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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Holding Benjamin et Edmond de Rothschild, Pregny Société Anonyme v. Harry Guto

Case No. D2021-0707

1. The Parties

The Complainant is Holding Benjamin et Edmond de Rothschild, Pregny Société Anonyme, Switzerland, represented by OX Avocats, France.

The Respondent is Harry Guto, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <edmondderothschildpmb.com> (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2021. On March 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 10, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 12, 2021 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 15, 2021.

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 March 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 14, 2021.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on April 21, 2021. 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 an international banking group created, in 1953.

The Complainant owns trademark registrations for containing EDMOND DE ROTHSCHILD, including the French trademark registration number 093701735, registered on December 29, 2009, and the International trademark registration number 1046701, registered on June 21, 2010.

The Domain Name was registered on Jan 25, 2021. At the time of drafting the decision, the Domain Name resolved to an error page. The Complainant provided evidence that the Domain Name resolved to a website appearing to offer financial services and displaying a logo of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant has documented trademark registrations. According to the Complainant, the Domain Name is confusingly similar to the Complainant’s trademark, as it fully reproduces the Complainant’s trademark, with the addition of the letters “pmb”, which is an abbreviation of “Private Merchant Banking”.

The Complainant argues that the Respondent has no rights or legitimate interests in the Domain Name. To the Complainant’s knowledge, the Respondent does not own any rights in any trademarks, nor is the Respondent commonly known under this name. There are no signs of the Respondent using the Domain Name in relation to a bona fide offering of goods or services.

Finally, the Complainant submits that the Domain Name resolved to a web page presenting a company named “EDMOND DE ROTHSCHILD PRIVATE MERCHANT BANKING LLP”, which is the same company name as the Complainant’s subsidiary. The web page also used the Complainant’s logo. The Complainant argues that this proves that the Respondent registered the Domain Name in order to attempt to attract for commercial gain Internet users to its website by creating an obvious likelihood of confusion with the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has established rights in the trademark EDMOND DE ROTHSCHILD. The test for confusing similarity involves the comparison between the trademark and the Domain Name. The Domain Name fully reproduces the Complainant’s trademark, with the addition of the letters “pmb”, which is an abbreviation of “Private Merchant Banking”. The addition does not prevent confusing similarity.

For the purposes of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”.

The Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

There is no evidence suggesting that the Respondent has any rights or legitimate interests in the Domain Name. The Complainant has not given any permission to use the trademark to the Respondent, and the Respondent is not using the Domain Name in relation to a bona fide offering of goods or services. The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name, which has not been rebutted by the Respondent.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Based on the evidence, it is likely that the Respondent knew of the Complainant’s trademark and its business when the Respondent registered the Domain Name. The Respondent has attempted to attract Internet users by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Domain Name has resolved to a web page alluring Internet users to its website by creating an obvious likelihood of confusion with the Complainant. The Respondent has not answered to the Complainant’s contentions. Furthermore, the current non-use of the Domain Name does not prevent a finding of bad faith in the circumstances of this case.

The Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the 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 Domain Name <edmondderothschildpmb.com> be transferred to the Complainant.

Mathias Lilleengen
Sole Panelist
Date: April 30, 2021

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