Complainant is Rockefeller & Co., Inc. of New York, New York, United States of America (“United States”), represented by Fross Zelnick Lehrman & Zissu, PC, United States.
Respondent is James McCallum, Worlds-Wisdom-Inc. of Plymouth, Massachusetts, United States.
The disputed domain names <rockafellarcapital.com>, <rockafellarscapital.com>, <rockafellars.club>, <rockafellars.com>, <rockafellars.info>, <rockafellars.net>, <rockafellars.online>, <rockafellars.org>, <rockafellarswealth.club>, <rockafellarswealth.com>, <rockafellarswealth.info>, <rockafellarswealth.net>, <rockafellarswealth.org>, <rockafellars.xyz>, <rockafellarwealth.club>, <rockafellarwealth.com>, <rockafellarwealth.info>, <rockafellarwealth.net>, <rockafellarwealth.org>, <rothschildrockafellar.club>, <rothschildrockafellar.com>, <rothschildrockafellar.info>, <rothschildrockafellar.net>, <rothschildrockafellar.online>, <rothschildrockafellar.org>, and <rothschildrockafellar.xyz> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2017. On January 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On January 8, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant of the Domain Names 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on January 16, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 5, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 6, 2017.
On February 9, 2017, Complainant made a Supplemental Submission of a decision in a case filed by Complainant against Respondent under the usTLD Disputed Resolution Policy.
The Center appointed John C McElwaine as the sole panelist in this matter on February 15, 2017. 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.
Complainant, Rockefeller & Co. Inc., is an asset management and investment advisory firm that provides investment management services and wealth advice to institutions, foundations and endowments, nonprofits, ultra-high net worth individuals, trusts and families.
Complainant has obtained service mark registrations incorporating its ROCKEFELLER mark in more than 50 countries around the world, including the mark ROCKEFELLER & CO, EU Reg. No. 602869 in the European Union; and the following marks in the United States: ROCKEFELLER, U.S. Reg. No. 3809398; ROCKEFELLER & CO, U.S. Reg. No. 3414179 and ROCKEFELLER FINANCIAL, U.S. Reg. No. 4016607.
The Domain Names were all registered on September 29, 2016 with the Registrar. The Domain Names currently all resolve to “www.scots-tv.com,” which is an inactive webpage.
Complainant alleges that during the late 19th and early 20th centuries, the family of John D. Rockefeller developed an industrial, banking, and political empire that created one of the world’s largest private fortunes. The family name, Rockefeller, is well-known in the United States and throughout the world. In 1882, John D. Rockefeller established an office to manage his family’s assets for future generations. This office provided investment management and financial counseling services for the Rockefeller family and related organizations.
Complainant is the successor to this office. Since 1979, Complainant and a subsidiary of Rockefeller Financial Services, Inc., has expanded these financial services to the general public. Since 1980, Complainant has been registered with the Securities and Exchange Commission as an investment adviser. In addition, Complainant chartered trust companies in New York and Delaware in 1985 and 1997, respectively. Today, Complainant describes itself as an asset management and investment advisory firm that provides investment management services and wealth advice to institutions, foundations and endowments, nonprofits, ultra-high net worth individuals, trusts and families.
As a result of decades of substantial investment and use of Rockefeller & Co.’s services, Complainant alleges to have common law rights in the “Rockefeller name.” In addition, Complainant has obtained service mark registrations incorporating its ROCKEFELLER mark in more than 50 countries around the world, including the mark ROCKEFELLER & CO, EU Reg. No. 602869 in the European Union; and the following marks in the United States: ROCKEFELLER, U.S. Reg. No. 3809398; ROCKEFELLER & CO, U.S. Reg. No. 3414179 and ROCKEFELLER FINANCIAL, U.S. Reg. No. 4016607. Together, such trademark registrations consisting of the ROCKEFELLER mark and common law rights are referred to as the “ROCKEFELLER Marks.”
