юридическая фирма 'Интернет и Право'
Основные ссылки











Яндекс цитирования

Рассылка 'BugTraq: Закон есть закон'



Rambler's Top100



Источник информации:
официальный сайт ВОИС

Для удобства навигации:
Перейти в начало каталога
Дела по доменам общего пользования
Дела по национальным доменам

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Rothschild Bank AG, N M Rothschild & Sons Limited and Rothschild Continuation Holdings AG v. Rothchild Corporation and Rothchild Internet Development Corporation SA de CV/ Joseph Martin Rothchild

Case No. D2001-1112

 

1. The Parties

The First Complainant, Rothschild Bank AG, is a corporation having its principal place of business at Zollikerstrasse 181, Zurich, Switzerland.

The Second Complainant, N M Rothschild & Sons Limited, is a corporation having its principal place of business at New Court, St. Swithin’s Lane, London, United Kingdom.

The Third Complainant, Rothschild Continuation Holdings AG, is a corporation having its principal place of business at Baarerstrasse 95, Zug, Switzerland.

The Complainants’ authorized representative is David Allsebrook of Fasken Martineau DuMoulin LLP, Toronto, Canada.

The First Respondent is Rothchild Corporation, 1430 Rupert Street, North Vancouver, B.C., Canada.

The Second Respondent is Rothchild Internet and Second Development Corporation SA de CV, Lazaro Cardenas, Paseo Gaviotas, Cabo San Lucas, Mexico. The personal contact given for the Second Respondent is Joseph Martin Rothchild.

 

2. The Domain Names and Registrars

The domain names at issue are:

<rothchild.com>
<rothchild.net>
<rothchild.org>
<rothchildbank.com>
<rothchildbank.net>
<rothchildbank.org>

The Registrar with which the first disputed domain name, <rothchild.com>, is registered is Network Solutions, Inc, 505 Huntmar Park Drive, Herndon, VA, United States of America.

The Registrar with which the remaining five disputed domain names are registered is Register.com of 575 8th Avenue, 11th Floor, New York, NY, United States of America.

 

3. Procedural History

On September 10, 2001, a Complaint was received by the WIPO Arbitration and Mediation Center ("WIPO Center") for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution Policy ("the Policy"), adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999.

On September 17, 2001, the WIPO Center requested verification of the following from Network Solutions, Inc and Register.com:

(a) That a copy of the Complaint had been sent to them by the Complainant;

(b) That the disputed domain names were registered with them;

(c) That the Respondents were the current registrants of the disputed domain names;

(d) The contact details of the registrants (and other contacts);

(e) That the Policy applied to the disputed domain names;

(f) The current status of the disputed domain names;

(g) The language of the registration agreements.

On September 18, 2001, Network Solutions, Inc wrote to the WIPO Center confirming that it had received a copy of the Complaint, that the domain name <rothchild.com> had been registered by Rothchild Corporation and that the domain name was "active".

On September 19, 2001, the WIPO Center sent a Message of Complaint Deficiency to the Complainants on the basis that certain information had been omitted from the Complaint and the listed registrants of the domain names were not the named Respondents.

On September 21, 2001, Register.com wrote to the WIPO Center, confirming that the domain names <rothchild.net>, <rothchild.org>, <rothchildbank.com>, <rothchildbank.org> and <rothchildbank.net> were registered through Register.com and that Martin Rothchild was the current registrant. It also confirmed that the Policy applied to those domain names and the language of the registration agreement was English.

On September 25, 2001, the WIPO Center sent a second Message of Complaint Deficiency to the Complainants on the basis that the Complaint needed to identify both Registrars, i.e. both Network Solutions, Inc and Register.com. The WIPO Center also advised that as the registrants with Network Solutions, Inc and Register.com respectively had different contact information, clear and convincing evidence would be required as to the relationship between the Respondents.

On September 28, 2001, the WIPO Center received an Amended Complaint.

On October 2, 2001, the WIPO Center transmitted a Notification of Complaint and Commencement of Administrative Proceeding to the Respondents. The Respondents were advised that a response to the Complaint was required within 20 calendar days i.e. by October 22, 2001.

