WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
N. M. Rothschild & Sons Limited v. Domain Administrator, PrivacyGuardian.org / Albert Rothschild
Case No. D2018-0652
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 Respondent is Domain Administrator, PrivacyGuardian.org of Phoenix, Arizona, United States of America / Albert Rothschild of Zurich, Switzerland.
2. The Domain Name and Registrar
The disputed domain name <rothschildglobaladvisory.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2018. On March 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 25, 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 March 28, 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 March 29, 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 April 3, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondents’ default on April 25, 2018.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on May 4, 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, and the Rothschild & Co group more generally, provide financial services on a worldwide basis. It provides its services under the Rothschild name and has established substantial goodwill and reputation in the name and trademark ROTHSCHILD.
The Complainant and other members of the Rothschild & Co group are the owners and registered proprietors of a number of registrations for the trademark ROTHSCHILD. There are arrangements in place through which the Complainant is licensed to use the ROTHSCHILD trademark where registrations are held by other members of the Rothschild & Co group.
The Complainant is the registered owner of the following trademarks, amongst many others: Registered Benelux trademark No. 542652 ROTHSCHILD for classes 16, 35, 36; Registered European Union trademark No 000206458 ROTHSCHILD in classes 14, 35, 36, (April 2, 1996); China trademark No. 771133 ROTHSCHILD for class 36 (September 30, 1993); Registered Swiss trademark 410382 ROTHSCHILD in classes 35,36 35 (April 1,1993); Registered United Kingdom trademark No. 1285832 ROTHSCHILD in class 36 (October 1, 1986): and Registered United States of America trademark No. 3447667 ROTHSCHILD in classes 35 and 36 (March 26, 2007).
The Complainant is the registrant of the domain name <rothschild.com> (among others). The disputed domain name was registered on January 15, 2018. As at March 23, 2018, the disputed domain name resolves and redirects to the Complainant’s website.
5. Parties’ Contentions
The Complainant says that it is a leading provider of financial services for over two hundred years. It provides its various banking services under the Rothschild name in which it has established substantial goodwill and reputation. It has invested substantial sums in developing and marketing its services under the ROTHSCHILD trademark. The Complainant asserts that its rights in the ROTHSCHILD trademark predate the Respondent’s registration of the disputed domain name. According to the Complainant, the ROTHSCHILD trademark is extremely well-known in connection with the Rothschild & Co group. The Complainant says that it actively protects its marks, by monitoring unauthorized uses and by implementing an active enforcement policy, including by way of the UDRP.
The Complainant submits that the disputed domain name is confusingly similar to the trademarks in which it has rights. It incorporates the trademark ROTHSCHILD in its entirety, without any variation, followed by the term “globaladvisory”. The latter is a core business division of the Complainant’s group, offering strategic M&A advice and financial solutions. The Complainant maintains that for that reason the addition of “globaladvisory” to the ROTHSCHILD trademark in the disputed domain name increases the likelihood of confusion by suggesting a real connection with the Global Advisory business operated by members of the Rothschild & Co group. According to the Complainant there is therefore a real risk that Internet users will believe that there is a connection between the disputed domain name and the Complainant.
The Complainant asserts that the Respondent is not currently using, and has not used (or made demonstrable preparations to use) the disputed domain name in connection with a bona fide offering of goods or services (ant that the Respondent could not do so). As at March 23, 2018, the disputed domain name resolved and redirected to the Complainant’s website, which shows that the Respondent is aware of the Complainant’s rights in the “Rothschild” name; and that it is only using the disputed domain name in order to suggest a connection with the Complainant, rather than in connection with any bona fide offering of goods or services. The Complainant also maintains that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name, but rather that the Respondent’s motive for registering the disputed domain name are commercial. The Complainant refers the Panel to section 2.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which states that a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner.
The Complainant contends that the disputed domain name was clearly registered to “impersonate” the Complainant’s name and mark, which is extremely well-known in connection with the Rothschild & Co group and has substantial goodwill and reputation attaching to it. The Complainant submits that the Respondent must have been aware of the Complainant’s rights at the time it registered the disputed domain name, as evidenced by the fact that the disputed domain name redirects to the Complainant’s website and the Respondent used the contact details of the Complainant’s office in Zurich to register the disputed domain name.
The Complainant asserts that the disputed domain name is confusingly similar to the ROTHSCHILD trademark and the Complainant’s Global Advisory business. Therefore, according to the Complainant, Internet users who access the website to which the disputed domain name resolves are likely to be misled into believing that it is affiliated to, endorsed by or otherwise connected to the Complainant or its group. As a result, so the Complainant contends, the mere registration of the disputed domain name by the Respondent indicates bad faith on their part.
