WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rockefeller & Co., Inc. v. Robin Williams, David Rockefeller Business
Case No. D2017-1803
1. The Parties
Complainant is Rockefeller & Co., Inc. of New York, New York, United States of America (“United States”), represented by Fross Zelnick Lehrman & Zissu, PC, United States.
Respondent is Robin Williams, David Rockefeller Business of Smyrna, Georgia, United States.
2. The Domain Name and Registrar
The disputed domain name <davidrockefellerbusiness.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2017. On September 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 21, 2017, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 19, 2017.
The Center appointed Christopher S. Gibson as the sole panelist in this matter on October 26, 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
Rockefeller is the name of a prominent family in the United States. John D. Rockefeller established an American industrial, banking, and political dynasty that made one of the world’s largest private fortunes in the oil business during the late 19th and early 20th centuries, primarily through the Standard Oil Company. In 1882, John D. Rockefeller established an office to manage his family’s assets, as well as to create and sustain wealth for future generations. The office provided investment management and financial counseling services for the Rockefellers and related organizations. Since 1979, Complainant Rockefeller & Co., the successor to this office and a subsidiary of Rockefeller Financial Services, Inc., has expanded services by offering them to the general public. Rockefeller & Co. registered with the U.S. Securities and Exchange Commission as an investment adviser in 1980 and chartered trust companies in New York and Delaware in 1985 and 1997, respectively. David Rockefeller was the grandson of John D. Rockefeller and once served as the Chief Executive Officer (CEO) of Chase Manhattan Corporation (now JP Morgan Chase); he passed away on March 20, 2017.
Today, Complainant offers wealth planning, investment management, investment advice, trust services, and family office services to individuals and families, family offices, nonprofit organizations, foundations, endowments, and other institutions. Complainant and its affiliated companies have assets under advisement of approximately USD 16.2 billion as of June 30, 2017. Complainant’s website at “www.rockco.com” features prominent use of the ROCKEFELLER mark.
In addition to the renown associated with the Rockefeller family name, Complainant has obtained trademark registrations incorporating its ROCKEFELLER marks in more than 50 countries around the world. Complainant owns the following registrations for its ROCKEFELLER marks in the United States in connection with a variety of goods and services, including Complainant’s wealth planning, investment advisory, asset management, fiduciary and family office services:
- ROCKEFELLER, registration no. 3809398, registered June 29, 2010.
- ROCKEFELLER & CO, registration no. 3414179, registered April 22, 2008.
Respondent registered the Domain Name on April 21, 2017. The Domain Name currently resolves to a website titled “DAVID ROCKEFELLER BUSINESS We Shock Your Business”, which claims that Respondent is “[t]he CEO of David Rockefeller Business” and provides a hyperlink to Respondent’s personal website.
5. Parties’ Contentions
Complainant states that Respondent registered the Domain Name on April 21, 2017, long after Complainant had secured rights to its ROCKEFELLER marks in the United States and around the world. On the website to which the Domain Name resolves, Respondent claims to be a successful business woman and CEO of “David Rockefeller Business.” Searches of businesses registered with the Georgia Corporations Division, however, show no companies in Georgia state registered under that name, let alone any companies for which “Robin Williams” or “Robin Victoria Williams” is listed as an agent or officer.
When the Domain Name first came to Complainant’s attention in May 2017, visitors to the site linked to it Domain Name were redirected to a website selling tickets for USD 1,300 per person to the “Rockefeller’s Ball,” an event scheduled for December 18, 2018 at The Plaza hotel in New York, the United States. Complainant never authorized the use of the ROCKEFELLER marks in connection with this event nor was it aware that the event, purportedly benefiting The Rockefeller Foundation, was set to occur. Upon receipt of a complaint regarding this event from Complainant, which was sent to the ticketing site “www.eventbrite.com”, the name of the event was changed to “Ball” and no longer claimed any affiliation with The Rockefeller Foundation, but rather the revised site stated that the event would benefit “The Foundation.” Respondent also once had Twitter and Facebook social media accounts that used the ROCKEFELLER marks without permission, but both accounts have been terminated.
