WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
N.M. Rothschild & Sons Ltd. v. Fine Art Investments Ltd.
Case No. D2001-1029
1. The Parties
The Complainant in this administrative proceeding is N M Rothschild & Sons Ltd., whose registered office is situated at New Court, St. Swithin’s Lane, London, EC4P 4DU, United Kingdom represented by Freshfields Bruckhaus Deringer, Solicitors, of 65 Fleet Street, London, EC4Y 1HS, England ("Freshfields"). The Respondent is Fine Art Investments Limited of 5 The Pines, 38 The Avenue, Poole, Dorset BH13 6HJ, England.
2. The Domain Name and Registrar
The domain name in issue is <rothschildbank.org> ("the Domain Name"), the Registrar of which is Tucows, Inc. of 96 Mowat Avenue, Toronto, ON, M6K 3M1, Canada ("Tucows").
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received on August 15, 2001, an e-mail version of the Complaint, and on August 16, 2001, a hard copy of the Complaint and accompanying documents. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"). The Complainant made the required payment to the Center. On August 22, 2001, the Center formally notified the Respondent that this administrative proceeding had been commenced, and that date is the formal date of the commencement of this administrative proceeding.
On August 20, 2001, the Center received from Tucows its Verification Response confirming that the registrant is Fine Art Investments Ltd., the Respondent herein, and stating that the Administrative Contact is Administrator, Domain email@example.com, of 5 The Pines, 38 the Avenue, Poole, Dorset, BH13 6HJ, UK and that the Technical and Billing Contacts are Administrator, Domain firstname.lastname@example.org, of PO Box 60, Camberley, Surrey, GU15 3YL, UK.
On September 18, this Panelist was appointed by the Center. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality, and his decision is scheduled to be forwarded to the Center by October 2, 2001.
4. Factual Background
While the parties draw widely differing inferences from the facts of this case, there is little dispute as to the facts themselves. Those of particular relevance are as follows:-
(a) The mark ROTHSCHILD is registered as a trade or service mark in the name of the Complainant in Australia, the Czech Republic, Germany and Hungary ("the Trademark"). Its parent company, Rothschilds Coninuation Holdings AG is the registered proprietor of the same mark in a much larger number of countries around the world.
(b) The Rothschild Group has been at the center 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) On January 19, 1995 an article entitled "Vom Kunstkredit zum Asset Mix" appeared in the Zurich newspaper "HandelsZeitung". The article mentioned "Rothschild Bank". On the same page there was an article describing the services on offer from the Respondent. These seem to consist in facilitating collectors of works of art to "swap" works with one another. The Panelist notes that this article makes no mention of the internet or of any domain names.
(d) Mr. Roger Stiles who appears to have set up the Respondent Company, claims to have met a Mr. Kulenkampff from Rothschilds Bank as a result of the latter article and to have suggested to Mr. Kulenkampff that works of art could be displayed on the internet without risk of theft or damage.
(e) On May 30, 2001, the Respondent registered the Domain Name.
(f) On June 11, 2001, the Respondent sent an e-mail to a Chris Preston at rothschildbank.com, the domain name of Rothschild Bank AG in Zurich, in the following terms:-
"The Following Domain name is available for sale:
Offers invited to:
Fine Art Investments Limited
(g) On June 13, 2001, Mr. Preston replied as follows:-
"Thank you for informing us – will discuss internally and revert"
(h) On June 25, 2001, Mr. Stiles e-mailed Mr. Preston again:-
Thank you for your email of June 13. I wish to advise you that a private individual has since offered 1.5mUSD for the above domain name if you do not want it.
I note that you do not offer art advisory services to your clients, unlike your private banking competitors, and I would be willing to do so under the above domain name if you wish. My details can be found at www.artloans.co.uk"
(i) On the same day Mr. Preston appears to have tried to forward this last e-mail from Mr. Stiles to a colleague, Michael Arni, under cover of the following:-
This might amuse you – he seems a little confused on what he is offering to whom!
(j) In fact this last message was sent to the Respondent and provoked Mr. Stiles, also on June 25, to e-mail Mr. Arni as follows:-
For your further amusement I enclose my reply to Mr. Preston’s email which I believe he sent you today – enjoy!!
