 18, 2001, to correct a deficiency. WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The panelist is satisfied this is the case.
The Complaint was properly notified in accordance with Rules, paragraph 2(a). On August 7, 2001, the Defendant filed a Response.
The administrative panel was properly constituted. The undersigned panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence. No further documents were submitted. Accordingly, the date set for decision of this matter was August 29, 2001.
4. Factual Background
The Complainant is a financial services company and the owner of trademark registrations for ROTHSCHILD for financial services in Australia, Czech Republic, Germany and Hungary. It is a subsidiary of Rothschilds Continuation Holdings, AG, which is the owner of registrations for ROTHSCHILD in over fifty countries worldwide. The Defendant is a company specializing in Internet design with a large number of blue chip customers which include several of the world’s leading banks.
5. Parties’ Contentions
This Complaint stated:
(a) The Complainant and other members of the Rothschild Group are the owners and registered proprietors of registered trade marks for ROTHSCHILD, the majority of which are in class 36 covering "banking, financial management and investment, trusteeship and securities brokerage services". The Complainant is the owner of trademark registrations for "Rothschild" for financial services in Australia, Czech Republic, Germany and Hungary. It is a subsidiary of Rothschilds Continuation Holdings AG, which is the owner of registrations for "Rothschild" in over fifty countries worldwide.
(b) The ROTHSCHILD trademark is extremely well known in connection with the Rothschild Group. The Rothschild Group has been at the centre of the world’s financial markets and a leading provider of banking services for over two hundred years. The Complainant is a member of the Rothschild Group, situated in the United Kingdom. Another member of the Rothschild Group is Rothschild Bank AG, situated in Switzerland.
(c) The Domain Names are a combination of the name "Rothschilds", which is confusingly similar to the ROTHSCHILD trade mark, and the word "bank", which describes banking services, which are one of the principal services provided by the Complainant and other members of the Rothschild Group. The Complainant is authorised to carry out banking services in the UK, and therefore acts as a bank. The Rothschild Group has invested substantial sums of money in developing and marketing their banking and business services under the ROTHSCHILD trade mark and there is considerable goodwill in the trade mark in respect of banking services. In particular, the Complainant advertises and markets its banking and other financial services on the Internet at the following websites: <rothschild.co.uk>, <nmrothschild.com> and <rothschild.com>. Members of the Rothschild Group, including the Complainant, are also colloquially referred to as "Rothschilds". The Domain Names are therefore confusingly similar to the ROTHSCHILD trademarks.
(d) The Respondents have no right or legitimate interest in respect of the Domain Names. There is no relationship between the Respondents and the Complainant. The Complainant has not licensed or otherwise permitted the Respondents to use any ROTHSCHILD trade mark or apply for any domain name incorporating the trademark. The Complainant is not a customer of the Respondents. Furthermore, there is no suggestion that either of the Respondents is commonly known by the name rothschilds-bank or that they have acquired any trade mark rights in that name. According to the First Respondent’s website at <websitedesign.co.uk>, the First Respondent is an Internet design company which develops Internet sites primarily for financial companies.
(e) The Respondents registered the domain name <rothschilds-bank.com> on April 7, 2000. (The First Respondent also registered the domain name rothschilds-bank.co.uk on that date, though the Registrar for that domain, Nominet Limited, is not subject to the Policy.)
(f) The Complainant’s French advocates, Korman, Mandel & Henaff, wrote to the Respondents on March 1, 2001, on behalf of, inter alia, the Complainant and other members of the Rothschild Group after becoming aware of the Respondents’ registration and use of <rothschilds-bank.com>. The letter notified the Respondents of the Complainant’s rights in the trade mark ROTHSCHILD and requested that the Respondents transfer <rothschilds-bank.com> to a member of the Rothschild Group.
(g) The Second Respondent, who identifies himself as the Creative Director of the First Respondent, replied the same day as follows:
"Corporate Internet Design … as you may be aware has a number of investment banking clients. While I am not willing at this stage to discuss the circumstances of our registration on this domain name, it would be an error for you to assume there has been any attempt at passing-off using this site [i.e. <rothschilds-bank.com>]. Indeed the domain is currently displaying a "register.com" standard page"…
"While you name a large number of institutions that use … "Rothschild" as part of their nomenclature … the name "Rothschilds Bank" is not one of them … we therefore reject your offer of reimbursement of our expenses and will not consider reassigning the name at this time."
