WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rockefeller & Co., Inc. v. Whoisproxy.com / Dennis Van Wees
Case No. D2018-0182
1. The Parties
The 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.
The Respondent is Whoisproxy.com of Alexandria, Virginia, United States / Dennis Van Wees of New York, New York, United States.
2. The Domain Name and Registrar
The disputed domain name <rockefellercapital.com> is registered with Key-Systems GmbH (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 29, 2018. On January 30, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 31, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 31, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 2, 2018.
The Center verified that the Complaint together with the amended 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 February 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 27, 2018.
The Center appointed Evan D. Brown as the sole panelist in this matter on March 6, 2018. 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 offers wealth planning, investment management, investment advice, trust services, family office services, and information management of the large volume of financial data associated with these services to individuals and families, family offices, nonprofit organizations, foundations, endowments, and other institutions. It owns numerous registrations for the mark ROCKEFELLER in jurisdictions around the world, including United States Reg. No. 3809398 (June 29, 2010) for various financial and related services, with an alleged date of first use in commerce of December 21, 1979.
The information in the Complaint is not clear as to when the disputed domain name was first registered. It appears, however, that it was registered at least as early as August 10, 2005, and was, as of May 29, 2012, registered in the name of the Respondent, Dennis Van Wees. Thereafter, the Respondent used a privacy protection service in connection with its ownership of the disputed domain name. The disputed domain name has been used in connection with a website purporting to promote a "full-service wealth and management firm".
5. Parties' Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant's registered trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
The Panel finds that all three of these elements have been met in this case.
A. Identical or Confusingly Similar
The Complainant undoubtedly has rights in the ROCKEFELLER mark, both from its trademark registrations as well as its long term and widespread use of the mark, which predates the registration of the disputed domain name by many years. The disputed domain name is confusingly similar to the ROCKEFELLER mark. The disputed domain name contains the mark in its entirety, next to the generic term "capital". This additional material (along with the generic Top-Level Domain ".com") does nothing to meaningfully distinguish the disputed domain name from the Complainant's mark for purposes of the Policy. Accordingly, the Panel finds in favor of the Complainant on this first element.
B. Rights or Legitimate Interests
The Complainant will be successful under this element of the Policy if it makes a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name, and if that prima facie showing remains unrebutted by the Respondent. The Panel notes the Complainant's assertions that using the disputed domain name to establish a website to confuse potential investors is not a bona fide offering of goods or services. The Complainant also asserts that the Respondent has not been commonly known by the disputed domain name, and has not otherwise acquired any trademark rights related to the disputed domain name. These assertions establish the Complainant's prima facie case. The Respondent has not answered the Complainant's assertions, and, seeing no basis in the record to overcome the Complainant's prima facie showing, the Panel finds that the Complainant has satisfied this second Policy element.
C. Registered and Used in Bad Faith
Because the Complainant's ROCKEFELLER mark is well known, particularly in relation to financial services, it is implausible to believe that the Respondent was not aware of that mark when it registered the disputed domain name. In the circumstances of this case, such a showing is sufficient to establish bad faith registration of the disputed domain name. Bad faith use is clear from the Respondent's activities of using the disputed domain name to publish a website for services very similar to those offered by the Complainant under the ROCKEFELLER mark. For these reasons, the Panel finds that the Complainant has successfully met this third UDRP element.
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 <rockefellercapital.com> be transferred to the Complainant.
Evan D. Brown
Date: March 26, 2018