WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
N. M. Rothschild & Sons Limited v. John Williams, Charles Hamilton
Case No. D2017-1439
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 LLP, United Kingdom.
The Respondents are John Williams (the “First Respondent”) and Charles Hamilton (the “Second Respondent”), both of Harlow, United Kingdom.
2. The Domain Names and Registrar
The disputed domain names <rothschild-am.com> (the “First Disputed Domain Name”) and <rothschildpw.com> (the “Second Disputed Domain Name”) are referred to together as the “Disputed Domain Names” and are both 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 July 25, 2017. On July 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 31, 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 August 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2017. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 23, 2017.
The Center appointed Nick J. Gardner as the sole panelist in this matter on August 25, 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.
4. Factual Background
The Complainant is part of the Rothschild & Co group, a well-known provider of financial services on a worldwide basis. The Rothschild & Co group has been providing financial services for over two hundred years. In particular, it provides mergers and acquisitions, strategy and financing advice, as well as investment and wealth management solutions to large institutions, families, individuals and governments. The Rothschild & Co group provides its services under the “Rothschild” name and the filed evidence establishes that it has substantial goodwill and reputation in the name and trademark ROTHSCHILD. It operates a website at “www.rothschild.com” (the “Complainant’s Website”).
Various members of the Rothschild & Co group are the owners and registered proprietors of numerous registrations for the trade mark ROTHSCHILD (the “ROTHSCHILD Trademark”), including for example United Kingdom registration no. 1285832 for the word ROTHSCHILD registered in class 36 in respect of banking, financial management and various other services, registered on October 1, 1986. There are arrangements in place through which the Complainant is licensed to use the Rothschild Trademark where those registrations are held by other members of the Rothschild & Co group. The Complainant is also the registered owner of the United Kingdom trademark registration number 1168291 for the word ROTHSCHILD registered in class 14 in respect of precious metals and jewellery, registered on January 21, 1982.
The First Disputed Domain Name was registered on May 2, 2017 and the Second Disputed Domain Name was registered on June 19, 2017.
In each of the Disputed Domain Names, the ROTHSCHILD Trademark is followed by an abbreviation for a business division of the Rothschild & Co group. Specifically the First Disputed Domain Name includes ‘am’, an abbreviation for “asset management” and the Second Disputed Domain Name includes ‘pw’, an abbreviation for “private wealth”. “Rothschild Asset Management” and “Rothschild Private Wealth” are business divisions of the Complainant’s group.
The First Respondent has used an email address connected to the First Disputed Domain Name ([…]@rothschild-am.com) to send an email. The email signature suggested that he worked for Rothschild Asset Management. There is no employee with the name of the person sending the email at Rothschild Asset Management and the email was not sent on behalf of Rothschild Asset Management. The email also included the Complainant’s logo, the Complainant’s registered address, and a link to the Complainant’s Website. The email recommended that the recipient make a financial investment in a specified bond. The recipient of the email believed that it had been sent by the Complainant’s group and, as a result, transferred funds to a bank account specified by the sender of the email. On June 1, 2017, the recipient contacted the Complainant’s group when he began to suspect that he was the victim of a fraud as he had been unable to contact the person sending the email.
Each of the Disputed Domain Names has been used to redirect web searches to the Complainant’s Website.
The earlier case of N. M. Rothschild & Sons Limited v. Name Redacted, WIPO Case No. D2017-0922 (the “Previous Complaint”) concerned the domain name <rothschildwm.com> and bears a number of similarities to the present case. “WM” is an abbreviation for “wealth management”, another division of the Complainant’s business. The evidence in the Previous Complaint was that an email in substantially identical terms to that described above had been sent to innocent third parties to persuade them to transfer money to a fraudster. The Complainant was successful in the Previous Complaint.
5. Parties’ Contentions
The Complainant’s contentions can be summarized as follows.
The Disputed Domain Names are each similar to the ROTHSCHILD Trademark and simply combine the ROTHSCHILD Trademark with an abbreviation for a business division of the Complainant.
The Respondents have no rights or legitimate interests in the term “Rothschild”.
The Disputed Domain Names have been registered and are being used in bad faith. The Complainant says the Disputed Domain Names have been registered as part of a fraud (as was the domain name in the Previous Complaint). There is actual evidence of the First Disputed Domain Name being used fraudulently and the Second Disputed Domain Name has clearly been registered as part of the same fraud. Use of the Disputed Domain Names to commit fraud amounts to registration and use in bad faith within the meaning of the Policy.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
Preliminary Issue – Lack of Response
The Panel notes that no communication has been received from the Respondents. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondents’ failure to file any Response. While the Respondents’ failure to file a response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
Preliminary Issue - Consolidation
In the present case:
1. The Disputed Domain Names and the domain name in the Previous Complaint share the same naming pattern combining the ROTHSCHILD Trademark with an abbreviation for a division of the Complainant’s business.