No response was received on behalf of the Respondents and on October 30, 2001, a Notification of Respondent Default was sent to the Respondents.

On November 30, 2001, the WIPO Center received an email from Mr. David Rogerson of Cito Consulting Inc. Mr. Rogerson claimed that Cito Consulting Inc had legal ownership of all the disputed domain names. Mr. Rogerson said that Cito Consulting Inc was in the process of obtaining legal advice and he sought an extension in order to do so.

On December 4, 2001, the WIPO Center advised Mr. Rogerson that the Notification of Default had already been issued, but that the rules provided for a late response to be filed, subject to the authority of the Panel. The WIPO Center advised that such request must be submitted to the Center, and copied to the Complainants.

On December 4, 2001, the Panel was appointed. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and Supplemental Rules.

The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.

Request to File Late Response

On December 7, 2001 David Rogerson – Cito Consulting Inc. advised Domain Disputes that the reasons for his request for filing a late response to the dispute was that "I acquired the domain name on June 1, 2001 from Martin Rothchild and did not receive notice of the dispute until after October 22, 2001. I have documentation for acquisition of the company; Rothchild Internet Development Corp. ("Rothchild Internet") dated and signed June 1, 2001." The letter requested that the company Rothchild Internet Development Corp. be formally served with Mr. Rogerson as owner and president so that Mr. Rogerson would take legal action against the Complaint.

Rule 10(c) of the Rules for Uniform Domain Name Dispute Resolution Policy states:

"The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend in exceptional circumstances, a period of time fixed by these Rules or by the Panel."

On December 13, 2001, the Complainant filed a response to the submission by Mr. Rogerson that Rothchild Internet Development Corporation be served with a copy of the complaint.

The Complainant submits:

(1) That Mr. Rogerson and Rothchild Internet Development Corporation are not parties and should not be heard.

(2) The benefits of the Policy’s deadlines and principles of expedition and low cost will be denied if the requested procedure and delay are allowed.

(3) A domain name transfer takes place when it is registered.

(4) Mr. Rogerson’s statement of facts are unsubstantiated and inconclusive at best.

(5) If Mr. Rogerson or the Company he states he now owns acquired the domain names before the complaint, he had an obligation under section 2 of the Policy to make the information complete and accurate.

(6) On August 22, 2001 Mr. Rothchild was claiming to own the domain names and to have plans for their future use. (See e-mail at Exhibit L to the complaint).

(7) A corporate search of Rothchild Internet Corporation effective as of August 2, 2001 (Exhibit O to the Complaint) shows Mr. Luhtala (now Rothchild) and Mr. David Rogerson as Directors of Rothchild International Development Corporation.

(8) A further corporate search of Rothchild Internet Development Corporation on December 10, 2001, effective November 29, 2001, shows that Mr. Luhtala (Rothchild) and Mr. Rogerson are still Directors of Rothchild Internet Development Corporation. The corporate information has been updated since the search of August 22, 2001, and says ".... DISSOLUTION STARTED...".

The Panel’s decision is to decline this request. The reasons for this are set out at the beginning of section 6 of the Decision.

 

4. Factual Background

The Complainants have asserted and provided evidence in support of the following facts. Unless stated otherwise, the Panel finds these facts established.

The Complainants are part of a worldwide economic interest group of companies (the Rothschild Group). The Rothschild Group provides corporate and resource banking, treasury, investment banking, fund management, private banking and trust services to governments, corporations and individuals worldwide. The Rothschild Group is an international organization with offices in 45 cities around the world.

The ROTHSCHILD trademark is extremely well known in connection with the services provided by the Rothschild Group. The Complainants submit that the Rothschild Group has been at the center of the world’s financial markets and a leading provider of banking services for over two hundred years. The Complainants state that the Rothschild family has been internationally renowned as bankers since Napoleonic times.