Dear Mr Preston,
I am very proud of you. I am relieved that you managed to spot such an easy mistake on my part. What I really find amusing is that you seem to place no value at all on your bank’s name as stated above or on the possibility of doing business. Your loss not mine.
(k) On July 4, 2001, Freshfields wrote to the Respondent calling on it to transfer the Domain Name for out of pocket expenses only, failing which the Complainant would have no option but to commence proceedings under the Policy.
(l) Also on July 4, 2001, Mr. Stiles sent an e-mail to Clare Adshead–Grant at Freshfields, as follows:-
"I note that someone at 65 Fleet Street (IP NO: 18.104.22.168) has been accessing my webpages on July 2 at 12.47 & 16.51 and on 3 July at 9.20 & 16.50. I wish to draw your attention to my terms and conditions of business which can be found at my website in particular sections 5.5, and 5.7. If you do decide to contact me I will invoice you pursuant to those terms."
(m) On July 5, 2001, Mr. Stiles wrote (on the Respondent’s headed paper) in reply to Freshfield’s letter of July 4, 2001. That letter was in the following terms:-
Thank you for your letter which arrived this morning. I am very surprised by its contents and I believe a mistake has been made. I am not aware that the above domain name is a registered trademark of Rothschild. I was able to purchase this domain name publicly in good faith and have received good title to it without notice of defect. I disclaim liability under my standard terms and conditions which your firm has been accessing over the past two days on my website. I should remind you that the above domain name is dormant (non-trading) and legitimately belongs to my company which is not cyber squatting as you infer and is not wrongfully using the domain name.
In this matter I primarily acted on the suggestion of a Mr. Kulenkamp in the bank’s Zurich office several years ago and as such the bank as well as Freshfields are bound by my standard terms and conditions of business which you have found at www.artloans.co.uk/. An email was sent yesterday to your office addressed to Clare Adshead-Grant which preceeded your letter to me. Mr Kulenkamp informed me that that bank does not offer art advisory services to high networth clients unlike the bank’s competitors such as Citibank and Deutsche bank and the idea is that that Rothschild do so too under the above domain name using my services. As you can see there is no bad faith on my part. On the contrary it is Mr. Preston in one of his email’s who made fun of me (which I found insulting and in bad faith) and has now called in the bank’s lawyers with no warning. You also mention goldmansachsbank.org and I assure you that it is a similar story with that bank.
I suggest that you go back to your client for further instructions and I will invoice you for my time as previously stated."
(n) On July 8, 2001, Mr. Stiles e-mailed Mr. Preston as follows:-
"I heard from your solicitors Freshfields last week. I wish to advise you that you are both bound by my standard terms and conditions of business which can be found at www.artloans.co.uk/ and I draw your attention to sections 5.5, 5.6, 5.7 in particular. I have sent an invoice to Freshfields for my time involved in replying to their letter and they in return will no doubt seek to be indemnified by you as their principal.
If you instruct Messrs. Freshfields again I will instruct my own highly priced solicitors and counsel and invoice you for it.
I do not take kindly to being made fun of by you nor being threatened with legal action when I have done nothing wrong."
(o) The Respondent’s standard terms and conditions, were they to apply to a contract between the Respondent (the Company) and a Client, would impose a remarkable obligation on the Client to pay the Company’s legal (and other) expenses. Clause 5.7 (which is referred to in Mr. Stile’s e-mail of July 8) is as follows:-
"The Client agrees to pay the Company’s charges and indemnify the Company for any legal goods, performances, services undertaken or provided by the Company and for all costs and expenses (including legal fees and expenses on a solicitor and barrister and own Client basis) in respect of the recovery of any outstanding amounts due under this Contract or in respect of any claim or alleged claim by the Client against the Company howsoever arising, or in any other legal matter or dispute between the Client and the Company." (The Panelist’s emphasis).
(p) Purporting to act on the basis of these standard terms and conditions, the Respondent on July 9, 2001, issued an invoice to Freshfields in the sum of £337.23.
