WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

N. M. Rothschild & Sons Limited v. Name Redacted

Case No. D2017-0922

1. The Parties

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

The Respondent is name redacted.1

2. The Domain Name and Registrar

The disputed domain name <rothschildwm.com> is registered with Shinjiru MSC Sdn Bhd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 8, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. After several reminders, on May 19, 2017, the Registrar 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” 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 May 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 8, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 9, 2017.

The Center appointed George R. F. Souter as the sole panelist in this matter on June 21, 2017. 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.

The Complainant alleges that the disputed domain name has been falsely registered in the name of its own subsidiary, by an unknown third party, without its consent. In accordance with paragraph 3(b)(v) of the Rules, the Complainant has cited this entity as the Respondent on the basis that the Registrar’s WhoIs database refers to it, as the registrant of the disputed domain name, and requests that references in the Complaint to the Respondent should be deemed to refer to the unknown third party who wrongly registered the disputed domain name in the name of its subsidiary. The Panel agrees to this request and to the name redaction request.

4. Factual Background

The Complainant and its group, the Rothschild & Co group, is a well known provider of financial services under the name ROTHSCHILD throughout the world. Details of the financial operations of the Complainant and its group have been supplied to the Panel. The Complainant has supplied details of its various registrations of its ROTHSCHILD trademark (e.g., German trademark registration No. 1041063, registered on November 24, 1982) to the Panel.

The disputed domain name was registered on March 21 2016, and has been used in connection with e-mails.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the disputed domain name is confusingly similar to its ROTHSCHILD trademark, merely adding the descriptive or non-distinctive element “wm” plus the generic Top-Level Domain (“gTLD”) indicator “.com” to its ROTHSCHILD trademark.

The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that the Respondent falsely registered the disputed domain name in the name of its subsidiary without the knowledge or consent of the Complainant or its group. The Complainant states that it has no connection whatsoever with the registrant of the disputed domain name, and has never given permission to the said registrant to use its ROTHSCHILD trademark, in connection with domain name registration or otherwise. The Complainant alleges that the said registrant lacks rights or legitimate interests in the disputed domain name.

The Complainant alleges that the disputed domain name was registered in bad faith, and, in connection with use in bad faith, draws the Panel’s attention to the decision in Accenture Global Services Limited v Domains by Proxy LLC/Name Redacted, WIPO Case No. D2013-2099 and other cases, and alleges that fraudulent registration of a disputed domain name by an unknown third party constitutes use of that domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

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

A. Identical or Confusingly Similar

The Panel recognizes the Complainant’s trademark ROTHSCHILD as being well known.

It is well established in prior decisions under the UDRP that gTLD indicators (e.g., “.com”, “.info”, “.net”, “.org”) may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name. The Panel agrees with this view and considers the gTLD indicator “.com” to be irrelevant in the present case.

It is also well established in prior decisions under the UDRP that the mere addition of a descriptive or non-distinctive element to a trademark in which a complainant has rights is insufficient to avoid a finding of confusing similarity. In the circumstances of the present case, where the added element “wm” could be used as a mere abbreviation of “wealth management”, the Panel finds that it is a descriptive or non-distinctive element, and, accordingly, finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.

The Panel regards the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case.

Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name may lead, in appropriate circumstances, to a finding that a disputed domain name was registered in bad faith. The Panel regards the circumstances of the present case, in which the only differences between the Complainant’s trademark and the disputed domain name are so trivial as not to evade a finding of confusing similarity, as sufficient to justify a finding that the disputed domain name has been registered in bad faith, and the Panel, according, finds that the disputed domain name was registered in bad faith.

The Panel, agrees with the panel in Accenture Global Services Limited v Domains by Proxy LLC/Name Redacted, supra that unknown third party registration of a disputed domain name registered in bad faith constitutes use of that domain name in bad faith and, accordingly, finds that the disputed domain name is being used in bad faith in the circumstances of the present case, where the disputed domain name was fraudulently used in connection with an e-mail to the possible serious detriment to the Complainant, and consequently finds that the Complainant has satisfied the dual requirements of paragraph 4(a)(iii) of the Policy.

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, <rothschildwm.com>, be transferred to the Complainant.

George R. F. Souter
Sole Panelist
Date: July 6, 2017


1 As it appears the Respondent has fraudulently used Complainant’s subsidiary name when registering the disputed domain name, the Panel has decided that no purpose can be served by including the named Respondent in this decision, and has therefore redacted the Respondent’s name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published due to exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.