Complainant states that Respondent also uses the ROCKEFELLER marks in connection with a podcast that she promotes at “www.blogtalkradio.com/davidrockefellerbusiness.” One of the podcast episodes, Rockefeller’s Ball, describes the event as one that will “go like a Rockefeller should go.” In the Rockefeller’s Ball podcast, Respondent claims that David Rockefeller chose Ms. Williams to “get his email and his domain name” in his will. This statement is false. Respondent’s only other explanation for her registration of the Domain Name and use of “David Rockefeller Business” as her trade name is, as indicated in her Twitter account, that “David Rockefeller is very near and dear to me.” Complainant asserts that this alone is not a legitimate basis for her bad faith use and registration of the Domain Name.
Complainant states that on June 7, 2017, Complainant’s counsel sent a cease-and-desist letter to Respondent concerning her infringing use and registration of the Domain Name. Having received no response, a second cease-and-desist letter was sent to Respondent on June 27, 2017. To date, no response to that letter has been received. Complainant contends that Respondent cannot demonstrate any legitimate basis for her selection and use of the name “David Rockefeller Business” or her registration of the Domain Name, both of which incorporate, in its entirety, Complainant’s ROCKEFELLER trademark.
(i) Identical or confusingly similar
Complainant’s basis for its Complaint is its use, registration, and ownership of the ROCKEFELLER trademark, as well as numerous trademarks and domain names incorporating the ROCKEFELLER mark. Complainant states that as a result of decades of use, substantial investment in promoting its services, and a high volume of wealth managed by Complainant, the ROCKEFELLER marks and the Rockefeller name generally have become assets of significant value, identifying Complainant’s services exclusively.
Complainant states that the Domain Name is confusingly similar to the ROCKEFELLER trademark, as <davidrockefellerbusiness.com> incorporates the ROCKEFELLER trademark in its entirety. The addition of the terms “David” and “business” to the ROCKEFELLER trademark does not distinguish the Domain Name from the ROCKEFELLER trademark, as the addition of such common terms to a trademark, particularly terms that reference the mark owner or its goods or services, does not alleviate confusion. In fact, the addition of “business” to the ROCKEFELLER mark actually enhances the likelihood of confusion given the history of the Rockefeller family’s involvement in the oil, banking, financial management and other businesses.
(ii) Rights or legitimate interests
Complainant submits that Respondent cannot demonstrate or establish any legitimate interest in the Domain Name. Complainant and Respondent have no apparent relationship that would give rise to any license, permission or other right by which Respondent could own or use any domain name incorporating or confusingly similar to the ROCKEFELLER trademark. Respondent has falsified her claim that David Rockefeller bestowed any rights to her in his will. Respondent’s mere admiration of a famous business figure like David Rockefeller or a globally renowned business such as Complainant and its well-known ROCKEFELLER mark fails to establish a legitimate interest in the Domain Name, as it is not being used in any legitimate manner given the redirection of the Domain Name to a website at which Respondent promotes her own commercial business ventures. There is no indication that Respondent ever has been known by the Domain Name, which is further evidence that Respondent has no legitimate interest or rights in it.
The Domain Name was registered on April 21, 2017, long after Complainant’s ROCKEFELLER marks were first used in 1979, and long after the marks were first registered in the United States. Given that Complainant’s adoption and extensive use of the ROCKEFELLER trademark predates Respondent’s registration of the Domain Name, the burden is on Respondent to establish its rights or legitimate interests in the Domain Name.
Respondent cannot demonstrate or establish any such right or legitimate interest. Upon information and belief, Respondent’s only use of the Domain Name is in connection with the conduct described above – in association with a website that creates the false impression that Respondent is somehow associated with Complainant. Since receipt of Complainant’s initial correspondence and multiple complaints concerning her use of the mark at Facebook, Twitter and Eventbrite, Respondent’s website at the Domain Name has continued to use the ROCKEFELLER marks, despite the complete failure to demonstrate a bona fide offering of goods or services or a legitimate interest in the Domain Name.