(q) Also on July 9, 2001, Mr. Preston sent the following reply to Mr. Stiles’ e-mail of July 8:-
"As far as I am aware I do not know you and prior to receiving this surprising communication I have only received one unsolicited e-mail from you to which I did not reply.
I would be grateful for your explanation of what this is all about. I am informing our compliance office of the matter by copy of this message."
(r) Freshfields then wrote on July 17, 2001, to the Respondent the following letter:-
"rothschildbank.org (the Domain Name)
We refer to your fax dated 5 July 2001, marked "without prejudice".
Our clients deny that they, or any of their employees or agents, have ever authorised Fine Art Investments Limited to register the Domain Name.
Furthermore, we understand from our clients that Mr Kulenkampff left the employment of Rothschild Bank AG, and the Rothschild Group, in June of 1995, more than six years before Fine Art Investments Limited registered the Domain Name on 30 May 2001. Given the passage of time between the departure of Mr Kulenkampff and the registration of the Domain Name, we fail to see how any alleged authorization by Mr Kulenkampff whilst an employee of Rothschild Bank AG could in any event justify your actions.
We refer also to your email of 8 July 2001 to Mr Preston claiming that our clients and we are bound by your standard terms and conditions of business. Our clients and we have not entered into any contract with Fine Art Investments Limited, and have no intention of doing so, and are not liable to Fine Art Investments Limited in any way in relation to this matter.
We have been instructed to initiate UDRP proceedings against you to recover the Domain Name. We will forward a copy of the Complaint to you shortly."
(s) Mr. Stiles replied on July 19, 2001, to Freshfields:-
"Thank you for your letter which arrived this morning. Your six year gap argument is spurious for there is no statute bar. For you to recover the domain name as you suggest you will have to prove bad faith in court and there is no bad faith on my part in this matter. The above domain name is the property of my company bought with the honest intention of going into business with the bank.
In your letter you have confirmed that the bank does not want to go into business with me. Therefore to come to an amicable settlement in the long history of this matter I am willing to transfer the above domain name to the bank under my standard term contract as part of a time based consultancy fee of £6000 + VAT. I hope your client finds this arrangement acceptable."
(t) Mr. Stiles faxed the Complainant’s solicitors again on July 22, 2001. The fax was entitled "Terms and conditions, rothschildbank.org, juliusbaer.org". It stated:
"… As of July 22 our [the Respondent’s] terms and conditions of business have been amended with regard to access of and use of our Web Site…Fine Art Investments Limited are also pleased to announce that they have provided a free web page for anyone associated with the above [rothschildbank.org and juliusbaer.org] .org organizations. For non-commercial and goodwill purposes, anyone associated with the above organisations are welcome, free of charge, to submit photographs of their personal artworks and antiques along with their fair comments if they wish, which may be displayed on this exhibition webpage."
(u) On July 30, 2001, Mr. Kulenkampff wrote a letter to Rothschild Bank AG of Zurich in the following terms:-
"I confirm that I was previously employed by Rothschild Bank AG. I left their employment in or around June 1995. I confirm that at no time during my employment with Rothschild Bank AG, or at any time since then, have I spoken to Mr. Roger Stiles of Fine Art Investments Limited, or any other employee of that company, regarding the domain name rothschildbank.org. At no time have I ever suggested or implied to Mr. Stiles or to Fine Art Investments Limited that Mr. Stiles or his company should purchase this domain name on Rothschild Bank AG’s behalf or on behalf of any other party."
(v) On August 15, 2001, the Respondent issued an invoice to Rothschild Bank AG in the sum of £6,000. The narrative reads as follows:-
"As per your request
To our professional charges in connection with the domain name Rothschildbank.org and the transfer thereof to Rothschild Bank AG
NB: Domain name will be transferred upon receipt of cleared funds"
(w) Mr. Stiles appears to have received the Complaint on August 16, 2001. He then sent a fax to Freshfields in the following terms:-
"I received a copy of your complaint this morning. I enclose an invoice which was sent to Mr Preston yesterday. There are a number of points you raised which I think it would be helpful to address:
12.6: This email was sent in error and is retracted.
12.7: This email was sent in error and is retracted.
