WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
N. M. Rothschild & Sons Limited v. Privacy Service Provided by Withheld for Privacy ehf / Carolina Rodrigues, Fundacion Comercio Electronico
Case No. D2021-3914
1. The Parties
The Complainant is N. M. Rothschild & Sons Limited, United Kingdom, represented by Freshfields Bruckhaus Deringer LLP, United Kingdom.
The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.
2. The Domain Name and Registrar
The disputed domain name <rothschildanndco.com> (“Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2021. On November 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On November 23, 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 November 24, 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 November 26, 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 November 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 20, 2021.
The Center appointed Ellen Shankman as the sole panelist in this matter on January 12, 2022. 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 date of the Domain Name registration is June 9, 2021.
The Complainant claims that it has spent a considerable amount of time and money protecting its intellectual property rights. The Complainant claims first use in commerce of its trademarks at least as early as 200 years ago. The Complainant and affiliated entities of the Rothschild & Co group are the registered owners of, or otherwise have rights in, multiple trademark registrations for the ROTHSCHILD and ROTHSCHILD & CO marks (together the “ROTHSCHILD Marks”), including, inter alia: European Union Trade Mark (“EUTM”) Registration No. 000206458 for ROTSCHILD, registered on October 8, 1998 in classes 14, 35, and 36; and, EUTM Registration No. 017924819 for ROTHSCHILD & CO, registered on October 31, 2018.
The Complainant has also registered domain names containing the trademark ROTHSCHILD prior to the registration of the Domain Name. Further information about the Rothschild & Co group is available on the group’s official website at “www.rothschildandco.com” (“Complainant’s Website”).
The Complainant contends that the Domain Name redirects Internet users to various third party websites. The Panel’s independent review confirms, that the Domain Name resolves to a parking page with “Pay-Per-Click” (“PPC”) links, inter alia, to online banking and business loans – that are within the business purview of the Complainant.
5. Parties’ Contentions
The Complaint alleges that the Complainant and its group, the Rothschild & Co group, is a recognised market leader in the financial world that provides services on a worldwide basis. The Rothschild & Co group has been a leading provider of financial services for over two hundred years. In particular, it provides M&A, 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 names containing ROTHSCHILD & CO and ROTHSCHILD, and has established substantial goodwill and reputation in names and trademarks containing ROTHSCHILD & CO and ROTHSCHILD.
The ROTHSCHILD Marks are extremely well known in connection with the Complainant. The Complainant has invested substantial sums of money in developing and marketing its services under the ROTHSCHILD Marks and in protecting its rights in the ROTHSCHILD Marks. The Complainant’s rights in the ROTHSCHILD Marks predate the Respondent’s registration of the Domain Name.
The Domain Name is confusingly similar to the trademarks in which the Complainant has rights. The Domain Name incorporates the ROTHSCHILD mark in its entirety. The Domain Name incorporates the ROTHSCHILD & CO trademark in its entirety, except for replacement of the ampersand symbol “&” with the misspelled string “annd”. Previous UDRP panel decisions have found that the substitution of the string “and” for “&” in the ROTHSCHILD & CO trademark does not avoid a confusing similarity with the ROTHSCHILD Marks. In addition, previous UDRP panel decisions have found that the addition of generic letters, such as the addition of the letter “n” in the Domain Name, does not avoid confusingly similarity. Therefore, there is a real risk that internet users will believe that there is a connection between the Domain Name and the Complainant’s group. This risk is heightened by (i) the Domain Name’s incorporation, in its entirety, of the ROTHSCHILD trademark, and the incorporation, in its entirety, of the ROTHSCHILD & CO trade mark, with the replacement of “&” with “annd”; and (ii) the fact that the Domain Name is confusingly similar to the domain name for the Complainant’s Website, which means it is likely that Internet users that intend to visit the Complainant’s Website might accidentally visit the Domain Name as a result of a spelling error.
The Complainant further contends that the Respondent has no rights or legitimate interests in the Domain Name. There is no relationship between the Respondent and the Complainant. Neither “Rothschild” nor “Rothschild & Co” is a descriptive term and the Complainant has not licensed or otherwise permitted the Respondent to use the “Rothschild” name, the ROTHSCHILD & CO trademark, or the ROTHSCHILD Marks, or to register a domain name incorporating any of them. So far as the Complainant is aware, the Respondent is not a customer of the Complainant or vice versa. Furthermore, the Complainant has not found any evidence that the Respondent has been commonly known by the Domain Name.
The Respondent is not currently using, and has not used (or made demonstrable preparations to use), the Domain Name in connection with a bona fide offering of goods or services (nor could it do so). As of November 5, 2021, the Domain Name redirects to a different website at each click-through, including a website advertising car servicing and repair services, a website selling fitness equipment, a Google Play downloading page of a mobile application, and a website that allows users to “trade with crypto” at <currency.com> (the “Crypto Website”) (among others) (together, the “Websites”). The fact that the Domain Name redirects internet users to different websites at each click-through suggests that the Domain Name is using the “Rothschild” name and the ROTHSCHILD & CO trademark to misleadingly attract and divert consumers to the Websites, which might in turn provide financial benefits to the Respondent. The Respondent therefore cannot be using the Domain Name in connection with a bona fide offering of goods or services.