2. The First and Second Respondents have provided addresses in the same street.
3. The Disputed Domain Names are each registered with the same Registrar.
4. The Disputed Domain Names have each been used to redirect web traffic to the Complainant’s Website.
5. The First Disputed Domain Name and the domain name in the Previous Complaint have each been used in connection with fraudulent emails in substantially identical terms.
These similarities go beyond coincidence. The Panel concludes that on the balance of probabilities the Disputed Domain Names are under common control and part of a deliberate fraudulent scheme to seek to obtain money by impersonating the Complainant (as discussed further below). Accordingly the Panel considers it is fair and equitable for the Complaint to proceed on this consolidated basis. Further, neither of the Respondents have availed themselves of the opportunity to file a Response and seek to suggest any arguments as to why the Complaint should not proceed on this basis.
To succeed in these proceedings the Complainant must make out its case under paragraph 4(a) of the Policy. Namely, the Complainant must prove in respect of each Disputed Domain Name that:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondents have no rights or legitimate interests in respect of the Disputed Domain Name (paragraph 4(a)(ii)); and
(iii) the Disputed Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trademark ROTHSCHILD.
The Disputed Domain Names are each confusingly similar to the ROTHSCHILD Trademark. The ROTHSCHILD Trademark is the dominant term in each Disputed Domain Name and is combined with a two-letter abbreviation corresponding to a business division of the Complainant.
Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy, “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also established that the addition of a generic or descriptive term (such as here abbreviations for business divisions of the Complainant) to the disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the confusing similarity (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189). See also Mastercard International Incorporated v. Eric Hochberger, WIPO Case No. D2006-1050 and MasterCard International Incorporated v. Mike Morgan, WIPO Case No. D2008-1927 to similar effect.
It is also well established that the gTLD, in this case “.com”, is not generally taken into account for the purpose of determining whether a domain name is identical or confusingly similar see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Names are each confusingly similar to the Complainant’s trademark. Accordingly the first condition of paragraph 4(a) of the Policy has been fulfilled.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondents have rights or legitimate interests in each of the Disputed Domain Names:
(i) before any notice to the Respondents of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondents have been commonly known by the domain name, even if the Respondents have acquired no trade mark or service mark rights; or
(iii) the Respondents are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondents to register or use the Disputed Domain Names or to use the ROTHSCHILD Trademark. The Complainant has prior rights in the ROTHSCHILD Trademark, which precede the Respondents’ registration of the Disputed Domain Names. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondents to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondents have failed to produce any evidence to establish their rights or legitimate interests in either of the Disputed Domain Names. Accordingly the Panel finds that the Respondents have no rights or legitimate interests in the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
The evidence filed by the Complainant establishes that on a balance of probabilities the Disputed Domain Names have been registered for use in the fraudulent impersonation of the Complainant with the intent of depriving innocent third parties of money, by tricking such third parties into believing they are dealing with the Complainant rather than an unknown fraudster.
Under the Policy evidence of registration and use in bad faith is established by, amongst other factors, circumstances which indicate that “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location” (Policy paragraph 4(b) (iv)). In the present case the Panel concludes that the deliberate use of the Complainant’s ROTHSCHILD Trademark as part of each of the Disputed Domain Names is part of a scheme intended to mislead innocent third parties into believing they are dealing with the Complainant, with the aim of fraudulently taking money from those third parties. In the present case no website is involved but email addresses connected to the Disputed Domain Names amount to “other on-line locations” within the meaning of the Policy. It is well established that a respondent’s use of email addresses associated with a disputed domain name to impersonate the complainant and to carry out fraud in the name of the complainant provides compelling evidence of registration and use of a domain name in bad faith (see for example Total S.A. v. Name Redacted, WIPO Case No. D2016-1673 and Warwickshire Oil Storage Limited v. WWOSLTD, WIPO Case No. D2016-1482).
In the present case the Panel therefore finds that the Respondents’ conduct falls squarely within the type of circumstances to which the Policy refers. Further the Respondents have been given an opportunity to provide any legitimate explanation they may have as to their conduct but none has been provided, which reinforces the Panel’s view.
The Panel finds that each of the Disputed Domain Names has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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 names <rothschild-am.com> and <rothschildpw.com> be transferred to the Complainant.
Nick J. Gardner
Date: September 6, 2017