Rothschild & Co Continuation Holdings AG v. Gary Williams / Edmundson Carlyle & Calyton
Claim Number: FA2206002001953
Complainant is Rothschild & Co Continuation Holdings AG (“Complainant”), represented by Thomas E. Zutic of DLA Piper LLP (US), District of Columbia, USA. Respondent is Gary Williams / Edmundson Carlyle & Calyton (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rothchildcapital.com> (“Domain Name”), registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 27, 2022; the Forum received payment on June 27, 2022.
On June 28, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <rothchildcapital.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 30, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@rothchildcapital.com. Also on June 30, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 27, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Rothschild & Co Continuation Holdings AG, is a recognized market leader in the financial world that provides services on a worldwide basis. Complainant has rights in the ROTHSCHILD mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,447,667, registered June 17, 2008). Respondent’s <rothchildcapital.com> domain name is identical or confusingly similar to Complainant’s ROTHSCHILD mark as it incorporates the mark in full, merely deleting the letter “s” and adding the generic term “capital” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <rothchildcapital.com> domain name. Respondent is not commonly known by the Domain Name, nor has Complainant authorized or licensed Respondent to use its ROTHSCHILD mark in the Domain Name. Respondent does not use the Domain Name in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Rather, Respondent uses Complainant’s mark in order to impersonate Complainant.
Respondent registered and uses the <rothchildcapital.com> domain name in bad faith. Respondent uses the confusingly similar nature of the Domain Name in attract Internet users for commercial gain in bad faith. Respondent disrupts Complainant’s business in bad faith through the Domain Name’s associated email address. Finally, Respondent registered the Domain Name with actual knowledge of Complainant’s rights in the well-known ROTHSCHILD mark.
B. Respondent
Respondent failed to submit a formal Response in this proceeding however on July 1, 2022 Respondent sent an e-mail to the Forum, the relevant portion being extracted below:
“Edmundson Carlyle is not my company. Our company name is serviced mark and we own it.”
Complainant holds trademark rights for the ROTHSCHILD mark. The Domain Name is confusingly similar to Complainant’s ROTHSCHILD mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the ROTHSCHILD mark based on registration with the USPTO (e.g. Reg. No. 3,447,667, registered June 17, 2008). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
The Panel finds that the <rothchildcapital.com> domain name is confusingly similar to Complainant’s ROTHSCHILD mark as it consists of a minor misspelling of the ROTHSCHILD mark (the removal of the letter “s”) and with the addition of the descriptive term “capital” and the “.com” gTLD. The addition of a descriptive term and a gTLD to a minor misspelling of a trade mark fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”); see also Wells Fargo & Company v. Xiangsheng Zhou, FA 1576852 (Forum Oct. 17, 2014) (finding that the removal of the letter “s” in the <wellfargo.net> domain name failed to differentiate it from the complainant’s WELLS FARGO trademark, thus resulting in a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case and Respondent has failed to show that it does have rights or legitimate interests in the Domain Name.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the ROTHSCHILD mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Gary Williams / Edmundson Carlyle & Calyton” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
Complainant asserts that Respondent’s use of the Domain Name is to pass itself off as the Complainant to benefit financially, which does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). The Domain Name resolves to a website (“Respondent’s Website”) that purports to advertise a financial services business operating as an amalgam of four companies (Rothchild Capital Solutions of Illinois LLC, Rothchild Capital Markets of Atlanta LLP, (Rothchild FP LLC Atlanta) and Rothchild Realty & Trust of Charlotte LLC) operating under the ROTHCHILD Mark. However the Complainant provides evidence that none of the purported Respondent enterprises actually exist as registered corporations. Given this fact, in the absence of more detailed information from Respondent (which the Respondent has chosen not to provide, notwithstanding that it filed an informal response to the Complaint) the Panel cannot conclude from the Respondent’s Website alone that Respondent is operating a legitimate business (as opposed to creating a website for fraudulent purposes), let alone made a bona fide offering of goods and services or a legitimate non-commercial use of the Domain Name.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name, March 29, 2021, Respondent had actual knowledge of Complainant’s ROTHSCHILD mark. The ROTHSCHILD mark is incredibly well known in financial services having been used by Complainant and its predecessors in title for hundreds of years, with and it is implausible that an entity would choose to register a Domain Name containing a minor misspelling of the ROTHSCHILD mark and purport to offer financial services absent an awareness of the Complainant and its use of and reputation in the ROTHSCHILD mark. In the absence of rights or legitimate interests of its own the Panel finds that Respondent’s registration of the Domain Name in awareness of the ROTHSCHILD mark demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
In the absence of any evidence of the legitimacy of the Rothchild Capital financial services advertised on the Respondent’s Website the Panel finds, on the balance of probabilities, that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant’s ROTHSCHILD mark for commercial gain by using the confusingly similar Domain Name to resolve to a website that purport to pass itself off as Complainant (or as an entity associated with Complainant) to offer competing financial services or otherwise take advantage of any confusion between the Domain Name and the Complainant for bad faith purposes. Use of a domain name in this manner is behavior indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”); see also Zoetis Inc. and Zoetis Services LLC v. Paul Adams / zoetismail, FA 1729095 (Forum June 5, 2017) (holding that the respondent registered and used the <zoetismail.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme). Accordingly, the Panel finds that Respondent registered and uses the Domain Name in bad faith pursuant to Policy ¶¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rothchildcapital.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: July 28, 2022
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