The Complainants and other members of the Rothschild Group are the owners of fifty registrations of the trademark ROTHSCHILD. The majority of the registrations are in International Class 36 covering "banking, financial management and investment, trusteeship and securities brokerage services."

The Third Complainant, Rothschild Continuation Holdings AG, is the registered owner of the European Community trademark registration for the mark ROTHSCHILD and is the registered owner of the trademark ROTHSCHILD in Canada (where Mr. Rothchild is domiciled).

The Second Complainant, N M Rothschild & Sons Limited, is a British corporation and a subsidiary of the Third Complainant. It was formerly the registered owner of the Canadian trademark N M ROTHSCHILD & SONS LIMITED and design. This registration has now been assigned to the Third Complainant.

The Second Complainant also owns the domain name <rothschild.co.uk> and controls the domain name <rothschild.com>. The First Complainant, Rothschild Bank AG, is the owner of the domain names <rothschildbank.com> and <rothschildbank.ch>.

On May 23, 1997, the First Respondent registered the domain name <rothchild.com>.

In March 1999, Mr. Rothchild changed his name from Joseph Martin Luhtala to Joseph Martin Rothchild.

On February 16, 2000, the Second Respondent registered the domain names <rothchild.net> and <rothchild.org>.

On March 2, 2001, the Second Respondent registered the domain names <rothchildbank.com>, <rothchildbank.net> and <rothchildbank.org>.

On March 8, 2001, the representatives of the Complainants wrote to Mr. Rothchild, putting him on notice of the Complainants’ trademarks and corporate names and offering to resolve the issue without the necessity of litigation provided that Mr. Rothchild agreed to register an alternative domain name which would avoid confusion such as <rothchilddevelopment.net>.

On March 9, 2001, Mr. Rothchild responded to that letter, saying:

"To: Dear Mr. Korman

From: Martin Rothchild – CEO
Rothchild Group of Companies
Rothchild Internet Development Corporation
Rothchild International Trade Corporation
Rothchild International Finance Corporation
<RothchildBank.com>
<RothchildBank.net>
<RothchildBank.org>

As you can clearly see – "Rothchild" I am Joseph Martin Rothchild. Our Rothchild Group of Companies have been registered since 1979. Registered domain name since 1994. Nice Try We have been through this before.

Your Client has no rights to this domain name – However you may purchase the domain name from us <www.rothchild.org> 1,000,000.00 US Dollars.

Geez not again ...."

A few minutes later, Mr. Rothchild sent the following email:

"By the way our Rothschild (sic) logo is Trademarked – inform your client not to touch it."

On the same day, Mr. Rothchild wrote further to the Complainants on Rothchild letterhead:

"We are sorry that your clients may be ‘confused". However, our clients get confused also when locating our company and they find your clients name instead of ours.

We have a worldwide reputation in Korea, Malaysia, Santiago Chile, and Mexico in trade negotiation, trade representation, wireless WAP development, web e-commerce structuring and private client intranets deployment for the past 7 years with our domain "rothchild.com".

My Legal Name is:

Joseph Martin Rothchild and like your client we protect our name as we as proud of ours as is your client is of theirs."

On August 22, 2001, Mr. Rothchild sent an email to the First Complainant, stating:

"We are in the final stages of setting up our financial arm in the Islands, however since we set up our domain ‘RothchildBank.com" also .net and .org. many of your clients and your internal staff are not typing in the ’s’ as in anyone@rothschildbank.ch. This is one of many emails we receive and we have decided to change the name of the company to "Rothchild Finance & Trust" (When we receive these email we eradicate the cluster from our hard drives to maintain client security and privacy – this is standard for all emails as per our policy and procedures)"

Mr. Rothchild went on to offer to sell the three domain names <rothchildbank.com>, <rothchildbank.net> and <rothchildbank.org> for USD$25,000. He said:

We have invested a great amount, however our Islands company and identity can be changed. To recover our investment to date and to notify our clients we need to recover our costs. The offer is open to you all 3 domains RothchildBank.com + net + org $25,000.000 USD. If you are not interested please notify your clients of your proper domain and email address as we receive about 10 emails like this per week."