(h) The First Respondent subsequently registered the domain name <rothschilds-bank.net> on March 15, 2001.
(i) The Complainant’s English solicitors, Freshfields Bruckhaus Deringer, wrote to the Respondents on May 17, 2001, on behalf of the Complainant and other members of the Rothschild Group, drawing the Respondents attention to (1) the UK trade mark registration for ROTHSCHILD in class 36 which includes "banking, financial investment and management services"; and (2) the existence of Rothschild Bank, AG. The second letter requested that the Respondents either explain the circumstances of their registration of the Domain Names or transfer the Domain Names to the Rothschild Group.
(j) The Second Respondent responded on behalf of the First Respondent by email on May 20, 2001. In his response he states:
"Legitimate uses might include a site detailing the history of the bank, or as a forum for past and present customers of the bank."
In fact, the First Respondent has held <rothschilds-bank.com> for almost 15 months without showing any intention of putting it to any legitimate use. Instead, it has linked <rothschilds-bank.net> to its own website
"We [have] a large number of blue-chip City [i.e. City Of London] clients … For reasons of commercial confidentiality we are not prepared to reveal to you the reason for registering these names".
(k) Freshfields Bruckhaus Deringer telephoned the First Respondent’s offices on 5 June in an attempt to seek an explanation from the Second Respondent of the legitimate reasons for the Respondents registration and use of the Domain Names. The Respondents have chosen not to reply.
(l) Freshfields Bruckhaus Deringer wrote to the Respondents for a second time on June 19, 2001. Freshfields Bruckhaus Deringer referred to the fact that since May 20, 2001, the First Respondent had linked the domain name <rothschilds-bank.net> to its corporate website, which is branded "Corporate Internet Design" (the Website). The introductory page of the Website, accessible via <rothschilds-bank.net>, states: "You’d be in good company – the City’s leading banks and law firms trust us to carry out work for them and their clients." The Website subsequently lists certain "blue-chip" clients of the First Respondent, including JP Morgan, Merrill Lynch and Schroders. These companies are well known competitors of the Complainant and other members of the Rothschild Group, and offer similar banking and other financial services.
(m) The Second Respondent replied by email on behalf of the Respondents on June 28, 2001. The Second Respondent’s only explanation for connecting <rothschild-bank.net> to the Website was that this was a default. The Respondents again refused to disclose details of any legitimate uses that the Respondents intended for the Domain Names, choosing instead to repeat their main defence that by "deliberately" not registering the Domain Names, the Complainant has lost its rights to prevent the Respondents using them and is therefore engaged in intimidation. If this were true, the Complainant would be required to register with NSI alone many thousands of domain name permutations containing "Rothschild" or "Rothschilds". Instead, the Policy has been implemented to deal with this very same situation.
(n) In summary, the Respondents have repeatedly failed to provide any legitimate reason to explain their registration and use of the Domain Names. Further, in respect of <rothschild-bank.net>, the Respondents have chosen to link the domain to the Website rather than leaving it as the default page of register.com. The only conclusion must be therefore that the Respondents have registered and are using the Domain Names in bad faith to attract, for financial gain, internet users to the Website by creating a likelihood of confusion with the Complainant’s trade mark as to source, sponsorship, affiliation, or endorsement of the Website or the Respondents or of a product or service on the Website.
(o) Firstly, Internet users who check the ownership of the Domain Names will be misled into believing that, as owners of the Domain Names, the Respondents are affiliated to, endorsed by or otherwise connected with the Complainant.
(p) Secondly, Internet users who use the <rothschilds-bank.net> domain name will be misled into believing that the First Respondent is part affiliated to, endorsed by or otherwise connected with the Complainant. The clear intention of the Respondents in linking <rothschilds-bank.net> to the Website is to attract those internet users as customers of the First Respondent for financial gain, by obtaining the benefit of the goodwill and reputation of the Complainant in the ROTHSCHILD trade mark. There is no element on the Website that would in any way justify the use of the name Rothschilds within the Domain Names. As a result of the Respondents’ actions, the ROTHSCHILD trademark is being diluted and the goodwill that the Complainant and the Rothschild Group has established in the trademark is being damaged. It is also submitted that whilst <rothschild-bank.com> is not yet linked to the Website, it is also being used in bad faith. The Respondents have, by their course of action in relation to <rothschilds-bank.net>, shown that they intend to make financial gain out of their use of <rothschild-bank.com>.
