WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
N. M. Rothschild & Sons Limited v. Contact Privacy Inc. Customer 12410746041 / “FAPI III”
Case No. D2021-3915
1. The Parties
The Complainant is N. M. Rothschild & Sons Limited, United Kingdom, represented by Freshfields Bruckhaus Deringer LLP, United Kingdom.
The Respondent is Contact Privacy Inc. Customer 12410746041, Canada / “FAPI III”, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <rothschildandcos.com> (“Domain Name”) is registered with Google LLC (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 24, 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 26, 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 December 1, 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 December 2, 2021. In accordance with the Rules, paragraph 5, the due date for the Response was December 22, 2021. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on December 30, 2021.
The Center appointed Jon Lang 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 Complainant was incorporated in England & Wales on January 1, 1968 and is a member of the Rothschild & Co group.
The Complainant and its group is a recognised market leader in the financial world and provides services on a worldwide basis. The Rothschild & Co group provides its services under names containing ROTHSCHILD & CO and ROTHSCHILD, and has established substantial goodwill and reputation in names and trade marks containing ROTHSCHILD & CO and ROTHSCHILD.
The Complainant and its affiliated entities are the registered owners of, or otherwise have rights in, a number of registrations for the trade marks ROTHSCHILD and ROTHSCHILD & CO (the “Rothschild Trade Marks”), including United Kingdom trade mark, number 1168291 for ROTHSCHILD, registered on January 21, 1982, and United Kingdom trade mark, number 3321370 for ROTHSCHILD & CO, registered on November 28, 2018. The Complainant is licensed to use the Rothschild Trade Marks where registrations are held by connected entities.
Rothschild & Co Continuation Holdings AG, an entity affiliated to the Complainant, is the registrant of the domain name <rothschildandco.com> (among others).
The Domain Name was registered on July 30, 2021 and does not resolve to an active website.
5. Parties’ Contentions
The following is a summary of the main assertions of the Complainant.
The Rothschild Trade Marks are extremely well known in connection with the Rothschild & Co group, which has invested substantial sums of money in developing and marketing its services under the Rothschild Trade Marks, and in protecting its rights in them.
The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant’s rights in the Rothschild Trade Marks predate the Respondent’s registration of the Domain Name.
The Domain Name is confusingly similar to the trade marks in which the Complainant has rights. The Domain Name incorporates the ROTHSCHILD trade mark in its entirety. The Domain Name also incorporates the ROTHSCHILD & CO trade mark in its entirety except for substitution of the ampersand symbol “&” with the string “and”, and the addition of the letter “s” at the end. There is therefore a real risk that Internet users will believe that there is a connection between the Domain Name and the Complainant’s group.
Moreover, the Domain Name is confusingly similar to the domain name used for the Complainant’s website (i.e. “www.rothschildandco.com”), 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 Respondent has no rights or legitimate interests in respect of 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 Trade 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 (and nor could it do so) because, as at November 3, 2021, the Domain Name does not resolve to an active website. Since the Domain Name remains inactive, the Respondent is not making any legitimate noncommercial or fair use of the Domain Name.
The Domain Name was registered and is being used in bad faith.
The Domain Name has been registered and is being used in bad faith because of the Respondent’s non-use of the Domain Name.
The Rothschild Trade Marks are extremely well-known and the Respondent must have been aware of the Complainant’s rights at the time it registered the Domain Name, in particular because the Domain Name contains the Rothschild Trade Marks.
Given the reputation of the Rothschild Trade Marks, it is implausible that the Respondent could put the Domain Name to any good faith use – it is confusingly similar to the well-known Rothschild Trade Marks and Internet users who access the Domain Name are therefore likely to be misled into believing that it is affiliated to, endorsed by, or otherwise connected to, the Complainant and/or its group.
The Complainant submits that the Domain Name was registered to confuse individuals into thinking that it is connected with the Rothschild & Co group. As a result, the mere registration of the Domain Name by the Respondent indicates bad faith on its part.
The Domain Name and the domain name used for the Complainant’s website are confusingly similar. The addition of the “s” in the Domain Name may be imperceptible to Internet users, leading to 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.
The Respondent’s name – which was initially hidden behind a privacy shield – is stated to be “FAPI III”, and the Respondent’s address is stated to be in Marlow, England. Five Arrows Principal Investments III, which is also known as FAPI III, is the trading name of European corporate private equity vehicles managed by entities forming part of the Rothschild & Co group. These private equity vehicles have no links to Marlow, and the Complainant has not given the Respondent permission to use the FAPI III name.
Given that the domain name for the Complainant’s website and the Domain Name are confusingly similar, and that the Respondent has used the FAPI III name (a name connected with the Rothschild & Co group) in its registration details without permission, it is clear that the Respondent has targeted the Complainant. This is clear evidence of bad faith. Indeed, it is possible that the Respondent copied the FAPI III name when registering the Domain Name to mislead the Registrar by falsely suggesting a connection between the Respondent and the Rothschild & Co group, which would be further evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (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 is being used in bad faith. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant and its affiliated entities are the registered owners of the Rothschild Trade Marks. Where registrations are held by connected entities, the Complainant is licensed to use the Rothschild Trade Marks.
The Complainant clearly has rights for the purposes of the Policy.
