N. M. Rothschild & Sons Limited v Grégory Deputat

WIPO Case No. D2024-4086

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

N. M. Rothschild & Sons Limited v. Grégory Deputat

Case No. D2024-4086

1. The Parties

The Complainant is N. M. Rothschild & Sons Limited, United Kingdom, represented by Freshfields,

Bruckhaus, Deringer, United Kingdom.

The Respondent is Grégory Deputat, France.

2. The Domain Name and Registrar

The disputed domain name <rothschildassetmanagementbelgium.com> is registered with IONOS SE (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2024.

On October 7, 2024, the Center transmitted by email to the Registrar a request for registrar verification in

connection with the disputed domain name. On October 8, 2024, the Registrar transmitted by email to the

Center its verification response disclosing registrant and contact information for the disputed domain name

which differed from the named Respondent (IONOS INC) and contact information in the Complaint. The

Center sent an email communication to the Complainant on October 8, 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 the amended Complaints on October 8, 2024, and October 14, 2024.

The Center verified that the Complaint together with the amended Complaints 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 October 15, 2024. In accordance with the Rules,

paragraph 5, the due date for Response was November 4, 2024. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on November 13, 2024.

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The Center appointed Christopher J. Pibus as the sole panelist in this matter on November 15, 2024. 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 operates as part of the Rothschild Group & Co, with its registered office in London, United

Kingdom. The Complainant has carried on business as a leading provider of financial services on a

worldwide basis - including banking, investment services, and wealth management for a wide range of

clients - for more than 200 years.

The Complainant and affiliated entities own a portfolio of well-known registered trademarks for the word mark

ROTHSCHILD and other ROTHSCHILD-formative marks, principally in Class 35 and 36, including the

following representative registrations;

United Kingdom registration No. UK00001168291 for ROTHSCHILD, registered on January 21, 1982, in

class 14;

United States of America registration No. 3447667 for ROTHSCHILD, registered on June 17, 2008, in class

35, 36.

The Complainant’s official website is located at “

For more than 20 years the Complainant has actively enforced its trademark rights in ROTHSCHILD against

bad faith domain names, through proceedings under the Policy, and has prevailed in more than 30 such

cases.

The disputed domain name was registered on July 14, 2024. The disputed domain name does not resolve

to an active website, but it was configured for email, which the Respondent used for business cards as part

of his business operations in Belgium.

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 disputed domain name.

Notably, the Complainant contends that its ROTHSCHILD trademark is well-known due to its significant

presence in the field of financial services, extending over the past 200 years. The Complainant relies on

compelling evidence of bad faith, establishing the registration and use of the confusingly similar domain

name as part of a fraudulent scheme to carry on business as “ROTHSCHILD Asset Management Belgium”.

The Complainant uncovered evidence of illegal business practices of the Respondent and his associate,

using fake business cards and an email address associated with the disputed domain name, to deceive

customers. The fake cards - displaying the name ROTHSCHILD & CO and logo - were found in a vehicle

parked outside the Complainant’s office in Belgium, and as part of the scam, client meetings were said to be

underway with the Respondent ’s staff representing they were acting on behalf of the Complainant. In the

circumstances, the Complainant urges the Panel to find deliberate targeting of the ROTHSCHILD mark for

improper purposes.

B. Respondent

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

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6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the

following elements:

(i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the

Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

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 trademark and the disputed 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 entirety of the well-known ROTHSCHILD mark is reproduced within the disputed domain name. The

Panel finds the mark is recognizable within the disputed domain name. Accordingly, the disputed domain

name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms here, “asset”, “management”, and “belgium” may bear on assessment of

the second and third elements, the Panel finds the addition of such terms does not prevent a finding of

confusing similarity between the disputed domain name and the mark for the purposes of the Policy.

WIPO Overview 3.0, section 1.8.

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

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 the Complainant has established a prima facie case

that the Respondent lacks rights or legitimate interests in the disputed domain name. In particular, the

Complainant has brought forward strong evidence of the Respondent’s malfeasance in carrying out a

fraudulent scheme, designed to trade on the Complainant’s reputation and brand in the financial field. The

Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any

relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those

enumerated in the Policy or otherwise.

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Panels have held that the use of a domain name for illegal activity here, claimed impersonation/passing off,

or other types of fraud, 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.

Panels have consistently found that the mere registration of a domain name that is identical or confusingly

similar (particularly domain names incorporating the mark plus descriptive terms like those used in the

disputed domain name here) to a widely-known trademark by an unaffiliated entity can by itself create a

presumption of bad faith. WIPO Overview 3.0, section 3.1.4.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain

name was registered and used in bad faith, but other circumstances may also be relevant in assessing

whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section

3.2.1.

Panels have held that the use of a domain name for illegal activity (here impersonation and other types of

financial fraud), particularly when combined with outright copying of a mark, will constitute bad faith.

WIPO Overview 3.0, section 3.4. The Panel views the Respondent’s conduct in this case as egregious, in

light of the following factors: (1) the deliberate misappropriation of the Complainant’s well-known mark to

deceive consumers into believing the disputed domain name was associated with the Complainant; (2) the

unauthorized use of the Complainant’s ROTHSCHILD trademark combined with the words “asset

management Belgium”, to engage in a fraudulent financial scheme in Belgium, which led to criminal charges;

(3) the unauthorized use of fraudulent business cards purporting to identify individuals as employees of the

Complainant, by the use of email addresses associated with the disputed domain name. The Panel notes

that the disputed domain name was not associated with an active website, but it did serve as a platform for

associated email addresses which were used for purposes of the Respondent’s scam.

In all the circumstances, it is clear that the Respondent deliberately targeted the Complainant and its

well-known ROTHSCHILD mark in registering and using the disputed domain name, in the manner set out

above.

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

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 disputed domain name <rothschildassetmanagementbelgium.com> be transferred to the

Complainant.

/Christopher J. Pibus/

Christopher J. Pibus

Sole Panelist

Date: November 28, 2024