(q) The only other conclusion that can be drawn is that the Respondents intend to make financial gain by selling the Domain Names either to the Complainant or to a competitor of the Complainant. The Respondents have alluded to both in their correspondence. On March 1, 2001, they state that "Corporate Internet Design … as you may be aware has a number of investment banking clients". If the Respondents do not plan to continue using the Domain Names on their own behalf, then it is submitted that they intend to transfer them in the course of their business to a client, which is likely to be a competitor of the Complainant.
On 28 June they state: "nothing prevents you making a more informal approach … " and on 1 March "we will not consider reassigning the name at this time." [our emphasis]. The Respondents are obviously familiar with the examples of bad faith given in the Policy, and have therefore taken pains to avoid making a direct offer to sell, but the implication is that they would be open to advances from the Complainant to purchase the name. The Complainant has offered to reimburse the Respondents’ expenses if the Domain Names are transferred.
(r) The Complainant cites WIPO Case No. D2000-1809 between Chanel, Inc. and Cologne Zone decided on February 22, 2001, in which the complainant was also a well-known and respected brand (Chanel), and the respondent registered the confusingly similar domain names, <chanelperfumes.com> and <chanelperfumes.net>, asserting (as in this case) that the complainant was negligent for failing to register the domain names itself. It was held that the respondent had "selected the domain names because Chanel is a well-known mark for perfume" and that "he intends to use it [the mark] to attract customers to a site." It was consequently held that the domain names were registered and used in bad faith
(s) The Complainant also cites WIPO Case No. D2000-0003 between Telstra Corporation Limited and Nuclear Marshmallows decided on February 18, 2000. In this case the complainant’s well-known and reputable trademark was used by the respondent in its domain name. The panel found that there was no "plausible actual or contemplated active use of the domain name by the respondent that would not be illegitimate". They concluded that since there were no legitimate reasons for the use of the domain name by the respondent, the domain name had been registered by the respondent in bad faith. The case also established that bad faith could be inferred by the respondent’s failure to supply evidence of a legitimate use. The panel in Telstra also found that registration of a domain name without use in relation to a website could amount to registration and use in bad faith. The Complainant submits, that there is no plausible legitimate use for the Domain Names, given that the Domain Names are a combination of the Complaint’s well-known trade mark and name, and its principal line of business, banking.
(t) In view of the above, it is submitted that the Respondents’ registration and use of the Domain Names amounts to bad faith. The Respondents have intentionally attempted to attract for commercial gain users to the First Respondent’s site, by creating the likelihood of confusion with the Complainant’s well-known mark as to the source, sponsorship, affiliation, or endorsement of the site.
The Response states:
(1) General Comments
a) The Respondent is one of the City of London’s leading internet design houses, with a large number of blue-chip customers which include several of the world’s leading banks. The company’s banking clients include Merrill-Lynch, JPMorgan and Schroders, while its roster of household names includes Rolls-Royce, Panasonic, Manpower, Warner-Lambert, UUNET, Pricewaterhouse Coopers, Royal & SunAlliance and WorldCom. The Respondent is also a member of Nominet.
b) The Complainant, while claiming to be a ‘leader in the financial world’, is now a very minor player in the market having declined in importance since its heyday in the 1880’s, suffering its worst decline over the past fifty years. ‘The Rothschild Group Inc.’, incorporated in the USA, has no connection whatsoever with the Complainant, and no trademarks for ‘Rothschild’ or any combination of similar words are claimed by the Complainant in the USA.
c) The Respondent disputes that registered trademarks referred to by Complainant are sufficiently extensive to support action against a TLD. The Respondent disputes the Complainant’s three allegations about identity/confusing similarity, about absence of rights and legitimate interests and about registration and use in bad faith. Respondent contends that Complainant has failed to show any of the three limbs set out in Paragraph 3(b)(ix) of the Rules – let alone all three of those – and that therefore Complainant’s request for the transfer of the disputed domain name should be unconditionally rejected.
