WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Rockefeller & Co. Inc. v. William Foo
Case No. D2014-1886
1. The Parties
The Complainant is Rockefeller & Co. Inc. of New York, New York, United States of America ("US"), represented by Fross Zelnick Lehrman & Zissu, PC, US.
The Respondent is William Foo of Kuala Lumpur, Malaysia.
2. The Domain Name and Registrar
The disputed domain name <rockefellerventures.com> (the "Domain Name") is registered with Domain.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 27, 2014. On October 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 28, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 6, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2014. The Center received informal email communications from the Respondent on November 6, 10 and 17, 2014. The Center also received email communications from the Complainant on November 14 and 18, 2014. Accordingly, the Center notified the parties about the commencement of the panel appointment process on November 27, 2014.
The Center appointed Michael A.R. Bernasconi as the sole panelist in this matter on December 5, 2014. 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 following facts appear from the Complaint and its Annexes, which have not been contested by the Respondent.
The Complainant is Rockefeller & Co. Inc. of New York, New York, US. The Complainant is a company acting, inter alia, in the financial field.
The Complainant owns numerous registered trademarks for ROCKEFELLER, including the following:
- US trademark registration ROCKEFELLER (Registration no. 3809398), dated June 29, 2010;
- US trademark registration ROCKEFELLER (Registration no. 4416140), dated October 8, 2013;
- US trademark registration ROCKEFELLER & CO (Registration no. 3414179), dated April 22, 2008;
- US trademark registration ROCKEFELLER FINANCIAL (Registration no. 4016607), dated August 23, 2011;
- Other service mark registrations incorporating its ROCKEFELLER trademarks in over 50 countries around the world.
(together, the "trademark").
The Domain Name was created on February 21, 2014. The Domain Name is connected to a website currently displayed as "under construction". Prior to the holding page that is currently associated with the Domain Name, the website associated with the Domain Name consisted of a WordPress website that purported to provide information on green technology.
5. Parties' Contentions
The Complainant contends that it is one of the most prominent families and names in the United States. The Complainant states that it owns many ROCKEFELLER trademarks worldwide. Besides, the Complainant asserts that the trademark ROCKEFELLER and the Rockefeller name generally have become assets of significant value, identifying their client's services exclusively.
The Domain Name is Identical and/or Confusingly Similar to the ROCKEFELLER trademark
The Complainant states that the above trademarks predate the Respondent's Ddomain Name, that they are in force and the exclusive property of the Complainant. The Complainant points out that the well-known trademark ROCKEFELLER is entirely incorporated in the Domain Name. Referring to prior UDRP cases, the Complainant contends that the addition of a generic term such as the word "ventures" is not sufficient to avoid confusion. Therefore, the Complainant asserts that the Domain Name is confusingly similar to the aforementioned ROCKEFELLER trademarks.
The Respondent has no Rights or Legitimate Interests in the Domain Name
First, the Complainant states that the Respondent is not affiliated in any manner to the Complainant, and has never been authorized to use or register in any way the name "Rockefeller", including as a domain name. Second, the Complainant argues that the Respondent has never been known, commonly or otherwise, by the Domain Name or by any name corresponding to it, prior to the registration of the Domain Name. According to the Complainant, this serves as further evidence that the Respondent has no rights or legitimate interests in the Domain Name.
Furthermore, the Complainant contends that the burden is on the Respondent to establish its rights or legitimate interests in the Domain Name, which, according to the Complainant, the Respondent is unable to demonstrate or establish.
In addition, the Complainant argues that the website that was previously posted at the Domain Name was never fully realized, and only expressed a brief set of facts about alternate lubricants and reductions in the consumption of diesel fuel. According to the Complainant, ever since the Respondent has received the Complainant's initial correspondence, the website has been nothing more than a holding page. Therefore, neither use suffices to demonstrate a bona fide offering of goods or services or a legitimate interest in the Domain Name.
The Registrant Registered and is Using the Domain Name in Bad Faith
Referring to prior UDRP cases, the Complainant states that the Respondent has no connection with the Complainant or any of its member companies or with any legitimate use of its ROCKEFELLER marks, which is evidence of bad faith.
Further, the Complainant states that the Domain Name has been created on February 21, 2014. To this respect, the Complainant asserts that it was already extensively using its trademark ROCKEFELLER and ROCKEFELLER & CO well before that date. In addition, the Complainant holds that the trademark ROCKEFELLER enjoys widespread recognition.