The Complainants state that the domain name <rothchild.com> promotes the Respondents’ "world renowned reputation in international trade finance.

The domain names <rothchild.net> and <rothchild.org> resolve to a website of a firm offering private Swiss banking services. The same web site can be reached at <swissbankaccount.com>. That web site contains a notice that the website developer is Rothchild Internet Development Corporation and gives the URL <www.rothchild.com>. While the internet user is at the web site <swissbankaccount.com>, the browser address line shows a URL containing whichever of <rothchild.net> or <rothchild.org> the user entered to get to the site.

The domain names <rothchildbank.net> and <rothchildbank.org> are not active – they resolve to a generic "coming soon" web site.

The Complainants state that the domain name <rothchildbank.com> resolves to the <rothchild.com> website and that this website is SMTP enabled, which means that email can be sent and received via the site.

When the Panel checked these sites, none of these appear to be active currently.

 

5. Parties’ Contentions

A. The Complainants

The Complainants contend that all the disputed domain names are confusingly similar to the Complainant’s trademarks. They claim that the names <rothchild.com>, <rothchild.net> and <rothchild.org> are "virtually identical" to the mark ROTHSCHILD.

The Complainants also say that the balance of the domain names, <rothchildbank.com>, <rothchildbank.net> and <rothchildbank.org> consist of the same "virtually identical" marks but with the additional reference to the field of banking, in which the Complainants’ trademarks are world renowned.

The Complainants submit that the Respondents have no right or legitimate interest in respect of any of the disputed domain names. They allege that the name "Rothchild" was chosen by Mr. Rothchild for use in his personal, business and domain names because of its similarity to the trademark ROTHSCHILD.

The Complainants submit that Mr. Rothchild was not calling himself "Rothchild" at the time he began to register the companies and domain names under the name "Rothchild". Prior to his change of name in March 1999, Mr. Rothchild was using the name Joseph Martin Luhtala as his personal name. The Complainants referred the Panel to Mr. Luhtahla’s registration as a director of Rothchild Internet Development Corporation in September, 1998 under the name Joseph Martin Luhtala.

The Complainants submit that Mr. Rothchild’s efforts to provide himself with the appearance of legitimacy simply illustrate its absence.

The Complainants further submit that all the disputed domain names were registered in bad faith as part of a scheme to capitalize upon the fame of the Rothschild family name and trademarks.

The Complainants allege that Mr. Rothchild does not operate a bank and that there is no "Rothchild Group of Companies" that has been registered since 1979 as Mr. Rothchild contends:

(a) Rothchild Internet Development Corporation was incorporated in British Columbia, Canada on September 16, 1998;

(b) Rothchild International Finance Corporation does not exist;

(c) Rothchild International Trade Corporation, which was incorporated in British Columbia on March 7, 1995, was dissolved in 1998;

(d) According to the Whois searches pertaining to <rothchild.com>, Rothchild Corporation has an address in Vancouver. However, there is no such corporation incorporated or registered to carry on business in British Columbia or in Canada;

(e) According to the web site at <rothchild.com>, Rothchild Internet Development Corporation SA de CV is a "registered Mexico Corporation". There is no such corporation incorporated in Mexico, nor is there any such corporation incorporated or registered to carry on business in British Columbia or in Canada.

The Complainants describe Mr. Rothchild’s business identities as "physically as well as legally ephemeral". There is no business listed in the British Columbia telephone directories with "Rothchild" in its name.

The address of Rothchild Corporation given in the domain name registration <rothchild.com> is 1430 Rupert Street, North Vancouver. The Complainant claims that this address appears to be that of a business called "Bishop Sales Ltd". There is no indication of any connection to the Respondents at the premises.

The domain name <rothchild.com> is advertised for sale in the Registrar’s Whois directory and on the web site <greatdomains.com>. As indicated above, the Respondents have also offered to sell the domain name <rothchild.org> and the three "rothchildbank" domain names to the Complainants.

