WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
N. M. Rothschild & Sons Limited, Baron Philippe de Rothschild SA, Société Civile de Château Lafite Rothschild v. Beroca Holdings B.V.I. Limited
Case No. D2007-1055
1. The Parties
The Complainants are:
- N. M. Rothschild & Sons Limited, London, United Kingdom of Great Britain and Northern Ireland,
- Baron Philippe de Rothschild SA, Pauillac, France,
- Société Civile de Château Lafite Rothschild, Bordeaux, France,
represented by Giles Pratt, Freshfields, Bruckhaus, Deringer, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Beroca Holdings B.V.I. Limited, London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Names and Registrar
The disputed domain names <nmrothschild.mobi> and <rothschild.mobi> are registered with EuroDNS S.A.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 18, 2007. On July 20, 2007, the Center transmitted by email to EuroDNS S.A. a request for registrar verification in connection with the Domain Names at issue. On July 23 and 24, 2007, EuroDNS S.A transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 24, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 14, 2007.
The Center appointed Nicoletta Colombo as the sole panelist in this matter on August 20, 2007. 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 Rothschild Continuation Holdings AG and its subsidiaries, which include the First Complainant (The Rothschild Banking Group), are operating since over 200 years. The Rothschild Banking Group is an international organization with offices all over the world which, under the Rothschild name, offers services to its clients like resource banking, investment banking, private banking, treasury, asset management and trust services.
The Second and Third Complainants and their subsidiaries (the Rothschild Wine Group) are engaged in the production and worldwide distribution of a broad range of wines produced from vineyards in the Bordeaux, France. The Complainants and other members of the Rothschild Group own several trademarks for ROTHSCHILD and NM ROTHSCHILD AND SONS. The Rothschild Group advertises and markets its services on websites: “www.nmrotschild.com”, “www.rothschild.co.uk” and “www.rothschild.com”.
The Respondent has registered the contested domain names on September 26, 2006.
5. Parties’ Contentions
The Complainant contends the following:
The contested Domain Names are confusingly similar to the trademarks of the Complainants because they reproduce the Complainants’ trademarks.
The Respondent has no rights or legitimate interests in respect of the Domain Names because:
- there is no relationship between the Respondent and the Complainants
- the Respondent has not received any license or authorization from the Complainants to use their names and trademarks and to register and use the disputed Domain Names
- the Domain Names were registered and are being used in bad faith because:
the Respondent is not making any legitimate non-commercial or fair use of the Domain Names because the Respondent uses the Domain Names to display sponsored links to third party relating to the same services and products of the Complainants.
- the only reason for registering and using the contested Domain Names is to benefit from the reputation of the trademark ROTHSCHILD and illegitimately trade on its fame for commercial gain and profit.
- the Respondent, after being informed of the Complainants’ rights in the trademarks, refused to transfer the Domain Names for its out of pocket costs but requested a payment of USD 4,000.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Domain Name <rothschild.mobi> is identical to the trademark in which the Complainants have rights and the adding of the suffix “.mobi” which is a necessary component of the Domain Name, does not add any distinctiveness (see e.g., Crédit Industriel et Commercial SA v. Name Privacy, WIPO Case No. D2005-0457).
Also the Domain Name <nmrothschild.mobi> is confusingly similar to the trademark in which the Complainants have rights because it incorporates the letters “nm” and the word “Rothschild”, which constitute the heart of the Complainants’ trademarks. Also for this Domain Name the adding of the suffix does not give any distinctiveness.
There is no doubt that the contested Domain Names are confusingly similar to the trademarks of the Complainants. Therefore, the Panel finds that Complainants have satisfied the first element of the Policy.
B. Rights or Legitimate Interests
The Complainants have several trademarks registrations for ROTHSCHILD and NMROTHSCHILD all over the world. Therefore it has been proved that the Complainants have rights in the above mentioned trademarks.
The Respondent has not filed any response in this case. There is prima facie indication in the evidence before the Panel that there are no rights or legitimate interests on the part of the Respondent in the domain names, see paragraph 4(c) of the Policy.
Moreover, the Complainants have not licensed or otherwise permitted or authorized the Respondent to use their trademarks, or to apply for or to use the domain names incorporating said marks.
Under these circumstances, the Panel finds that the Complainants have satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Based on the evidence presented by the Complainants, the Panel considers that the Respondent registered and used the disputed Domain Names in bad faith.
As sufficient evidence of registration and use in bad faith, the Panel finds that the Respondent at the beginning used the contested Domain Names to display sponsored links to third party relating to the same services and products offered by the Complainants and therefore had registered the Domain Names in dispute, with the intent to profit from the reputation of the famous trademarks of the Complainants.
After some time, the Respondent made inactive the contested Domain Names, but this behavior can not be considered a bona fide use of the Domain Names in dispute.
After having been informed by the Complainants of their rights on the trademarks ROTHSCHILD and NMROTSCHILD, and their offering to buy the Domain Names paying all the costs of registrations, the Respondent requested a payment of USD 4000 to transfer the Domain Names. The offer to sell the Domain Names for an amount of money which is in excess of the documented out-of-pocket costs, together with the other cited elements, establishes that the Domain Names have been registered in bad faith (see Advanced Magazine Publishers Inc. v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2007-0026, and CBS Broadcasting, Inc. v. Gaddoor Saidi, WIPO Case No. D2000-0243).
Moreover the Respondent has registered several domain names that are identical and/or confusingly similar to well-known trademarks in which third parties have right like e.g. <kuoni.mobi>, <kurtgeiger.mobi> and <condenast.mobi> (see Kuoni Resien Holding AG v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2007-0216; Kurt Geiger Limited v. Beroca Holdings B.V.I. Limited, WIPO Case No. D2007-0195).
The Panel finds that the Complainants have demonstrated that the Domain Names were registered and are being used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <nmrothschild.mobi> and <rothschild.mobi> be transferred to the First Complainant N. M. Rothschild & Sons Limited.
Dated: September 3, 2007