(2) Identical or confusing similarity
a) The Complainant has supplied a list of trademarks held with regard to the ‘Rothschild’ name in connection with banking services. No artwork or examples of trademarks have been submitted. No Certificates of Registration have been submitted; the list of claimed trademarks provided in a schedule to the Complaint cannot be regarded as acceptable proof of ownership and must be ignored.
b) The Complainant is clearly NM Rothschild & Sons Ltd. Companies other than the Complainant hold all except four of the registrations claimed in the Complainant’s Schedule C. NM Rothschild, the Complainant, claims to hold registrations (no proof is supplied) in just Australia, Czech Republic, Germany and Hungary. In view of the fact that the Complainant has attempted to pass off fifty-seven registrations as its own, we respectfully request the panel consider this when considering the ‘reverse domain name hijacking’ case.
c) The disputed name ‘Rothschild’s Bank’ is not claimed as a trademark held by the bank, neither has the Complainant shown any use by them of that term.
d) No trademark or any other rights have been claimed for the territory of the United States of America. The ".com" suffix is a TLD originally designated for businesses situated in the USA. The Complainant (in 13[b]) states that the Rothschild Group is situated in the United Kingdom.
e) With regard to the claim made in (13(b)) that the Trademark ‘is extremely well known in connection with the Rothschild Group’. The Respondent notes that the ‘Rothschild Group Inc’ is incorporated in the United States of America, and has no connection whatsoever with the Complainant. The Rothschild Group Inc., is the legitimate owner of the domain <rothschildgroup.com>, and has been for more than five years. (See Appendix for WHOIS data for <rothschildgroup.com>). We respectfully request the panel consider this factual inaccuracy when considering the ‘reverse domain name hijacking’ case.
f) The domain names <Rothschild.com> and Rothschild.co.uk, owned by N M Rothschild & Son, are pointed at the web site <nmrothschild.com>, underlining the fact that the group trades and is known as N M Rothschild. We have been unable to discover a single instance of the Complainant advertising and marketing the websites <rothschild.com> or <rothschild.co.uk> as claimed in (13(c)). These sites do not exist in their own right; they simply seem to point visitors arriving there by accident to their site at <nmrothschild.com>. We respectfully request the panel consider this factual inaccuracy when considering the ‘reverse domain name hijacking’ case, and to request evidence from the Complainant that they have ever used those two domains in ‘advertising and marketing’.
g) The title, description, keywords and body copy of the group's website uses a wide variety of descriptive words; the term ‘Rothschild's Bank’ is not mentioned. This would appear to indicate that the Complainant does not view that particular phrase as being one that visitors wanting to find the Complainant’s site would search for in a search engine (key words are used by search engines to index sites).
h) The Complainant cannot claim rights over the term ‘Rothschilds’ where it has been ‘colloquially referred to’ (see 13(c)). The Complainant has provided no evidence for this claim whatsoever.
i) Clearly the Claimant does not have exclusive rights of use of the name ‘Rothschild’, and in the USA, (the world’s largest banking market) the ‘Rothschild Group Inc’ is an entirely different company with which the complainant and the Rothschild Group has no connection whatsoever. The Claimant has claimed no rights in the territory of the United States of America; therefore any claim to a ".com" TLD domain must fail.
j) We believe that there is insufficient evidence at the present time to establish that the Complainants have rights in the trademarks claimed. See, Readygo, Inc. v. Michael Lerner Productions, WIPO Case No. D2000-0298; EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036 (as to that part of the opinion, set out in Section 4, Factual Background, in which it was held that as the Complainant had not shown itself to be the successor to the identified owner of the trademarks, those trademarks would not be considered in reaching the decision); E-Builder, Inc. v. Building On-Line, CPR Case No. CPR008.