Ignoring the generic Top-Level Domain (“gTLD”) “.com” (as the Panel may do for comparison purposes), the Domain Name incorporates the ROTHSCHILD trade mark in its entirety but adds the letters “andcos”. The Domain Name also incorporates the ROTHSCHILD & CO trade mark except for substitution of the ampersand symbol “&” with the word “and”, and the addition of the letter “s” (after the letters “andco”). The Rothschild Trade Marks and Domain Name are therefore not identical and thus the issue of confusing similarity must be considered. Application of the confusing similarity test under the UDRP typically involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“the WIPO Overview 3.0”)). Section 1.7 of the WIPO Overview 3.0 goes on to provide “[…] in cases where a domain name incorporates the entirety of a trademark, […] the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
The ROTHSCHILD trade mark is incorporated in its entirety within the Domain Name. It is clearly recognizable within the Domain Name. The addition of the letters “andcos” does not prevent a finding of confusing similarity. The same can be said in relation to the ROTHSCHILD & CO trade mark and the substitution of the ampersand symbol “&” with the word “and”, and the addition of the letter “s”, in the Domain Name.
The Panel finds that the Domain Name is confusingly similar to the Rothschild Trade Marks for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.
Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complainant’s contentions however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.
A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Here, however, the Respondent is not known by the Domain Name. Nor can it be said that there is legitimate noncommercial or fair use. There appears to be no active use at all. In any event, given that any noncommercial or fair use must be without intent to mislead, even if the Respondent could point to some use, it is unlikely it would be regarded as legitimate or fair, given that the Domain Name is confusingly similar to the Rothschild Trade Marks and would inevitably create a false impression of, or association with, the Complainant.
A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. Whilst it appears that no use is being made of the Domain Name at present, given the inevitably of a false impression being created if it were to be used, it seems clear that any offering of goods or services in the future would unlikely be treated as bona fide.
There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The Respondent has not come forward with a Response and it can only be assumed that there is nothing it could say that might support an assertion that it does in fact have rights or legitimate interests in the Domain Name.
The contentions of the Complainant, by which it has made out a prima facie case that the Respondent has no rights or legitimate interests, have not been contradicted, challenged, or cast into doubt by the brief analysis set out above. Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides a number of non-exclusive scenarios which may evidence a respondent’s bad faith. They include, for instance, a respondent registering a domain name in order to prevent an owner of the trademark or service mark to which it is said to be confusingly similar or identical, from reflecting the mark in question in a corresponding domain name (provided that the respondent has engaged in a pattern of such conduct). A respondent registering a domain name primarily for the purposes of disrupting the business of a competitor is another scenario, as is a respondent intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it.
Sometimes, particularly in cases where it appears nothing is done with a domain name, it is not possible for a complainant to demonstrate a precise literal application of one of the paragraph 4(b) scenarios.
However, the paragraph 4(b) scenarios are non-exclusive and simply illustrative, and thus other circumstances demonstrating that a respondent seeks to take unfair advantage of, or to abuse a complainant’s trademark (such behaviour being broadly understood to constitute bad faith for the purposes of the Policy) are usually enough to establish this third limb of paragraph 4(a) the Policy (even if not falling within one of the paragraph 4(b) scenarios).
The Respondent must have known of the Complainant. It must have known that it would have rights in the Rothschild name, world famous in the world of finance and beyond. The fact that the Respondent used a name connected with the Rothschild & Co group (“FAPI III”) when registering the Domain Name, would seem to put such knowledge beyond doubt.
It is difficult to see how the Respondent would not appreciate that any use (by it) of the Domain Name would be anything other than inherently deceptive, in that it would likely mislead Internet users into believing that the Domain Name or any website or email address associated with it, was that of (or associated with) the Complainant. The letters “andcos” that follow the term “rothschild” in the Domain Name would hardly ameliorate the risk of Internet users being deceived, as the Respondent must well have known. Indeed, it is likely to increase such risk.
The Domain Name has the hallmarks of bad faith registration and use. It is inherently deceptive and ripe to be used in a phishing scam or other nefarious activity.
The fact that no active use is being made of the Domain Name at present (and hence can be treated as being passively held), does not prevent a finding of bad faith registration and use. Indeed, a passive holding of a domain name can support a finding of bad faith. UDRP panels must examine all the circumstances of the case.
Section 3.3 of the WIPO Overview 3.0, provides:
“While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put”.
The Domain Name is confusingly similar to the Rothschild Trade Marks. Such marks are famous and distinctive. No Response was filed or evidence of actual or contemplated good faith use provided. Indeed, none would seem plausible. The Respondent appears to have used false registration details (“FAPI III”). A privacy service was also used by the Respondent. Whilst there are of course recognized legitimate uses of privacy and proxy registration services (see section 3.6 of the WIPO Overview 3.0), in the circumstances of this case, the Panel finds that the Respondent’s use of a privacy protection service additionally supports an inference of bad faith. Finally, any good faith use of the confusingly similar, indeed inherently deceptive Domain Name, would seem highly implausible. The passive holding of the Domain Name in the circumstances of this Complaint, supports a finding of bad faith.
In all the circumstances, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the 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 Domain Name <rothschildandcos.com> be transferred to the Complainant.
Date: January 26, 2022