Complainant alleges that Respondent registered each of the Domain Names and linked them to an inactive webpage located at “www.scots-tv.com.” Complainant provided a printout of Respondent’s other website located at “www.scots.tv,” which posts are described by Complainant in the Complaint as “lengthy and often illegible,” including content mentioning “many globally famous wealthy family from the past 100 years, including Carnegie, Astor, Trump, Vanderbilt, Rothschild, Morgan and the British royal family, with no specific focus on any one of these well-known names.”
With respect to the first element of the Policy, Complainant alleges that it has valid and existing trademark rights in the ROCKEFELLER Marks and that each of the Domain Names incorporates an alternate spelling of “Rockefeller,” replacing the first and third “e” in “Rockefeller” with the letter “a” creating the intentionally misspelled name, “rockafellar.” Complainant categorizes the Domain Names, as follows:
1) Seven of the Domain Names, <rockafellars.club>, <rockafellars.com>, <rockafellars.info>, <rockafellars.net>, <rockafellars.online>, <rockafellars.org> and <rockafellars.xyz>, are the pluralized, misspelled version of Rockefeller.
2) Five of the Domain Names, <rockafellarswealth.club>, <rockafellarswealth.com>, <rockafellarswealth.info>, <rockafellarswealth.net> and <rockafellarswealth.org>, add the generic term “wealth” to the pluralized misspelled version of Rockefeller.
3) Five of the Domain Names, <rockafellarwealth.club>, <rockafellarwealth.com>, <rockafellarwealth.info>, <rockafellarwealth.net> and <rockafellarwealth.org>, add the generic term, “wealth” to the misspelled version of Rockefeller.
4) <rockafellarcapital.com> and <rockafellarscapital.com> add the generic term, “capital” plus the singular and plural, misspelled version of Rockefeller.
5) The final seven Domain Names, <rothschildrockafellar.club>, <rothschildrockafellar.com>, <rothschildrockafellar.info>, <rothschildrockafellar.net>, <rothschildrockafellar.online>, <rothschildrockafellar.org> and <rothschildrockafellar.xyz>, add the Rothschild surname and trademark to the misspelled version of Rockefeller.
As to Respondent’s use of the word, “Rockafellar,” Complainant points out that a slight misspelling does not alter the confusing similarity of this term to “Rockefeller” and asserts that it is, in fact, a form of typosquatting. As to Respondent’s use of the plural form of this misspelling, Complainant asserts that the addition of the letter “s” does not distinguish those Domain Names from the ROCKEFELLER Marks. As to Respondent’s addition of “wealth” or “capital” to certain Domain Names, Complainant asserts that these generic terms do not alleviate confusion, and instead, enhance the likelihood of confusion. Lastly, Complainant asserts that the addition of Rothschild to the misspelled Rockefeller name reinforces the well-known relationship between RIT Capital Partners, an investment trust chaired by Lord (Jacob) Rothschild, and Rockefeller Financial Services, which is controlled by the Rockefeller family.
With respect to the second element of the Policy, Complainant contends that Respondent has not been commonly known by the name “Rockafellar,” nor is that his nickname. Moreover, Complainant asserts that Respondent cannot claim any rights to the Domain Name because the ROCKEFELLER Marks were well known and had been used and registered for years prior to Respondent’s registration of the Domain Names. Lastly, Complainant contends that Respondent is not making a bona fide offering of goods and services with the Domain Names which are being passively held and offered for sale at prices far in excess of Respondent’s actual registration costs for each.
With respect to the third element of the Policy, Complainant asserts that Respondent’s use of the Domain Names containing Complainant’s famous ROCKEFELLER Marks in their near entirety is alone evidence of “opportunistic bad faith.” Complainant argues that Respondent’s failure to use or refer to the ROCKEFELLER Marks at the “www.scots.tv” website further demonstrates that Respondent registered the Domain Names for no other reason than to cause confusion and trade off the fame of Complainant. Lastly, Complainant asserts that Respondent has a section of his website selling domain names for thousands of dollars and offers that domain names can be purchased if the “PRICE-IS-RIGHT.”
Respondent did not reply to Complainant’s contentions.
Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
Because of Respondent’s default, the Panel may accept as true the factual allegations stated within the Complaint, and may draw appropriate inferences therefrom. See, St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International, WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”). Regarding the matter of Complainant’s Supplemental Filing of February 9, 2017, the Panel notes that panels have discretion to accept an unsolicited supplemental filing. Noting in particular that there do not appear to be any exceptional circumstances advanced by Complainant nor any compelling reason for the Panel to refer to the Administrative Panel Decision submitted by Complainant, the Panel declines to accept the Supplemental Filing. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.2.
Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant has established rights in the ROCKEFELLER Marks as evidenced by its trademark registrations, its long-standing use of the ROCKEFELLER Marks in connection with investment and financial services, and the significant marketing of the ROCKEFELLER Marks that Complainant has undertaken.
As discussed in the WIPO Overview 2.0, paragraph 1.10, the consensus view is that a domain name consisting of a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name. Similarly, UDRP panels have consistently held that “a mere addition or a minor misspelling of Complainant’s trademark does not create a new or different mark in which Respondent has legitimate rights.” Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator, WIPO Case No. D2008-1302 (“Such insignificant modifications to trademarks is commonly referred to as ‘typosquatting’ or ‘typo-piracy,’ as such conduct seeks to wrongfully take advantage of errors by users in typing domain names into their web browser’s location bar.”) Here, the replacement of the first and third “e” in “Rockefeller” with the letter “a” creates a word with visually imperceptible differences and identical pronunciation. The Panel finds that the core word in all of Respondent’s Domain Names, “Rockafellar,” is confusingly similar to the ROCKEFELLER Marks.
With respect to the addition of “wealth” and “capital,” it is well-established that the addition of a descriptive or generic word to a trademark in a domain name, particularly when such additional words relate to the goods or services with which the mark is used, does not avoid confusing similarity. See eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307. Likewise, the Domain Names that are plural forms of the misspelled version of Rockefeller are not distinguishable. See ESH Strategies Branding, LLC v. Kumpol Sawaengkarn, WIPO Case No. D2011-0843 (the addition or subtraction of the letter “s” from a name is a common mistake Internet users make, and therefore, constitutes typo squatting). Lastly, the addition of the name Rothschild to the misspelled version of Rockefeller also does not distinguish these Domain Names from the ROCKEFELLER Marks. It is often held that the addition of a competitor or third-party’s mark does not avoid a finding of confusing similarity between the disputed domain name and the trademark. Diners Club International Ltd. v. Privacy--Protect.org, WIPO Case No. D2011-0680 (listing cases).
In sum, each of the Domain Names is confusingly similar to the ROCKEFELLER Marks. The Panel finds that Complainant has met its burden under the first element of the Policy.
Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Names. Complainant need only make a prima facie showing on this element, at which point the burden shifts to Respondent to present evidence that it has some rights or legitimate interests in the Domain Names. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi, WIPO Case No. D2000-0252.
Complainant contends there has never been a relationship between Complainant and Respondent that would give rise to any license, permission or authorization for Respondent to use or register the Domain Names. Although Respondent has been properly notified of the Complaint by the Center, Respondent failed to submit any response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond, WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic.A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the domain name at issue. See AREVA v. St. James Robyn Limoges, WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269.
Under paragraph 4(c) of the Policy, a respondent’s rights or legitimate interests to a domain name may be established by demonstrating any of the following three conditions: (i) before any notice to respondent of the dispute, respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or (iii) respondent 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. The Panel finds that Respondent has failed to show rights or legitimate interests under any of the three conditions.
First, Respondent is not making any use, let alone bona fide use, of the Domain Names under paragraph 4(c)(i) of the Policy. When Respondent registered the Domain Names, Complainant had decades of established rights in the ROCKEFELLER Marks. Second, as discussed above, Respondent is not known by the name “Rockefeller” and has acquired no known trademark or service mark rights in the name “Rockafellar.” Finally, the Domain Names all resolve to an inactive webpage. Passive holding of a disputed domain name incorporating a third party well-known mark does not normally amount to a bona fide use. It is well established that inaction or passive holding can, in certain circumstances, constitute bad faith use. See CBS Broadcasting Inc. v. Edward Enterprises, WIPO Case No. D2000-0242.