(3) Rights or Legitimate Interests
a) The Respondent agrees that the Complainant did not license or in any way gave permission to use any of its trade names. The Respondent believes that such permission is not required.
b) The Respondent agrees that it refused to tell the Complainant the reasons for registering these names. The Respondent is not required to explain its business practices to any enquirer, particularly when they employ the aggressive and intimidating approach shown in the original letter from Korman, Mandel & Henaff (we ask that the panel consider this document’s threatening tone when considering the ‘reverse domain name hijacking’ case).
c) The Respondent replied to the Complainant on the March 1, 2001, stating "we claim legitimate use of the domain name for a purpose that would not lead to confusion", assuring them that there was no attempt at ‘passing off’. The Respondent stated that they were developing the site, and that until this process was complete they would continue to show the default page.
d) The Respondent replied to the second letter on 20th May again reassuring the Complainant that there were legitimate reasons why the Respondent had purchased the name. While not wishing to breach business confidentiality, the Respondent again reassured the Complainant that the use would be regarded as legitimate and ‘fair use’. The Respondent gave two examples of fair use, which are close to the respondent’s actual intentions for the domain.
e) The Respondent is not required to reveal exact details of a business venture in order to demonstrate ‘legitimate interest’; it is enough to demonstrate one or more legitimate uses for the domain name in question. The Respondent is developing a site that will include some historical background on the Rothschilds’ involvement in banking, and will provide an opportunity for some past and present customers to contribute to the site. Site development has been ‘on hold’ since the first letter was received from the Complainant’s representative on the March 1, 2001.
f) The Respondent has shown that several organisations and individuals have claims to the ‘Rothschild’ name in various conjunctions; therefore NM Rothschilds’ case for exclusive and extended rights must be weakened.
(4) Bad Faith Registration and Use
a) The Complainant’s entire case for satisfying the third requirement seems to be wholly contained in (13(n)), where they state that because one of the disputed domain names is linked to a web design company’s site, that this means "the only conclusion must be that the Respondent’s have registered and are using the Domain names in bad faith to attract, for financial gain, internet users to the Website by creating a likelihood of confusion with the Complainant’s trade mark"
b) It is obvious that there is no possibility whatsoever that Internet users would confuse a web design company with a bank. The Complainant clearly recognises this, as the best cite they could find was WIPO Case No. D2000-1809 Chanel Inc. and Cologne Zone. A cursory reading of the case will show that Cologne Zone is a business that sells perfume. Chanel manufactures perfume. It is likely that Cologne Zone may financially benefit should Internet users accidentally visit the Cologne Zone site at <chanelperfumes.com> and purchase perfumes there instead of from Chanel. There are no similarities whatsoever with this case, as there is simply no evidence whatsoever that the Respondent has or intends to financially gain from any confusion in the mind of internet users. Again, the Complainant is a bank, the Respondent is a web design company.
c) The Complainant further cites WIPO Case No. D2000-0003 Telstra and Nuclear Marshmallows, but again this is another attempt to confuse and misrepresent. A reading of this case will show that the Respondent did not respond to the case, the legal entity ‘Nuclear Marshmallows’ did not exist, the street and telephone details for the Respondent were false, and it proved completely impossible to contact the owner of the disputed site name. The Complainant in (13(s)) quotes the panel as stating that there was ‘no plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate’, implying that a similar ruling should apply in this case. This is an outright fallacious misrepresentation of the Telstra case, because the above quotation is prefaced in the report with the words "taking into account all of the above", where the ‘above’ refers to the lack of a response, the attempt to conceal true identity, actively provided false details etc. We respectfully request the panel consider this blatant attempt at obfuscation when considering the ‘reverse domain name hijacking’ case.
d) The Complainant claims in (13(o)) that a WHOIS record (a text record on a database) in some way fits the ‘bad faith’ criteria. It would be extremely difficult to imagine how an internet user would find their way to this record, note that a web design agency registered it, and then was so impressed that they decided to do business with that company.
e) The whole purpose of a registry such as WHOIS is to provide a record, and the database cannot be cited as evidence of bad faith when it is the repository for all domain names and therefore to appear or not appear in it is not an option for registrants.
f) The Complainant in (13(p)) again tries to imply that internet users visiting a banking site are likely to turn into customers for a web design company. This is nonsensical. The implication also that there is some advantage to alluding to a very minor financial institution as being a client is similarly nonsensical – the Respondent has banking clients that are many times larger and much more prestigious than the Complainant.