Moreover, with reference to prior UDRP cases, the Complainant argues that given the fame of the ROCKEFELLER trademark and the fact that the Domain Name is so obviously connected with the Complainant's famous mark, Respondent's bad faith may be presumed.
Finally, again with reference to prior UDRP cases, the Complainant states that the Domain Name has also been used in bad faith and that the Domain Name is not currently associated with an active website, which has long been recognized as bad faith in and of itself.
Accordingly, the Complainant holds that the Domain Name should be considered as having been registered and used in bad faith by the Respondent.
The Complainant requests that the Domain Name be immediately transferred to the Complainant.
In its email communications on November 6, 10 and 17, 2014, the Respondent states the following:
First, the Respondent argues that the requested restrictions of the use of ROCKEFELLER by the Complainant appear to be abusive, overbearing, unreasonable and too extensive. Besides, according to the Respondent, the (family) name "Rockefeller" is not exclusive, as there are other families with such a name. In addition, according to the Respondent, there are already other domain names including ROCKEFELLER, which do not belong to the Complainant, namely < rockefellervodka.tumblr.com> and <eatrockefeller.com >.
Furthermore, the Respondent argues that it temporarily removed its website until a solution could be found. Beyond that, the Respondent emphasizes repeatedly that it would be interested in settling the dispute amicably, i.e., through receiving compensation from the Complainant.
The Respondent argues that it set up a company named Rockefeller Ventures on February 17, 2014 (registration no. 002301733-D) and registered the Domain Name without protest on February 21, 2014. Besides, the Respondent states that it is not prohibited using other names as one's own business name itself. Moreover, the Respondent contends that the names and/or trademarks ROCKEFELLER and "Rockefeller Ventures" are not registered in Malaysia.
Finally, the Respondent states that its business activities are not related to the business activities of the Complainant and that the Complainant cannot prove its allegations against the Respondent (e.g., with respect to the accused bad faith).
6. Discussion and Findings
The Panel has thoroughly considered in its deliberations all of the evidence and arguments submitted by the parties, even if no specific or detailed reference has been made to those arguments in the following discussion on the merits.
If the Complainant is to succeed, it must prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) The Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant is the owner of several trademark registrations, containing, or comprised of the element ROCKEFELLER. The Panel acknowledges that the family name Rockefeller is one of the most prominent names in the United States. In addition, the ROCKEFELLER and ROCKEFELLER & CO trademarks are also well known worldwide and have been in use in connection with financial services offered to the public since 1979 (see Rockefeller & Co., Inc. v. All Value Network a/k/a AVN, WIPO Case No. D2011-1957). Besides, the Complainant owns numerous domain names incorporating its ROCKEFELLER trademark, including the domain name <rockco.com> and <rockefellerfinancial.com>.
The Panel notes that the Complainant's trademarks have not been registered in Malaysia, the Respondent's country. However, the Panel also notes that the Policy does not require the trademarks of the Complainant to be protected in the Respondent's country (see Infospace.com Inc. v. Infospace Technology Co. Ltd, WIPO Case No. D2000-0074; Parfums Christian Dior S.A. v. Jadore, WIPO Case No. D2000-0938; Frank E. Rijkaard v. Marc Pérez-Tejero, WIPO Case No. D2004-1044; Ape & Partners S.p.A. and PJS International S.A. v. Fritz Hansen, WIPO Case No. D2014-0220; Scout24 Holding GmbH v. Chaled Nabulsi, WIPO Case No. D2014-0577). Therefore, the aforementioned trademarks are sufficient to initiate an action under the Policy against the Respondent.
The Domain Name is not identical with the Complainant's trademarks. Therefore, the question is whether it is confusingly similar to them.
The Domain Name incorporates the Complainant's distinctive ROCKEFELLER trademarks in its entirety. The addition of the merely generic term "ventures" cannot be deemed sufficient to avoid confusion between the Domain Name and the Complainant's trademarks (see GA Modefine SA v. Riccardo Bin Kara-Mat, WIPO Case No. D2002-0195; seealso Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistic Corp., WIPO Case No. D2000-0464: "The use of […] a generic word is an irrelevant distinction, which does not change the likelihood for confusion"; Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477: "The addition of a common or generic term following a trademark does not create a new or different mark in which Respondent has rights.").