The Complainants state that the name <rothchild.com> has no intrinsic connection to Mr. Rothchild’s business, although he has gone to some trouble to imply a connection. They allege that the allusions to financial services on the <rothchild.com> website do not visibly correspond to the provision of any actual financial services.

The Complainants allege that as Mr. Rothchild is in the web site development business he would be aware of the current demand for "typo" domain names.

The <rothchild.com> web site bears advertising of third parties such as Dell Computer and Windsor Vineyards. The Complainants state that this appears to be paid advertising, in which case Mr. Rothchild can charge more for the advertising as the traffic to the site increases. It is in Mr. Rothchild’s (financial) interests to be mistaken for another web site.

B. The Respondents

The Respondents did not file a Response.

 

6. Discussion and Findings

Request to File Late Response

The Complainant commenced the proceeding against the named registrants for each of the six domain names in dispute.

Rothchild Internet Development Corporation is not a registrant of any of the domain names in dispute. Another entity, Rothchild Internet Development Corporation SA de CV, Martin Rothchild, Lazaro Cardenas, Paseo Gaviotas, Cabo San Lucas, BCS 42100, MX is shown as the registrant of all the domain names other than the domain name <rothchild.com>. The registrant of <rothchild.com> is Rothchild Corporation. The Administrative Contact, Billing Contact is DEVELOPMENT ROTHCHILD . (RD11459)MARTIN @ROTHCHILD.COM. martin@rothchild.com is also provided as an e-mail address in respect of the five other domain names in dispute.

The Panel may at the request of a Party or on its own motion, extend in exceptional circumstances, a period of time fixed by these Rules.

Mr. Rogerson has requested that a new party, Rothchild Internet Development Corp. be formally served with Mr. Rogerson as owner and president. Mr. Rogerson states that he has documentation of acquisition of Rothchild Internet Development Corp. dated and signed June 1, 2001. Mr. Rogerson did not attach any documentation to support his request for an extension of time to file a response.

Further, Mr. Rogerson did not state that he attempted to change the named registrant of the domain names in dispute after allegedly acquiring the domain names in dispute on June 1, 2001. The company Rothchild Internet Development Corporation was never the registrant of any of the domain names in dispute. If Rothchild Internet Development Corporation is the current owner of the domain names in dispute it must have acquired the domain names from Martin Rothchild carrying on business under several business names.

There is evidence showing that Martin Rothchild was using <rothchild.com> in promoting businesses of the Rothchild Group of Companies, Rothchild Internet Development Corporation, Rothchild International Finance Corporation and Rothchild International Trade Corporation on September 10, 2001. (Exhibit B to the Complaint). The pages referred to were posted at <rothchild.com> in the second week of August 2001.

By an e-mail dated August 22, 2001, Martin J. Rothchild, Chief Executive Officer, Rothchild Group of Companies, Rothchild Corporation SA de CV, Rothchild Internet Development Corporation, Rothchild International Finance Corporation, Rothchild International Trade Corporation offered to sell <rothchildbank.com>, <rothchildbank.net> and <rothchildbank.org> to the Rothschild Group for $25,000 U.S. each.

The evidence shows that Martin Rothchild was carrying on business in August and September of 2001, stating that he was CEO of the Rothchild Group of Companies which Group includes Rothchild Internet Development Corporation. Mr. Rogerson has not filed any evidence to support his claim of having acquired the shares of Rothchild Internet Development Corporation on June 1, 2001, or having acquired the domain names in dispute from Martin Rothchild on June 1, 2001. No change has been made in the Directors of Rothchild Internet Development Corporation and Mr. Rogerson has not alleged or filed any evidence that he applied to have the registrations of the domain names in dispute transferred after June 1, 2001.

The facts support the conclusion that Martin Rothchild carrying on business under business names remains the registrant and owner of the domain names in dispute and there is no evidence to the contrary other than an allegation.

The Panel therefore has declined to exercise its discretion to permit filing of a response by an unregistered alleged owner of the domain names in dispute.

The Substantive Complaint

Paragraph 15(a) of the Rules instructs the 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".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

- 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; and

- That the Respondent has no rights or legitimate interests in respect of the domain name; and

- That the domain name has been registered and is being used by the Respondent in bad faith.

