Holding Benjamin et Edmond de Rothschild, Pregny Société Anonyme v; Edmond Rothchild

WIPO Case No. D2024-5305

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Holding Benjamin et Edmond de Rothschild, Pregny Société Anonyme v.
Edmond Rothchild

Case No. D2024-5305

1. The Parties

The Complainant is Holding Benjamin et Edmond de Rothschild, Pregny Société Anonyme, Switzerland, represented by OX Avocats, France.

The Respondent is Edmond Rothchild, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <edmondderothchild.com> (the “Domain Name”) is registered with NameCheap,

Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2024. On December 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 26, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent (Privacy service provided by Withheld for Privacy ehf) and contact information in the Complaint. The Center sent an email communication to the Complainant on December 31, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 31, 2024.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for

Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on January 16, 2025. In accordance with the Rules, paragraph

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5, the due date for Response was February 5, 2025. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on February 7, 2025.

The Center appointed Gregor Vos as the sole panelist in this matter on February 14, 2025. The Panel finds
that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of

Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant, and its group the Edmond de Rothschild group, is a provider of financial services active worldwide and was founded in 1953.

The Complainant is the owner of inter alia the following trademark registrations (hereinafter jointly referred to as: the “Trademarks”):

- French trademark registration No. 3701735 for the mark EDMOND DE ROTHSCHILD registered on

December 29, 2009; and

- International trademark registration No. 1046701 for EDMOND DE ROTHSCHILD registered on June 21,

2010.

The Complainant is the owner of the domain name <edmond-de-rothschild.com>, registered on November
26, 1996.

The Domain Name was registered on April 16, 2024. Currently and at the time of filing the Complaint, the Domain Name resolved to a website impersonating the Complainant’s website and displaying images and trademarks related to the Complainant’s services and on which, similar to the Complainant’s services,

financial services are promoted.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name.

Notably, the Complainant contends that the Domain Name is identical or confusingly similar to the and the Domain Name has been registered and is being used in bad faith.

First, according to the Complainant, the Domain Name is confusingly similar to its well-known Trademarks. The Domain Name incorporates the Trademarks in their entirety, with the mere deletion of the letter “s”, and with the addition of the generic Top-Level Domain (“gTLD”) “.com”, which does not prevent a likelihood of

confusion. The confusing similarity between the Domain Name and the Trademarks is reinforced by the fact
that the Domain Name resolves to a website on which the Trademarks are actively used without the
Complainant’s authorization.

Second, according to the Complainant, the Respondent has no rights or legitimate interests in the Domain Name, as there is no relationship between the Respondent and the Complainant. The Respondent has never received a license or any other form of authorization from the Complainant to use the Trademarks, has no prior rights to the Domain Name, and is not commonly known by the Domain Name. Also, according to the Complainant, the Respondent is making an illegitimate commercial use of the Domain Name, as it falsely suggests affiliation with the Complainant’s Trademarks.

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Finally, according to the Complainant, the Respondent has registered and is using the Domain Name in bad faith, because the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s well-known Trademarks as to the

source, sponsorship, affiliation, or endorsement of its activities.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

For the Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:

i.         the Domain Name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;

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.

Only if all three elements have been fulfilled, the Panel is able to grant the remedy requested by the

Complainant. The Panel will deal with each of the requirements in turn.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s Trademarks and the Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The Panel finds that the Trademarks are incorporated in their entirety in the Domain Name with the mere deletion of the letter “s”. Accordingly, the Domain Name is confusingly similar to the Trademarks for the purposes of the Policy. WIPO Overview 3.0, section 1.7. A domain name which consists of a common, obvious, or intentional misspelling of a trademark, such as the deletion of a single letter, is considered by

panels to be confusingly similar to the relevant mark for purposes of the first element. WIPO Overview 3.0,

section 1.9.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of

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proof always remains on the complainant). If the respondent fails to come forward with such relevant
evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section
2.1.

Having reviewed the available record, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has not rebutted the Complainant’s prima facie case and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Name such as those enumerated in the Policy or otherwise.

Further, the Panel notes that the Domain Name resolves to a website on which the Trademarks are used
and which appears to mimic the Complainant’s website and its activities. Panels have held that the use of a
domain name for impersonation can never confer rights or legitimate interests on a respondent.

WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Holding Benjamin et Edmond de Rothschild, Pregny Société anonyme v. Patrick Shamblin, Billion, LLC, WIPO Case No. D2023-3342; Holding Benjamin et Edmond de Rothschild, Pregny Société anonyme v. Cuba Dean, WIPO Case No. D2023-3329).

In the present case, the Trademarks are registered by the Complainant and have been used for many years. least highly distinctive as confirmed by earlier Panels (see e.g.

Therefore, the Panel finds that it is not conceivable that the Respondent chose the Domain Name without knowledge of the Complainant’s activities and its Trademarks under which the Complainant is doing business. This is reinforced by the fact that the Trademarks are incorporated almost identically in the Domain Name and by the fact that the Domain Name resolves to a website on which the Complainant’s Trademarks (without the typo in the Domain Name) are used, without any legitimate reason or authorization from the Complainant.

Further, the Panel has found that the Respondent lacks any rights to or legitimate interests in the Domain Name and finds that the Respondent is taking unfair advantage of the Domain Name by diverting Internet users to a website that impersonates the website of the Complainant. The Respondent is intentionally

attempting to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s Trademarks as to the source, sponsorship, affiliation or endorsement of its activities.

Panels have held that the use of a domain name for impersonation constitutes bad faith. and use of the Domain Name constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

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7. Decision

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 <edmondderothchild.com> be transferred to the Complainant.

/Gregor Vos/ Gregor Vos Sole Panelist Date: February 28, 2025