Thus, the Panel finds that the Domain Name is confusingly similar to the Complainant's trademarks pursuant to paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
From the evidence in front of the Panel, the Respondent's name is not "Rockefeller". The Respondent also does not possess any apparent rights in or to the ROCKEFELLER trademarks, and the Domain Name was registered only after the Complainant had used its trademarks for several years.
Based on the material received, the Panel supports the view that the Domain Name was never fully realized, but only displayed facts about alternate lubricants and reductions in the consumption of diesel fuel.
Therefore, the Complainant has provided with its Complaint a prima facie case showing that the Respondent has no rights or legitimate interests in the Domain Name. Consequently, the burden of proof shifts to the Respondent to demonstrate its rights or legitimate interests in the Domain Name (see Swarovski Aktiengesellschaft v. blue crystal, WIPO Case No. D2012-0630).
According to the Respondent's contentions, the company "Rockefeller Ventures" was founded on February 17, 2014, which, in the case at hand, could not be verified by the Panel based on the evidence of record. Given the short period between the alleged launch of the company "Rockefeller Ventures" and the registration date of the Domain Name (February 21, 2014), there is no evidence that the Respondent was commonly known by the Domain Name prior to its registration. Furthermore, there is no evidence that after registration of the Domain Name, the Respondent has legitimately become known by the Domain Name for reasons beyond its simple use.
On these grounds, the Respondent fails to discharge the burden of proof. In particular, the Respondent has not been able to prove either (i) before notice of the dispute, that it has used or has prepared to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services, nor (ii) that it has been commonly known by the Domain Name, nor (iii) 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 at issue.
Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the Domain Name. For all these reasons, the Panel concludes that paragraph 4(a)(ii) of the Policy is established.
C. Registered and Used in Bad Faith
The Policy requires a Complainant to prove both registration and use in bad faith.
Paragraph 4(b) of the Policy lists a number of circumstances, which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) Circumstances indicating that [the Respondent has] registered or acquired the domain name primarily for purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the Respondent's] documented out-of-pocket costs directly to the domain name; or
(ii) [the Respondent has] registered the domain name in order to prevent the owner of the trademark or service from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or
[the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iii) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent's] website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent's] web site or location or of a product or service on [the Respondent's] website or location.
(iv) As mentioned above, the Panel acknowledges that the family name Rockefeller is one of the most prominent names in the United States. In addition, the ROCKEFELLER and ROCKEFELLER & CO trademarks are also well known worldwide and have been in use in connection with financial services offered to the public since 1979.
Given the Complainant's worldwide recognition, the Respondent was or should have been aware of the marks prior to registering the Domain Name (see Caesars World, Inc. v. Forum LLC., WIPO Case No. D2005-0517). As stated above, by using the term "ventures", the Respondent does not create a relevant distinction. On the contrary, by using a term, which is closely linked to the financial industry (e.g., venture capital or venture fund), the Respondent brings himself even closer to financial services, a core business of the Complainant. Thereby, the Respondent creates confusion with the Complainant's mark as to the affiliation of the Respondent's website (paragraph 4(b)(iv) of the Policy). Besides, the currently inactive status of the website at the Domain Name does not change the assessment of the Panel in this respect. The Panel agrees with the view of the Complainant that inaction is within the concept of "being used in bad faith" (see Liebherr-International AG v. Domain For Sale!, WIPO Case No. D2003-0824.
In addition, the Panel notes that the Respondent repeatedly requested an amicable solution and in this context, asked for compensation. Such conduct had been interpreted by other UDRP panels as an indication of bad faith (see Cath Kidston Limited v. Splurge Limited, WIPO Case No. DIE2010-0002; Giorgio Armani S.p.A. v. Yitao/ Apex Laboratories Limited, WIPO Case No. D2013-2060; CBS Broadcasting, Inc. v. Gaddoor Saidi, WIPO Case No. D2000-0243; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; McMullan Bros., Limited, Maxol Limited, Maxol Direct Limited Maxol Lubricants Limited, Maxol Oil Limited Maxol Direct (NI) Limited v. Web Names Ltd, WIPO Case No. D2004-0078).
Overall, it is thus not possible for the Panel to conceive any good faith registration and use of the Domain Name.
The Panel therefore finds that the Complainant has satisfied the requirements of paragraph 4(b)(iv) of the Policy and that accordingly, the Domain Name was registered and is being used 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 <rockefellerventures.com> be transferred to the Complainant.
Michael A.R. Bernasconi
Date: December 17, 2014