Domain name is confusingly similar/identical to a trademark or service mark in which the Complainant has rights

The Complainants have provided extensive evidence of its trademark ROTHSCHILD throughout the world. It is a very famous and well established trademark, which is associated with the Complainants and the Complainants’ products and services globally – particularly in relation to banking services.

There is only a slight variation between the first three disputed domain names and the trademark ROTHSCHILD - the omission of the "s". The first three disputed domain names represent what is likely to be a common misspelling of the Complainants’ trademark and trade name.

The latter three disputed domain names consist of the common misspelling of the trademark ROTHSCHILD referred to above, in conjunction with the word "bank". The addition of the word "bank" in no way lessens the confusion between the disputed domain names and the Complainants’ registered trade mark, as the Complainants’ trade mark is associated with banking services. If anything, the use of the word "bank" in conjunction with the word "Rothchild" will increase the possibility of confusion.

The Panel finds that all of the disputed domain names are confusingly similar to the trademark ROTHSCHILD in which the Complainants have rights.

Respondent has no rights or legitimate interests in respect of the domain name

The Policy outlines (paragraph 4(c)) circumstances which, if found by the Panel to be proved, shall demonstrate the Respondents’ rights or legitimate interest in the domain name. These circumstances are:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with the bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organisation) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial 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.

The Respondents have not provided a Response, and the Panel finds it appropriate to draw an adverse inference from the Respondents’ failure to respond to the Complaint (SSL International v Mark Freeman, WIPO Case No. D2000-1080 and Alta Vista Company v Grandtotal Finances Limited, WIPO Case No. D2000-0848).

The relevant dates of registration and the registrants of the domain names in issue are set out below

Domain Name

Date of Registration

Registrant

<rothchild.com>

May 23, 1997

Rothchild Corporation

<rothchild.net>

February 16, 2000

Rothchild Internet Development Corporation SA de CV (Martin Rothchild)

<rothchild.org>

February 16, 2000

Rothchild Internet Development Corporation SA de CV (Martin Rothchild)

<rothchildbank.com>

March 2, 2001

Rothchild Internet Development Corporation SA de CV (Martin Rothchild)

<rothchildbank.net>

March 2, 2001

Rothchild Internet Development Corporation SA de CV (Martin Rothchild)

<rothchildbank.org>

March 2, 2001

Rothchild Internet Development Corporation SA de CV (Martin Rothchild)

In relation to the listed registrants, the Complainant has produced evidence that there is no such entity as "Rothchild Corporation" registered in either British Columbia or Canada. The other registrant, Rothchild Internet Development Corporation SA de CV is referred to on the website <rothchild.com> as a "registered Mexico corporation". The Complainant has produced evidence that there is no such corporation incorporated in Mexico nor is there any such corporation incorporated or registered to carry on business in British Columbia or Canada.

The Complainant has further provided evidence that in May 1997, at the date of registration of the <rothchild.com> domain name, the named and/or administrative contact for all these sites, Mr. Rothchild, was known as Joseph Martin Luhtala. He formally changed his name to Joseph Martin Rothchild in March 1999 – almost two years later.

Under paragraph 4(c)(ii) a legitimate interest can be shown if the Respondent as an individual or business is commonly known by the domain name. No date is given under this paragraph of the Policy for this requirement, but logically this must mean as at the date of registration of the particular domain name. The Panel finds that in respect of the <rothchild.com> domain name, the actual registrant, the non-existent "Rothchild Corporation", was never commonly known as "Rothchild". The entity never existed. Neither was Mr. Rothchild known as Rothchild at that date. His name was Luhtala.

Insofar as the other domain names are concerned, the Panel is not able to find any legitimate interest under paragraph 4(c)(ii). The Complainants have shown that the named registrant, Rothchild Internet Development Corporation SA de CV did not exist.