g) The Complainant in (13(q)) now claims that the Respondent wishes to sell the name to either one of its own customers, or to the Complainant. There is no evidence whatsoever that the Respondent has any such plan to sell the domain name to a customer, and the evidence claimed to be an attempt to sell to the Complainant is the words "nothing prevents you from making a more informal approach". Again the Complainant has attempted to selectively quote from the letter of 28th June, which deals at length with the Complainant’s attempts at intimidation. The full quotation from the letter reads "We did not respond to your telephone call, for reasons that should be obvious. While nothing prevents you from making a more informal approach, this must be in writing". Clearly a telephone call from the Complainant is an informal approach, and we have suggested that to prevent misunderstanding a phone call is not acceptable, although a letter written in less threatening tones would be more helpful. By this time the Respondents had reassured the Complainant three times that the eventual site being developed would not infringe any of the Complainant’s rights. Clearly, a proper reading of the letter shows that it was the Complainant’s representative that made the first informal approach, which was rebuffed by the Respondent. We respectfully request the panel consider this attempt to selectively edit and quote when considering the ‘reverse domain name hijacking’ case.
h) The second quotation unequivocally states that despite threats and intimidation the Respondent will not be reassigning the domain name at that time, as demanded by the Complainant.
i) The Complainant in (13(j)) claims that the domain name has not been put to legitimate use for almost 15 months. The Respondent has previously stated that the web site was in development, and was put on hold after ten months. The Respondent has often taken more than a year to develop large sites for customers; Ten months of development is entirely normal and is not by any measure an indication of bad faith registration.
j) The Complainant claims that because the default page for any domain registration at one of the registrars points to the Respondent’s home page, that this somehow satisfies the conditions for ‘bad faith use’. The Complainant has tried to suggest in (13(n)) that the Respondent receives financial gain from persons trying to seek Rothschild’s Bank. This implies that those seeking financial services will find a web design company instead, and decide to give money to the web design company rather than the bank. This is clearly nonsense.
k) The Respondent has no history of ‘cyber-squatting’, and has never been accused of such behaviour in all the years of its history. The Respondent has never sold, or offered for sale, any domain name speculatively purchased.
l) The Respondent cites WIPO Case No. D2001-0036 Wherehouse Entertainment, Inc. v. NetVentures where the Complaint was denied on the grounds of no ‘bad faith’ being shown by the Respondent. The Complainant’s claims included "5.6 Respondent has acted in bad faith by registering and refusing to surrender a domain name that is confusingly similar to Complainant’s famous service marks, and by in effect, demanding payment from Complainant in amount above that expended to register the domain name exchange therefor. By retaining the domain name <mediawherehouse.com>, Respondent has confused Complainant’s customers who have been accustomed to the unique spelling of Complainant’s name WHEREHOUSE, for approximately 30 years and who seek out Complainant’s services under the WHEREHOUSE name."
m) A similar decision was reached in WIPO Case No. D2001-0079 Tchibo Frisch-Röst-Kaffee GmbH v. Hans Reischl, where the complaint again failed on ‘bad faith’. The decision includes the following comments, all of which the panel may find relevant:
"The Panel is aware that the Complainant is selling many products on its website, including sports, computer and travel-related products. The Panel is also aware that the Respondent has made little use of its website, raising certain doubts about the Respondent’s real intentions.
Furthermore, the evidence offered by the Respondent to rebut the allegation of bad faith has not been particularly compelling.
It is the Complainant however that has the burden of establishing a prima facie case, a demonstration that it has failed to make. Given the widespread use on the Internet of the name Tschibo, it is difficult to see how the registration of the domain name <tschibo.com> for the promotion of trend and extreme sports could be "misleading" in its diversion of consumers to Respondent’s website, provided that the Respondent’s website is not used for the sale or promotion of coffee or other products notoriously competitive with the Complainant’s well-known mark. Simply put, while the Tchibo mark is well-known and well-protected, the Tchibo name is hardly unique in the German speaking world, and is being used in several other contexts.
Given the wide recognition of Complainant’s trademark, it is certainly plausible that Respondent will enjoy some advantage from the reputation of the Complainant’s Trademark. However, there is nothing inherently wrong with that. As long as the Respondent does not intentionally create confusion to attract, for commercial gain, Internet users to his website, such an advantage cannot be considered to be unfair or parasitic, and does not constitute bad faith per se.
