N. M. Rothschild & Sons Limited v Shelley Cole, ccadilo int
WIPO Case No. D2025-1439
•21-05-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
N. M. Rothschild & Sons Limited v. Shelley Cole, ccadilo int
Case No. D2025-1439
1. The Parties
The Complainant is N. M. Rothschild & Sons Limited, United Kingdom (“UK”), represented by Freshfields,
Bruckhaus, Deringer LLP, UK.
The Respondent is Shelley Cole, ccadilo int, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <ch-rothschildandco.com> is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2025. On April 9, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 2025, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on April 14, 2025, 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 April 14, 2025.
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 April 17, 2025. In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 9, 2025.
The Center appointed Mireille Buydens as the sole panelist in this matter on May 15, 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.
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4. Factual Background
The Complainant is part of the Rothschild & Co group, which is a recognized market leader in the financial world that provides services on a worldwide basis for over two hundred years. In particular, it provides M&A, strategy and financing advice, as well as investment and wealth management solutions to institutions, individuals and governments. The Rothschild & Co group provides its services under names containing ROTHSCHILD & CO and ROTHSCHILD.
The Complainant and affiliated entities are the registered owners of numerous trademark registrations containing the words “rothschild & co” and “rothschild” (respectively the ROTHSCHILD & CO Trademark and the ROTHSCHILD Trademark). Rothschild & Co Continuation Holdings AG, an entity affiliated to the Complainant, is notably the owner of the following registrations:
| - | United States trademark registration no. 3447667 covering the trademark ROTHSCHILD (word mark), registered on June 17, 2008; |
| - | Canadian trademark registration no. TMA480577 covering the trademark ROTHSCHILD (word mark), registered on August 14,1997; |
| - | United States trademark registration no 5614371 covering the trademark ROTHDCHILD & CO (word mark) registered on November 27, 2018; |
| - | European trademark registration no. 017924819 covering the trademark ROTHSCHILD & CO, registered on October 31, 2018. |
The Complainant contends that there are arrangements in place through which the Complainant is licensed to use the ROTHSCHILD and ROTHSCHILD & CO Trademarks where registrations are held by, a.o., the affiliated entity Rothschild & Co Continuation Holdings AG.
Rothschild & Co Continuation Holdings AG is the registrant of the domain name <rothschildandco.com>, directing to the Complainant’s group official website.
The disputed domain name was registered on February 19, 2025.
The Complainant contends that the disputed domain name directs to a page mentioning that “the account has been suspended”. At the date of this decision, the disputed domain name directs to an error page.
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.
First, the Complainant asserts that the disputed domain name is confusingly similar to the ROTHSCHILD Trademark as it incorporates this Trademark in its entirety. The disputed domain name also incorporates the ROTHSCHILD & CO Trademark in its entirety, except for the prefix “ch” followed by an hyphen and the replacement of the symbol “&” by its equivalent “and”. Therefore, the Complainant asserts that there is a high risk that Internet users will believe that there is a connection between the disputed domain name and the Complainant’s group.
Second, the Complainant asserts that the Respondent lacks rights or legitimate interests in the disputed domain name. There is no relationship between the Respondent and the Complainant. Neither “Rothschild” nor “Rothschild & Co” is a descriptive term and the Complainant has not licensed or otherwise permitted the Respondent to use the ROTHSCHILD & CO and/or the ROTHSCHILD Trademark, or to register a domain name incorporating any of them. Furthermore, the Complainant has not found any evidence that the Respondent has been commonly known by the disputed domain name. The Respondent is not currently
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using, and has not used (or made demonstrable preparations to use), the disputed domain name in
connection with a bona fide offering of goods or services (as the disputed domain name does not lead to an
active website). On the contrary, the Complainant contends that the disputed domain name falsely suggests
affiliation with the Complainant and/or its group, and thereby carries a higher risk of implied affiliation.
Third, the Complainant asserts that the disputed domain name was registered and is being used in bad faith.
The Complainant submits that the Respondent is intentionally attempting to mislead Internet users into
associating the disputed domain name with the Complainant, thereby creating a likelihood of confusion with
the Complainant as to the source, sponsorship, affiliation or endorsement of the disputed domain name. The
Complainant further asserts that the Respondent must have been aware of the Complainant’s Trademarks at
the time it registered the disputed domain name, in particular because the disputed domain name contains
the ROTHSCHILD & CO and ROTHSCHILD Trademarks which are well-known trademarks used for more
than two centuries. The Complainant submits that the degree of reputation of the ROTHSCHILD
Trademarks makes it implausible that the Respondent could put any good faith use to the disputed domain
name. Besides, the disputed domain name is confusingly similar to the well-known ROTHSCHILD and
ROTHSCHILD & CO Trademarks, and Internet users are therefore likely to be misled into believing that the
disputed domain name is affiliated to, endorsed by, or otherwise connected to, the Complainant and/or its
group. Internet users may also be misled as the disputed domain name is very similar to the
“@ch.rothschildandco.com” email addresses used by the Complainant’s group’s employees based in
Switzerland and could therefore be used to send phishing emails to the Complainant’s customers.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Dealing with the Respondent’s failure to file a formal Response to the Complaint, paragraph 14(b) of the Rules provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under these Rules, the panel shall be entitled to draw such inferences from this omission, as it considers appropriate.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.