12.9: My company has been dealing with bank Julius Baer since 1994 and there is no bad faith use of juliusbaer.org or of any other bank domain name. My services are valued by private banks and their clients hence my legitimate interest and goodwill towards them.
12.10: The domain name "rothschildbank.org" remains inactive at this time due to your actions and the uncertainty they have created. My intention is to activate the domain name at a dedicated website for fair use and non commercial art exhibition purposes when you stop complaining. Alternatively I am willing to comply with your request to transfer the domain name if you undertake to cover my costs in this project as specified in my invoice to Mr Preston. I hope one of these courses of action is acceptable to you."
Paras. 12.6 and 12.7 of the Complaint refer to the Respondent’s e-mails of June 11 and June 25 referred to respectively in sub-paragraphs (f) and (h) above.
5. Parties’ Contentions
The Complainant’s contentions can be summarized quite briefly:-
(i) The Rothschild Group has invested substantial sums of money in developing and marketing their banking and business services under the ROTHSCHILD trademark and there is considerable goodwill in the trademark 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: <www.rothschild.co.uk>, <www.nmrothschild.com> and <www.rothschild.com>. The Complainant has registered the domain name <rothschildbank.net>. Another member of the Rothschild Group, Rothschild Bank AG, has registered the domain name <rothschildbank.com>. The Domain Name is therefore confusingly similar to the ROTHSCHILD trademarks.
(ii) The Respondent has no right or legitimate interest in respect of the Domain Name. There is no relationship between the Respondent and the Complainant. The Complainant has not licensed or otherwise permitted the Respondent to use any ROTHSCHILD trademark or apply for any domain name incorporating the trademark. The Complainant is not a customer of the Respondent. Furthermore, there is no suggestion that the Respondent is commonly known by the name rothschildbank or that it has acquired any trademark rights in that name.
(iii) The e-mails referred to in paragraph 4(f) and (h) above are evidence of the Respondent’s bad faith.
(iv) The Domain Name has been registered and used by the Respondent in bad faith. Such bad faith is evidence by:-
(i) its numerous offers to sell the Domain Name which indicate that it has registered the Domain Name primarily for the purpose of selling the registration to the Complainant who is the owner of the trademark, or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name; and
(ii) its wholesale registration of nine domain names incorporating the names and trademarks of famous and/or Swiss banks, evidencing that the Respondent has engaged in a pattern of behavior of registering well known brands as domain names, the effect of which is to deprive the owner of those trademarks from registering a domain name reflecting their trademark.
The Response deals with a variety of matters which have nothing to do with the Policy or the Rules under which this administrative proceeding is being conducted. In particular, the Respondent seems to be under the impression that it has some contractual right to remuneration by the Complainant. However improbable may be the Respondent’s chances of such a claim succeeding, that is not a matter over which this Panelist can adjudicate.
Two of the 16 paragraphs of the Response have relevance to the Policy and the Rules. They are as follows:-
(i) The Respondent has a legitimate interest in the domain name and has not acted in bad faith. The counterclaim is that the Complainant has filed an improper complaint and is the one acting in bad faith. The Respondent is certainly not disrupting the normal internet services of the bank nor has he tarnished its reputation. The Respondent asks that the complaint be struck out.
(ii) To sum up, the Respondent submits that this is a hasty, bad faith, improper attempt by Rothschild Bank (the Complainant) to recover the domain name. The Respondent asks the Panelist to award him damages as he has shown the bank to have abused the WIPO process. The Respondent asks that he retains his good title to the domain name and be allowed quiet enjoyment of it without interference. In order to avoid throwing his costs away, the Respondent intends to instruct an internet service provider to activate the domain name and broadcast it at a dedicated website away from www.artloans.co.uk. This website will be for fair use and comment and display art works belonging to the bank’s clients for non-commercial purposes.
6. Decision and Findings
The onus is on the Complainant to prove each of the three elements set out in paragraph 4(a) of the ICANN policy, as follows:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and is being used in bad faith
As to element (i), the Domain Name comprises two elements, "rothschild" and "bank". Accordingly, the Trademark and the Domain Name are not identical. The question is therefore whether they are confusingly similar. The Complainant uses the Trademark in relation to its banking and allied financial services. Given that the Complainant’s reputation to the general public is that of a bank, the addition to "rothschild" of the word "bank" is purely descriptive of the Complainant’s well-known activity. The Domain Name is manifestly confusingly similar to the Trademark.