According to the Complainant, the disputed domain name is being used by the Respondent to impersonate the Complainant’s group, by means of a redirect to the Complainant’s website and by displaying the disputed domain name on a fraudulent LinkedIn profile; and by the use of a main privacy service and false information to obfuscate the identity of the true registrant. The fact that the disputed domain name redirects Internet users to the Complainant gives the false impression that it is connected to the Complainant. The Complainant says that it is more likely than not that the disputed domain name has been registered to facilitate phishing or other fraudulent activities (e.g., to send emails from addresses associated with the disputed domain name).
The fact that the disputed domain name is prominently displayed on the LinkedIn company profile for “Rothschild Global Advisory” (the LinkedIn Profile) further supports this claim. The Complainant has no connection with this LinkedIn Profile and has not consented to the use of the Rothschild trademark or the name “Rothschild Global Advisory”. According to the Complainant, the LinkedIn Profile is being used to fraudulently impersonate the Complainant’s group. This is done by using the Rothschild trademark and name ‘Rothschild Global Advisory’ and by copying text taken verbatim from the Complainant’s website.
Further, the Complainant points out that the disputed domain name has been registered using a domain privacy service. Use of such a service is consistent with an inference of bad faith in registering and using a domain name, according to the Complainant. The fact that the disputed domain name has been registered by way of a domain privacy service to obscure the identity of the beneficial registrant further supports the Complainant’s submission that the disputed domain name has been registered in bad faith. The Complainant also points out that different registrant information became available during the proceeding indicating that one “Albert Rothschild” was the registrant. The underlying registrant was subsequently joined as Respondent, but the Complainant submits that this registrant information is false, which amounts to further evidence of the Respondent’s bad faith. The Complainant points out that the postal address and telephone number of this person are actually the postal address and telephone number of the Complainant’s group’s office in Zurich. Finally, the Complainant says that the Respondent has also registered and is using the email address “rothschildglobaladvisory@[…].com”, which supports the contention that it is likely that the disputed domain name is being used as part of a fraud.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant’s ROTHSCHILD trademark. However, that distinctive mark is incorporated in the disputed domain name in its entirety and as its first and most prominent part. The addition of generic terms descriptive of the Complainant’s activities does not prevent a finding of confusing similarity. See Section 1.8 of the WIPO Overview 3.0.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s ROTHSCHILD trademark.
B. Rights or Legitimate Interests
There is nothing before the Panel to indicate that the Respondent has rights or legitimate interests in the disputed domain name. Although the underlying registrant revealed by the Registrar goes by the name Albert Rothschild, the Complainant points out that the information relating to this person is false as the postal address and telephone number are actually the postal address and telephone number of the Complainant’s group offices in Zurich, Switzerland. It is highly unlikely in the circumstances, also given the use of a privacy shield service, that the true Respondent is really called Albert Rothschild. The Complainant also puts evidence before the Panel that the Respondent has used the disputed domain name in various ways that indicate the desire to gain an unfair and dishonest advantage from registering the disputed domain name, rather than for the purpose of engaging in legitimate activities based on a genuine connection with the mark and name ROTHSCHILD.
Therefore the Panel holds that the Respondent does not have rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant’s ROTSCHILD trademark is distinctive in the sector of banking and financial services, and has been in use for two hundred years to distinguish the Complainant’s services from those of other financial institutions. It is inconceivable that the Respondent was unaware of the Complainant’s mark at the time of registration of the disputed domain name, a conclusion further reinforced by the inclusion of the terms ‘global advisory’. These are terms descriptive to some extent of the Complainant’s banking and financial advice services, which span the globe, and are also terms publicly used by the Complainant to identify one of its business entities.
Further, the Respondent has established a website to which the disputed domain name resolves that links back to the Complainant’s legitimate web presence. This gives a false impression of a legitimate connection with the Complainant, an impression the Respondent has apparently sought to exploit also by registering and using an email address which can mislead Internet users into thinking they are receiving emails from the Complainant. Accordingly, the Respondent is not acting in good faith, but rather has embarked upon some fraudulent scheme where the Respondent seeks to impersonate the Complainant and profit from the deception practiced on Internet users.
Therefore the Panel holds that the Respondent registered and is using the disputed domain name in bad faith.
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 <rothschildglobaladvisory.com> be transferred to the Complainant.
William A. Van Caenegem
Date: May 15, 2018