Complainant has made a prima facie showing of Respondent’s lack of any right or legitimate interest and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. The Panel finds that Respondent does not have rights or legitimate interests in the Domain Names and that Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Names in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
As an initial matter, paragraph 4(b)(i) of the Policy indicates that bad faith exists where a respondent acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name. Here, the evidence establishes that Respondent had a section of a website with certain domain names offered for sale for thousands of dollars and that Respondent invited offers on his domain names. However, there was no evidence directly tying one or more of the Domain Names at issue here to an offer to sell by Complainant for more than his out-of-pocket costs. The Panel does not under the circumstances find bad faith under paragraph 4(b)(i) of the Policy.
However, Complainant additionally contends that the registration by Respondent of a domain name, which constitutes a typosquatting variant of Complainant’s ROCKEFELLER Marks, establishes that Respondent was aware of the existence of Complainant’s trademark. Bad faith may be found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith. See LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Sanofi-Aventis v. Nevis Domains, LLC, WIPO Case No. D2006-0303. In fact, UDRP panels have held that “typosquatting” alone may be evidence of bad faith registration of the disputed domain name. See ESPN, Inc. v. XC2, WIPO Case No. D2005-0444.
Bad faith registration can be found where respondents “knew or should have known” of complainant’s trademark rights and nevertheless registered a domain name in which he had no right or legitimate interest. See Accor v. Kristen Hoerl, WIPO Case No. D2007-1722. Based on Complainant’s submissions, which were not rebutted by Respondent, Respondent must have known of Complainant’s well-known ROCKEFELLER Marks, when it selected to register Domain Names such as <rockafellars.org>, <rockafellarcapital.com> and <rockafellarswealth.com>. It is alleged by Complainant that there is no explanation for Respondent to have chosen to use the misspelling, “Rockafellar”, in each of its Domain Names other than to trade off the good will and reputation of Complainant’s trademark or otherwise create a false association with Complainant. With no response from Respondent, this claim is undisputed.
When a domain name is being passively held, the question of bad faith use does not squarely fall under one of the aforementioned non-exhaustive factors set out in paragraph 4(b) of the Policy. The three member panel, in Magazine Publishers Inc. and Les Publications Conde Nast S.A. v. ChinaVogue.com, WIPO Case No. D2005-0615, made the following observations in its determination that the respondent was acting in bad faith:
(i) the complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in the United States of America and in other countries;
(ii) the respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name;
(iii) the respondent registered the domain name in 1999, and seems not to have been using the domain name;
(iv) the respondent did not reply to the complainant’s communications before the proceedings; and
(v) the respondent did not reply to the complainant’s contentions.
Similarly, in this matter, Complainant has a well-known mark that is registered in more than 50 countries, including three registrations in the United States where Respondent resides. Respondent did not respond to the Complaint and has provided no evidence of its intended use of the Domain Names. In fact, Respondent is not using the Domain Names in any manner to demonstrate a bona fide use or potential use. In addition, Respondent did not reply to Complainant’s October 16, 2016 demand letter. In light of these factors, the Panel finds that Respondent’s passive holding of the Domain Names satisfies the requirement of paragraph 4(a)(iii) of the Policy that the Domain Names are being used in bad faith by Respondent.
For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Names 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 following Domain Names be transferred to Complainant: <rockafellarcapital.com>, <rockafellarscapital.com>, <rockafellars.club>, <rockafellars.com>, <rockafellars.info>, <rockafellars.net>, <rockafellars.online>, <rockafellars.org>, <rockafellarswealth.club>, <rockafellarswealth.com>, <rockafellarswealth.info>, <rockafellarswealth.net>, <rockafellarswealth.org>, <rockafellars.xyz>, <rockafellarwealth.club>, <rockafellarwealth.com>, <rockafellarwealth.info>, <rockafellarwealth.net>, <rockafellarwealth.org>, <rothschildrockafellar.club>, <rothschildrockafellar.com>, <rothschildrockafellar.info>, <rothschildrockafellar.net>, <rothschildrockafellar.online>, <rothschildrockafellar.org>, and <rothschildrockafellar.xyz>.
John C McElwaine
Sole Panelist
Date: March 1, 2017