As to element (ii) of paragraph 4(a) of the ICANN Policy, the Respondent has done nothing to demonstrate that it has any rights or legitimate interests in the Domain Name. There is nothing to suggest that any of the circumstances mentioned in paragraph 4(c) of the ICANN Policy apply (ie before notice of the dispute preparation to use the Domain Name, being commonly known by the Domain Name or making a legitimate non-commercial or fair use of the Domain Name). Mr. Stiles in his letter of July 5, 2001, to Freshfields implied that the Domain Name was registered (on May 30, 2001) at the suggestion of a Mr. Kulenkamp (sic) of Rothschild Bank AG in a conversation "several years ago" (see para. 4(m) above). In the letter dated July 30, 2001 (see para. 4(u) above) Mr. Kulenkampff states that he left Rothschild Bank AG in about June, 1995 and denies ever speaking with someone in the Respondent company about the Domain Name. He does not deny having a conversation with Mr. Stiles but the Panelist accepts Mr. Kulenkampff’s specific denial. Mr. Stiles’ attempt to justify the Respondent’s actions after receiving Freshfields’ letter of July 4, 2001, is wholly inconsistent with the fact that the Domain Name was registered as recently as May 30, 2001, and promptly offered for sale 13 days later.
The Respondent, having received notice of the Complainant’s objections to the Domain Name, has also indicated that it now intends to use the Domain Name in a legitimate non-commercial fashion. This does not save the Respondent. Rights or legitimate interests can be demonstrated under para. 4(c)(iii) of the Policy if the Respondent is making a legitimate non-commercial or fair use. A mere intention at some unspecified time in the future does not, on the facts of this case, satisfy the Panelist that the Respondent has any rights or legitimate interests in the Domain Name.
Lastly, the Complainant must establish element (iii), ie that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b)(i) of the Policy indicates to a respondent that the following circumstances shall be evidence of registration and use of a domain name in bad faith:
"circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name,"
The following facts, in the Panelist’s opinion suffice to satisfy him that the Complainant has established element (iii):-
(a) The unsolicited offer on June 11, 2001, to sell the Domain Name, coupled with the e-mail of June 25 (see para. 4(f) and (h) above). Although, the latter e-mail is headed WWW.JULIUSBAER.ORG. it is addressed to Mr. Preston and specifically refers to Mr. Preston’s acknowledgement of June 13 (see para. 4(g) above). The Panelist is in no doubt that this e-mail of June 25 was intended to indicate to Mr. Preston that the Respondent was looking for a very substantial sum for the Domain Name. (It is not open to the Respondent to "retract" these e-mails – the Panelist does not believe they were sent "in error", and had the Complainant offered to pay a large sum of money, the Respondent would have accepted it).
(b) The submission of the invoice for £6,000 on August 15, 2001 (see para. 4(v) above). Such a sum must be wildly in excess of the Respondent’s out-of-pocket costs directly related to the Domain Name.
7. The Respondent’s Counterclaim
The Respondent complains about the conduct of the Complainant and its solicitors, Freshfields. The Panelist is of the view that the Respondent’s complaints are wholly without merit. Should there be any substance in them, they are a matter for courts of law, not the Policy. So far as this administrative proceeding is concerned, nothing that the Respondent has alleged against the Complainant and Freshfields has caused the Panelist to revise his opinion that the Complaint succeeds.
In the light of the findings in paragraph 6 above, the Panelist concludes that:-
· the domain name <rothschildbank.org> is confusingly similar to the trademark ROTHSCHILD of the Complainant;
· the Respondent has no rights or legitimate interests in the domain name;
· the domain name has been registered and is being used in bad faith.
Accordingly, the Panelist orders that the domain name <rothschildbank.org> be transferred to the Complainant, N.M. Rothschild & Sons Limited.
Dated: October 1, 2001