The Panel finds the entirety of the ROTHSCHILD Trademark is reproduced within the disputed domain
name, with the addition of the prefix “ch” followed by a hyphen and the element “andco”. The ROTHSCHILD
& CO Trademark is also recognizable within the disputed domain name, the only difference between this
Trademark and the disputed domain name being the prefix “ch” followed by and hyphen and the replacement
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of the string “&” by its literal equivalent “and”. Although the addition of these elements may bear on
assessment of the second and third elements, the Panel finds the addition of such elements does not
prevent a finding of confusing similarity between the disputed domain name and the Trademark for the
purposes of the Policy. WIPO Overview 3.0, section 1.8.
Further, the generic Top-Level Domain (“gTLD”) “.com” is a standard registration requirement and does not
prevent the disputed domain name from being confusingly similar to the ROTHDCHILD and ROTHSCHILD &
CO Trademarks.
Accordingly, the disputed domain name is confusingly similar to the ROTHSCHILD and ROTHSCHILD & CO
Trademarks for the purposes of the Policy.
The Panel finds the first element of the Policy has been established.
B. Rights or Legitimate Interests
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. 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.
The Respondent is not licensed by, nor affiliated with, the Complainant in any way. There is no evidence contrary, the Panel notes that the disputed domain name reproduces the well-known ROTHSCHILD Trademarks with the mere addition of the prefix “ch” (which is used by the Complainant’s group’s employees based in Switzerland in their email address “@ch.rothschildandco.com”) followed by a hyphen, and the letters “andco” which directly refer to the part “& CO” of the ROTHSCHILD & CO Trademark. As a result, the disputed domain name carries a risk of implied affiliation, which cannot constitute fair use as it suggests sponsorship or endorsement by the Complainant (if ever put in use, Internet users could believe that the disputed domain name directs to a website belonging to, or endorsed by, the Complainant).
that the Respondent is commonly known by the disputed domain name, nor is there any evidence of use or
demonstrable preparations to use the disputed domain name for a bona fide offering of goods or services.
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.
Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy. The Panel notes that the Respondent has composed the disputed domain name by combining the Complainant’s ROTHSCHILD Trademark with a “ch” prefix followed
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by a hyphen and with element “andco” which directly refer to the part “& CO” of the ROTHSCHILD & CO Trademark . As a result, the disputed domain name, if ever put in use, could confuse Internet users into believing that the Respondent is somehow affiliated with, or endorsed by, the Complainant. The registration
of the disputed domain name creates a likelihood of confusion with the Complainant and its well-known Trademarks. In the circumstances, and in the absence of any explanation from the Respondent for its choice of the disputed domain name, the Panel can only reasonably infer that the Respondent registered the
disputed domain name in the knowledge of the Complainant’s well-known Trademark and with the intention
of taking unfair advantage of the goodwill attached to it by causing confusion among Internet users.
Besides, the Panel notes that a quick search for the term “rothschild” online would have revealed to the Respondent the existence of the Complainant and its Trademarks. As a result, the Panel finds that the Respondent was more likely than not aware of the Complainant’s ROTHSCHILD and ROTHSCHILD & CO
Trademarks at the time of the registration of the disputed domain name. WIPO Overview 3.0 section 3.2.2.
Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the Trademarks, which constitute well-known Trademarks in the financial sector, the composition of the disputed domain name (which includes the ROTHSCHILD Trademark in its entirety), the failure of the Respondent to submit a response, and the implausibility of any good faith use to which the disputed domain name may be put. The Panel finds that in the circumstances of this case, the passive holding of the disputed domain name does not prevent a finding of bad faith under the Policy.
doctrine of passive holding. WIPO Overview 3.0, section 3.3. Although panelists will look at the totality of
the circumstances in each case, factors that have been considered relevant in applying the passive holding
doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark and (ii) the failure
of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use.
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 <ch-rothschildandco.com> be transferred to the Complainant.
/Mireille Buydens/
Mireille Buydens
Sole Panelist
Date: May 21, 2025
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