Mr. Rothchild is also named on the register below the reference to the so-called Mexican company. By the time the later domain names were registered in February 2000, and March 2001, Mr. Rothchild had changed his name to Rothchild. At first sight it might be said that Mr. Rothchild was commonly known as Rothchild. However, the Panel does not accept that on the facts of this case, the name change gave an legitimate or bona fide right to the domain name. A formal name change on its own does not mean that a Respondent is commonly known by the domain name. The Panel finds that there was a course of conduct on the part of Mr. Rothchild having the likely aim and certainly the effect of capitalising on the Complainants’ well-known trademark and reputation. This course of conduct included the formal name change by Mr. Rothchild. The Panel finds that at the relevant registration dates of February 2000, and March 2001 (in respect of the last five domain names) neither Mr. Rothchild nor the Respondents could not legitimately claim to be "commonly known" by the name "rothchild" or "rothchildbank".

This finding in respect of all six domain names is coupled with the Panel’s finding in respect of paragraph 4(c)(i) of the Policy and relates to the issue of bona fides. Under paragraph 4(c)(i), legitimate interest can be shown if, before any notice to the Respondent, the Respondents have used or can show demonstrable preparations to use the domain names or a name corresponding to the domain names in connection with the bona fide offering of goods and services.

The relevant date of the first correspondence from the Complainant to the Respondent putting the Respondent on notice of its rights was March 8, 2001. On March 9, 2001, under the heading "Re rothchild.com" Mr. Rothchild replied to the Complainant giving <rothchild.com> as his email address. He referred to himself as the CEO of:

- Rothchild International Finance Corporation – which did not exist.

- Rothchild International Trade Corporation – which had been dissolved in 1998.

- Rothchild Internet Development Corporation – a company incorporated in September 1998.

In the same letter, Mr. Rothchild stated:

"Our Rothchild Group of Companies have been registered since 1979 Registered domain name since 1994."

Each of these facts was also incorrect. The only current company was Rothchild Internet Development Corporation which had been registered in 1998. There is no evidence of any company registration since 1979; nor was the domain name registered in 1994.

A contemporaneous letter from Mr. Rothchild stated:

"We have a worldwide reputation in Korea, Malaysia, Santiago Chile, and Mexico in trade negotiation, trade representation, wireless WAP development web e-commerce, structuring of private client intranets deployment for the past 7 years with our domain <rothchild.com>."

But there is no evidence to verify or substantiate these claims. Demonstrably, the domain name <rothchild.com> was not registered "seven years previously" in 1994, as claimed. The registration date was in May 1997.

The Panel has no evidence before it as to what was on the <rothchild.com> or the other websites as at the date of the first letter of complaint to the Respondent on March 8, 2001. Furthermore, the Respondents have not responded to the Complaint. In view of the Panel’s findings on the Respondents’ course of conduct and the other demonstrably false statements and references to non-existent companies in the Respondents’ contemporaneous correspondence, the Panel finds that before the date of complaint, there was no bona fide offering of goods or services under the domain names or a name corresponding to the domain names.

Finally, the Panel finds that the Respondents’ intent in registering the domain names was, from the outset, to trade on the famous "ROTHSCHILD" trademark. Allowing the "rothchildbank" domain names to resolve to <rothchild.com>, has involved that domain name in the Respondents’ scheme. This use of those domain names, which is against the rights of the Complainant’s, violates the agreement between the registrants and the registrar.

Overall, the Panel can find no evidence to demonstrate the Respondents have any rights or legitimate interests in any of the disputed domain names. The Panel finds that the Complainant has met the requirement of paragraph 4(a)(ii) of the Policy.

Domain name has been registered and is being used in bad faith

Paragraph 4(b) of the ICANN Policy states:

"For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location."

It should be noted that the circumstances of bad faith are not limited to the above.

The Panel considers that the Respondents’ conduct in respect of the domain names <rothchild.org>, <rothchildbank.com>, <rothchildbank.net> and <rothchildbank.org> is in breach of paragraph 4(b)(i) above. Mr. Rothchild has offered to sell those domain names to the Complainant’s well in excess of his out-of-pocket expenses. In respect of <rothchild.com>, the Respondents’ email of March 9, 2001, could be construed as an offer to include that domain name in the sale for the requested $1 million.

