Rothschild & Co Continuation Holdings AG v; Alexandre de Rothschild, Pathfinders

WIPO Case No. D2025-2809

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Rothschild & Co Continuation Holdings AG v.
Alexandre de Rothschild, Pathfinders

Case No. D2025-2809

1. The Parties

The Complainant is Rothschild & Co Continuation Holdings AG, United Kingdom, represented by

Freshfields, Bruckhaus, Deringer, United Kingdom.

The Respondent is Alexandre de Rothschild, Pathfinders, Luxembourg.

2. The Domain Name and Registrar

The disputed domain name <five-arrows.com> (the “Disputed 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 July 16, 2025. connection with the Disputed Domain Name. On July 17, 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 (unknown) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 18, 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 July 23, 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 July 24, 2025. In accordance with the Rules, paragraph 5,
the due date for Response was August 13, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on August 15, 2025.

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The Center appointed Nicholas Weston as the sole panelist in this matter on August 20, 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 is a United Kingdom incorporated company part of the multinational financial services business known as the Rothschild & Co group that was founded more than two centuries ago. “Five Arrows” is the alternative assets arm of Rothschild & Co, with global assets under management in excess of EUR29 billion. The Complainant holds registrations for the trademark FIVE ARROWS and variations of it around the world, including, inter alia, United Kingdom Registration No. UK00001285958 for FIVE ARROWS registered on May 12, 1989 in class 35, United Kingdom Registration No. UK00001285959 for FIVE ARROWS registered on August 4, 1989 in class 36, European Union Registration No. 000206425 for FIVE ARROWS registered on October 8, 1998, and a figurative mark, United States Registration No. 5090183 registered on November 29, 2016 for the “Five Arrows Device” in classes 35 and 36.

The Complainant owns the domain name <rothschildandco.com>, registered in 2013, which resolves to its main webpage.

The Respondent registered the Disputed Domain Name <five-arrows.com> on July 3, 2014, which resolved
to a webpage identical to the “Five Arrows” website operated by the alternative assets arm of Rothschild &

Co. The Disputed Domain Name does not currently resolve to an active website.

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 cites trademark registrations for the mark FIVE ARROWS, and variations of it, in numerous jurisdictions as prima facie evidence of ownership.

The Complainant submits that “[t]he Five Arrows TradeMarks are extremely well known in connection with the Rothschild & Co group” and that its rights predate the Respondent’s registration of the Disputed Domain Name, and submits that the Disputed Domain Name is confusingly similar to its trademark, for the reason that the addition of the hyphen to the Disputed Domain Name does “not avoid a finding of confusing similarity”.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the and contends that none of the circumstances set out in paragraph 4(c) of the Policy apply.

Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and the Rules because “the Respondent had used the Disputed Domain Name to operate a website which is almost identical to the section of the Complainant’s

Website that describes the Five Arrows Business”, and the Complainant contends that the use by the Respondent of the Complainant’s “visual elements and branding…[is use in bad faith because it]… reinforces the Complainant’s contention that the Respondent is intentionally attempting to mislead internet users into believing the Website is affiliated with, or authorised by, the Complainant, which is not the case”.

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B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:

(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which

the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) that 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 3.0, section 1.7.

Based on the available record, the Panel finds 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 Complainant has produced sufficient evidence to demonstrate that it has rights in the trademark FIVE ARROWS in several countries.

Turning to whether the Disputed Domain Name is identical or confusingly similar to the FIVE ARROWS
trademark, the Panel observes that the Disputed Domain Name is comprised of: (a) an exact reproduction of
the Complainant’s trademark FIVE ARROWS; (b) with a hyphen between the words “five” and “arrows”
(c) followed by the generic Top Level Domain (“gTLD”) “.com”.

It is well established that the gTLD used as part of a domain name is generally disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1. The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “five-arrows”.

The entirety of the mark is reproduced 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.

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 Disputed 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 Disputed 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.

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The Panel finds that there is no indication that the Respondent was commonly known by the term
“five arrows” prior to registration of the Disputed Domain Name. The Complainant has not licensed,
permitted, or authorized the Respondent to use the trademark FIVE ARROWS. The Panel also notes that
the composition of the Disputed Domain Name carries a risk of implied affiliation (see WIPO Overview 3.0,
section 2.5.1).

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 Panel notes the evidence that the Disputed Domain Name previously resolved to an “imitation of the Complainant’s Website”, and finds that this does not represent a bona fide offering of goods or services, or a legitimate noncommercial or fair use, given the substantial reputation and goodwill of the Complainant’s mark or capacity to otherwise mislead Internet users.

The Panel also notes the evidence that the Disputed Domain Name currently resolves to an inactive webpage, which supports the Complainant’s submissions on this point, and finds that this does not represent a bona fide offering of goods or services, or a legitimate noncommercial or fair use, given the substantial reputation and goodwill of the Complainant’s mark or capacity to otherwise mislead Internet users.

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.

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 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.

In the present case, the Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith.

On the issue of registration, this Panel finds that there is no reason for the Respondent to have registered the Disputed Domain Name other than to trade off the reputation and goodwill of the Complainant’s well- known trademark. WIPO Overview 3.0, section 3.1.4.

The Panel notes that the Disputed Domain Name was registered in 2014. Panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. WIPO Overview 3.0, section 4.17.

Further, a gap of several years between registration of a complainant’s trademark and respondent’s registration of a disputed domain name (containing the trademark) may indicate bad faith registration. In this case, the Respondent registered the Disputed Domain Name some 25 years after the Complainant established registered trademark rights in the FIVE ARROWS mark. The Respondent has not come forward to rebut the Complainant’s allegations or offer any alternative explanation.

On the issue of use, the Disputed Domain Name does not currently resolve to an active website.

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Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the Complainant’s well-known trademark, and the composition of the Disputed Domain Name

and finds that in the circumstances of this case the passive holding of that Disputed Domain Name does not
prevent a finding of bad faith under the Policy.

The Complainant’s evidence is also that the Disputed Domain Name resolved, for a period of time, to an imitation of the Complainant’s website that displayed the Complainant’s trademarks and the same visual elements. Targeting of this nature is a common example of bad faith as referred to in paragraph 4(b)(iv) of

the Policy and identified in many previous UDRP decisions. WIPO Overview 3.0, sections 3.1.4 and 3.2.1.

passing off, constitutes bad faith. WIPO Overview 3.0, section 3.4. There is also evidence that the Respondent used the name “Alexandre de Rothschild” (being the name of the Executive Chairman of	Panels have held that the use of a domain name for illegitimate activity here, claimed impersonation or legitimate address of Five Arrows in Luxembourg. Previous administrative panel decisions have found that providing false information for the WhoIs database to shield a registrant’s identity is clear evidence of the Respondent’s knowledge of the Complainant’s rights at the time of registration and can support an inference of bad faith. WIPO Overview 3.0, section 3.2.1. 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 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 <five-arrows.com> be transferred to the Complainant.
/Nicholas Weston/ Nicholas Weston Sole Panelist Date: August 22, 2025