The Complainant submits that the Domain Name has been registered and is being used in bad faith because the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the Websites and/or other online locations, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Websites and/or other online locations. The misspelling of the “annd” in the Domain Name may be imperceptible to Internet users, and the Complainant submits that this means there is a heightened risk that the Domain Name could be used to send phishing emails to the Complainant’s customers (which could lead to financial loss for the Complainant’s customers), or be used for other fraudulent purposes, including malware distribution within the Complainant’s business or otherwise.
To summarize the Complaint, the Complainant and its affiliates are the owners of registrations for the ROTHSCHILD Marks, in respect of financial and banking services. The Domain Name is confusingly similar to the trademark owned by the Complainant. By registering the Domain Name that incorporates the ROTHSCHILD & CO mark in its entirety with the addition of the letter ‘n’ and the “.com” generic Top-Level Domain (“gTLD”), the Respondent has created a domain name that is confusingly similar to the Complainant’s trademarks, and shows that the Respondent was familiar with the Complainant’s trademarks and goods and services. The slight changes do not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical or confusingly similar to the Complainant’s trademarks. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the Domain Name.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. Since the Respondent did not respond to this Complaint, the supported facts regarding the use and reputation of the Complainant’s mark taken from the Complaint are generally accepted as true in the circumstances of this case.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the registered ROTHSCHILD Marks for the purposes of the Policy.
Further, the Panel finds that the Domain Name integrates the Complainant’s trademarks and that the Domain Name is confusingly similar to the Complainant’s trademarks. The Panel finds that the substitution of the ampersand symbol “&” with “and” and the addition of the letter “n” to the ROTHSCHILD & CO mark, or the addition of the term “anndco” to the ROTHSCHILD mark, in the Domain Name does not change the overall impression that the trademarks of the Complainant are recognisable, and it does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademarks. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005‑0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark”.
The Panel agrees with the Complainant’s contention that with regards to the ROTHSCHILD & CO mark the Domain Name is a prototypical example of typosquatting – which intentionally takes advantage of Internet users that inadvertently type an incorrect address – often a misspelling of the complainant’s trademark – when seeking to access the trademark owner’s website. This means that a deliberate misspelling of a trademark registered as a domain name, which is intended to confuse Internet users, must be confusingly similar by design. This is consistent with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.9, whichstates that “A domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”.
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademarks, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks. The Respondent is not commonly known by the Domain Name, does not have permission to use the ROTHSCHILD Marks, and is not using the Domain Name for a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Domain Name.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not rebutted, that the Respondent lacks rights or legitimate interests in the Domain Name.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Given the distinctiveness of the Complainant’s trademarks and their reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s ROTHSCHILD Marks and uses them for the purpose of misleading and diverting Internet traffic and for opportunistic fraudulent behaviour.
The Panel is convinced that the Respondent knew about the Complainant in choosing the Domain Name. The Panel is persuaded that the Respondent has demonstrated a knowledge of and familiarity with the Complainant’s brand. In light of and on balance of the facts set forth within this Complaint, the Panel finds that it is more likely than not that the Respondent knew of and targeted the Complainant’s trademarks, and that it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brand at the time the Domain Name was registered. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Panel agrees with the Complainant’s contention that indeed, the Respondent’s purpose in registering the Domain Name was probably to capitalize on the reputation of the Complainant’s trademarks.
WIPO Overview 3.0, section 3.1.4 states “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”.
The Panel’s view is that, when considering the balance of probabilities, it is more likely than not that the Respondent not only had actual knowledge of the Complainant’s trademarks and that registration of the Domain Name would be confusingly similar to the Complainant’s trademarks, but also that the use was intended to ride on the reputation of the Complainant.
In addition, the Panel believes that the Respondent’s website featuring links to third-party websites that appear to create revenue for the Respondent (PPC links) using a confusingly similar domain name is also evidence of and supports a finding of registration and use in bad faith. See WIPO Overview 3.0, section 3.5 (“Particularly with respect to ‘automatically’ generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests). Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.”). See also PRL USA Holdings, Inc. v. LucasCobb, WIPO Case No. D2006-0162 (“Respondent’s use of the Domain Name to earn referral fees by linking to other websites attracts Internet users to Respondent’s site by creating confusion as to source and results in commercial gain to Respondent. Accordingly, the Panel finds that the Domain Name was registered in bad faith”).
Given the evidence of the Complainant’s prior rights in the ROTHSCHILD Marks, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant, and the use of the Domain Name for commercial gain, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Names in bad faith, under paragraph 4(a)(iii) 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 Domain Name <rothschildanndco.com> be transferred to the Complainant.
Ellen B. Shankman
Date: January 26, 2022