The Complaint also shows that the <rothchild.com> domain name was advertised for sale in the registrar’s Whois directory and on the website <greatdomains.com>. In order to list a site on <greatdomains.com>, it is necessary to supply a user name and password and to create a new account. Domain names are not listed automatically. This further indicates an intention to sell the domain name – albeit not directly to the Complainant.

Additionally, it appears that the Respondents are using the domain name <rothchild.com> to intentionally attempting to attract, for commercial gain, Internet users to the website (para 4(b)(iv) of the Policy). An Internet user who misspells the Complainants’ name or trademark – either through ignorance or inadvertence – will find himself or herself redirected to the First Respondent’s site, which has no connection whatever to the Complainants. The Panel accepts that site traffic is an important element in determining the price that will be paid for web site advertising, and that users misspelling the Complainants’ name and trademark will contribute to the traffic to the First Respondent’s site.

At the time of complaint, the domain names, <rothchild.net> and <rothchild.org> resolved to a website of a firm offering private Swiss banking services. The same website could also be reached at <swissbankaccount.com>. That website contains a notice that the website developer is Rothchild Internet Development Corporation and gives the URL <www.rothchild.net>. While the internet user is at the website <swissbankaccount.com>, the browser address line shows the URL containing whichever of <rothchild.net> or <rothchild.org> the user entered to get into the site.

The Complainants have also provided evidence that <rothchildbank.com> was in use. It resolves to the <rothchild.org> website. This website is SMTP enabled so that email can be sent from the site.

The evidence leads to the inference that all the domain names were registered for the purpose of creating a likelihood of confusion with the Complainants’ trademarks and trade names.

The Policy requires the Complainants to show that the Respondents have registered/acquired and are using the domain names in bad faith. At the time of the Complaint, the domain names <rothchild.com> and <rothchildbank.com> were in fact being used. The domain names <rothchild.net> and <rothchild.org> were also being used in the sense that they were resolved to a website of another firm, which offered Swiss banking services.

In respect of the other domain name registrations, the non-use is not fatal to the Complaint. The fact that the domain names are available for sale has been taken as evidence of bad faith registration and absence of use in such circumstances has, since the decision in Telstra Corporation v Nuclear Marshmallows, (WIPO Case No. D2000-0003) been consistently found not to frustrate the requirement of showing bad faith registration and use. The concept of a domain name being used in bad faith is not limited to positive action: CUX, Inc. v DomainNamesAvailable, (WIPO Case No. D2000-0972).

While the domain names <rothchildbank.net> and <rothchildbank.org> have not been used, in the context of the registration of other, similar domain names the Panel finds that these additional names were registered for the same purpose – namely the exploitation of the Complainants’ name and trademark by the systematic registration of corporate and domain names which are common misspellings of the Complainants’ name and trademark.

The Panel finds that the Complainants have established that all of the disputed domain names were registered or acquired by the Respondents in bad faith.

 

7. Decision

For the foregoing reasons, the Panel decides that:

(a) the disputed domain names registered by the Respondents are confusingly similar to a trademark in which the Complainants have rights;

(b) the Respondents have no rights or legitimate interests in respect of the disputed domain names;

(c) the disputed domain names were registered and are being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain names <rothchild.com>, <rothchild.net>, <rothchild.org>, <rothchildbank.com>, <rothchildbank.net>, <rothchildbank.org> be transferred to the Complainants.

 


 

Andrew Brown
Presiding Panelist

Paul Michael De Cicco
Panelist

Ross Carson
Panelist

Dated: January 15, 2002

 

Источник информации: https://internet-law.ru/intlaw/udrp/2001/d2001-1112.html

 

Добавить эту страницу в закладки:

 


 

Произвольная ссылка:

Разработка сайта
ArtStyle Group

Уважаемый посетитель!

Вы, кажется, используете блокировщик рекламы.

Пожалуйста, отключите его для корректной работы сайта.