Based on the above, the Panel finds that the Complainant has failed to satisfy its burden to prove bad faith".
(5) Reverse Domain Name Hijacking
It is clear to the Respondent that having no evidence whatsoever of bad faith registration and use, and realising their attempt to take these names will fail unless they prove ‘bad faith and use’, the Complainant has resorted to a farcical concoction of ridiculous supposition in order to try and prop up their dismally weak case. The Respondent strongly feels that there is very good evidence for the panel to find the Complainant guilty of ‘reverse domain name hijacking’.
6. Discussion and Findings
According to paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Complainant’s Trademarks
Whilst the Respondent does not deny that the Complainant and its parent company own registrations around the world for ROTHSCHILD for financial services, the Respondent has asserted that since the Complainant has not appended certificates of registration to the Complaint, the trade mark registrations that the Complainant claims must be ignored. Certainly it is regrettable that at least the certificates for the registrations in the name of the Complainant were not appended to the Complaint.
Nevertheless, the Respondent does appear to acknowledge that the Complainant has been continuously trading since at least 1880 using the ROTHSCHILD name in the financial services field. Rights in a trade mark under the ICANN policy do not need to be registered rights and there is evidence that the Complainant has built up considerable unregistered rights in the ROTHSCHILD name in the financial services field which would be sufficient to show rights in a trade mark for the purpose of these proceedings, even if no registered rights were satisfactorily evidenced.
The Complainant’s web site evidences that the Complainant is often referred to as ROTHCHILDS and that its full name is not always used. The press appears commonly to refer to the Complainant as simply ROTHSCHILDS.
I do not accept the Respondent’s contention that ".com" indicates a North American business and the fact that the Complainant does not claim any rights in North America does not affect the question of the Complainant’s trade mark rights in ROTHSCHILD for the purposes of the policy. There is no requirement in the policy for the Complainant to show that it has exclusive rights in the name ROTHSCHILD for financial services right across the world.
The Complainant has shown it has rights in the ROTHSCHILD mark.
B. Identical or confusing similarity
The Domain Names consist of the plural or possessive version of the Complainant’s ROTHSCHILD mark and the word "bank", banking services being the field in which the Complainant operates. The Complainant is authorized to carry out banking services in the UK and acts as a bank. The addition of the ordinary word "bank" which is descriptive of the business in which the Complainant operates does not prevent the Domain Names being confusingly similar to the Complainant’s ROTHSCHILD trade mark.
C. Rights or Legitimate Interest of the Respondent
The Respondent admits that it has not been licensed by the Complainant and has refused to disclose the reasons for its registration of the Domain Names. Whilst the Respondent has asserted that it is developing a site which will include some historical background on the Rothschilds’ involvement in banking, the Respondent has not produced or appended to its Response any evidence of this whatsoever. The Respondent does not appear to have any rights or legitimate interest in the Domain Names.
D. Bad Faith
Paragraph 4(b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including
"by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] web site or location or of a product or service on [its] web site or location."
The Respondent does not deny that it linked one of the Domain Names to its corporate web site offering web design services to financial institutions, but simply denies that this was confusing. However, it does not put forward an explanation as to why the domain name in question was so linked. The Respondent has a number of clients in the banking sector, a fact which features on their web site and this link with the financial sector could lead to confusion that the Respondent is somehow linked with the Complainant.
I am satisfied that the Respondent registered the Domain Names in bad faith with an intent to use the Domain Names to attract business to its site for commercial gain in circumstances where there is a likelihood of confusion with the Complainant’s mark.
E. Reverse Domain Name Hijacking
I reject the Respondent’s contention that there is any question of Reverse Domain Name Hijacking in this case for the reasons outlined above.
In the light of the foregoing, the panelist decides that the Domain Names are confusingly similar to the Complainant’s trade mark and the Respondent has no rights or legitimate interests relating to the Domain Names which were registered and used in bad faith.
Accordingly, in the light of the above, the panelist requires that the registrations of the Domain Names <rothschilds-bank.com> and <rothschilds-bank.net> be transferred to the Complainant.
Dated: August 29, 2001