Complainant asserts that when users attempt to visit Respondent’s website currently visible at the Domain Name, consumers will reasonably but mistakenly believe that Respondent’s website is somehow related to or approved by Complainant, when that is not the case. It is certainly likely that someone looking for business, investment or wealth management advice would see the website associated with the Domain Name and not realize that the website was not affiliated with Complainant.
(iii) Registered and used in bad faith
Complainant states that Respondent has no connection with Complainant or any of its member companies or with any legitimate use of its ROCKEFELLER marks, which is evidence of bad faith. The ROCKEFELLER mark enjoys widespread recognition and Respondent adopted the Rockefeller name to capitalize on Complainant’s reputation. Complainant contends that given the fame of the ROCKEFELLER mark and the fact that the Domain Name is so obviously connected with Complainant’s mark, Registrant’s bad faith may be presumed. Respondent’s use of the Rockefeller name was based on the delusion that rights in the ROCKEFELLER mark had been granted to Respondent in the will of David Rockefeller. Complainant has confirmed that Respondent is not mentioned or referred to in any manner in that document.
Respondent continues to use the Rockefeller name for no reason other than to cause confusion and trade off on the fame of Complainant and the Rockefeller family. Such behavior demonstrates both bad faith registration and use of the Domain Name. Complainant requests that the Domain Name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(iii) Respondent has registered and is using the Domain Name in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has established rights in its ROCKEFELLER trademark, based on its trademark registrations and use in the United States.
Further, the Panel determines that Domain Name is confusingly similar to the ROCKEFELLER mark, as the Domain Name incorporates the mark in its entirety, while the addition of the terms “david” and “business” do not prevent a finding of confusing similarity. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.
Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
Here, the Panel finds that Complainant has made out a prima facie case, while Respondent has failed to respond to the Complaint. The Panel finds that Complainant has not authorized Respondent to use its ROCKEFELLER trademark; that Respondent is not commonly known by the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services – instead, the Domain Name is linked to a website that once purported to sell tickets for an event, the “Rockefeller’s Ball,” and which now continues to use Complainant’s ROCKEFELLER mark, which Respondent was not authorized to promote.
Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.
Here, the Panel finds that the Domain Name was registered and is being used in bad faith. The Panel observes that Respondent registered the Domain Name, which incorporates Complainant’s ROCKEFELLER trademark in its entirety, along with the words “David” and “business,” which, when used in the Domain Name in combination with the ROCKEFELLER mark, reinforce a connection to Complainant. As evidenced by screenshots annexed to the Complaint, the Domain Name was once linked to a website that purported to sell tickets for the Rockefeller’s Ball. The Domain Name is now linked to a website that misleadingly suggests an affiliation between Respondent and Complainant. Thus, given the fame of the ROCKEFELLER trademark and the fact that the Domain Name is so obviously connected with Complainant’s mark, the Panel finds the only logical conclusion is that Respondent targeted Complainant and its ROCKEFELLER mark when registering the Domain Name, and is using it with the intent to trade on the reputation of Complainant’s brand to attract Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s brand, for commercial gain. This is use in bad faith. See e.g., Worldpay Limited v. Surojit Manna, Worldpay, WIPO Case No. D2017-0160.
Finally, in this case where Respondent failed to submit a Response, Respondent’s failure to respond also to either of the two cease-and-desist letters sent by Complainant is further evidence of bad faith. See RRI Financial, Inc. v. Chen, WIPO Case No. D2001-1242.
In conclusion, the Panel determines that, for all of the above reasons, the Domain Name was registered and is being used in bad faith. Accordingly, Complainant has satisfied the third element of the Policy
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 <davidrockefellerbusiness.com> be transferred to Complainant.
Christopher S. Gibson
Date: November 27, 2017