Goldman, Sachs & Co. v. NA
Claim Number: FA0606000741852
PARTIES
Complainant is Goldman, Sachs & Co. (“Complainant”), represented by Thomas S. Biemer, of Dilworth Paxson LLP, 3200 Mellon Bank Center, 1735 Market Street, Philadelphia, PA 19103. Respondent is NA (“Respondent”), represented by Bernard C. Dietz, of Law Offices of Bernard C. Dietz, PC, 4860 Cox Road, Suite 200, Glen Allen, VA 23060.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <goldmansex.com>, registered with Enom, Inc.
PANEL
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Robert T. Pfeuffer, Senior District Judge as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 29, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 3, 2006.
On June 29, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <goldmansex.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 10, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 31, 2006 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@goldmansex.com by e-mail.
A timely Response was received and determined to be complete on July 31, 2006.
On August 9, 2006 an Additional Submission was received by the Arbitrator having been received by the National Arbitration Forum on August 8, 2006 and forwarded by E-mail to the Arbitrator. It consisted of an additional 139 pages submitted by Bernard C. Dietz, Esquire on behalf of Respondent. The Respondent argues that the current dispute is outside the scope of the policy, because it concerns complicated issues of trademark law, including trademark dilution and infringement, which are more appropriate for a court of law. The Additional Submission was carefully reviewed by the Arbitrator prior to making a final determination.
On
August 7, 2006, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the
National Arbitration Forum appointed Robert T. Pfeuffer, Senior District Judge as
Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
In its Amended Complaint, it is asserted by Complainant that it has registered the GOLDMAN SACHS mark with numerous trademark authorities around the world. It also alleges that it has registered the GOLDMAN.COM mark with the United States Patent and Trademark Office. Complainant avers that it is a company that is well known around the world and is the owner and long standing user of the marks GOLDMAN SACHS and GOLDMAN.COM. Complainant points out that it is a multibillion dollar company and that it provides financial services in the field of financial planning, retirement planning, trust and estate planning, estate trust management, private asset management, insurance consultation, financial planning and estate trust management. Complainant states that Respondent is utilizing the <goldmansex.com> domain name to host an adult entertainment website and that the <goldmansex.com> domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. It cites Rule 3(b)(ix)(1) and Policy ¶ 4(a)(ii). Complainant contends further that Respondent should be considered as having no rights or legitimate interests with respect to the domain name <goldmansex.com> that is the subject of the complaint and such name was registered and is being used in bad faith citing Rule 3(b)(ix)(3) and Policy ¶ 4(a)(iii).
B. Respondent
In its Original Response, the
Respondent has denied all allegations contained in the Original Complaint and
states that the Respondent is Goldman Advertising Services BV and is the owner
of the domain name <goldmansex.com>
operating as a website that serves as a “yellow pages” type directory for
clubs and escort agencies. It claims
that the mark was registered June 28, 2001 with the Benelux Trademarks Office
and therefore Respondent has superior rights in such domain name. Respondent alleges that because of its
ownership of a registered trademark in GOLDMANSEX and that it has used the same
in a legitimate way in commerce, the Respondent has legitimate rights in said
domain name. Respondent further alleges that it did not register and is not using
the <goldmansex.com> domain
name in bad faith.
C. Additional Submissions
On August 3, 2006, the National Arbitration Forum received, in a timely manner, an additional submission which was considered by the Panel. In this submission, Respondent paints the dispute between the parties as a trademark dispute that therefore is outside the provisions of the UDRP; therefore, any action by the Panel would be inappropriate. The Respondent suggests that the proper forum for resolution of this dispute would be in the courts and not pursuant to the provisions of arbitration, claiming UDRP policy delegates all “legal disputes” to the courts.
Respondent claims that it has a registered trademark for the GOLDMANSEX mark with the Benelux Trademarks Office (Reg. No. 687,497 issued June 28, 2001). The name is used in connection with the exact type of services it provides at the <goldmansex.com> domain name and that it does business under the name “Goldman Advertising Services BV.” Respondent advances its assertion that Complainant believes its GOLDMAN SACHS mark is somehow superior to Respondent’s GOLDMANSEX mark because the Complainant has registered its mark in numerous countries while Respondent only has a registered mark in the Benelux region. Respondent cites numerous decisions in support of its assertion.
After careful review of all submissions, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s GOLDMAN SACHS mark. The Panel finds that the Complainant has established a prima facie case that Respondent lacks rights and legitimate interests in the <goldmansex.com> domain name Policy ¶ 4(a)(ii). The Respondent, under such circumstances, would then have the burden to rebut this finding by a showing of concrete evidence that it has rights to or legitimate interests in the disputed domain name. The Panel finds that the Respondent has not provided sufficient concrete evidence to rebut Complainant’s prima facie case on this issue.
With respect to the question of Registration and Use in Bad Faith, as set out in Policy ¶ 4(a)(iii), the Panel finds that the Respondent is using the <goldmansex.com> domain name to intentionally attract Internet users to a pornographic website thereby constituting bad faith registration and use under Policy ¶ 4(b)(iv). The Panel also finds that Respondent has incorporated the “Goldman” name into the disputed domain name, which creates further confusion with Complainant’s registration of GOLDMAN.COM.
Addressing the issues raised in Respondent’s additional submission, to wit.: that the current dispute is outside the scope of the Policy due to involvement of complicated issues of trademark law. The Panel finds against the Respondent on this assertion. Respondent’s request that the Panel dismiss the proceeding because other Panels have concluded that issues of trademark law are outside the scope of the Policy should be denied. The Panel has determined that this domain name dispute centers on an attempt by Respondent to recharacterize the domain dispute in the instant case as a trademark dispute, when in fact, the real issue is the Respondent’s bad faith registration and use of the disputed domain name. See Telebrands Corp. v. Khalid, FA 467979 (deciding to proceed with the dispute over the <telebrandspakistan.com> even though both the complainant and the respondent had registered marks in TELEBRANDS and TELE BRANDS PAKISTAN, respectively, because the panel thought it would be unfair and costly to treat the case as a trademark dispute when the “gravamen” of the proceeding was the alleged misuse of the domain name in dispute); see also The Estate of Marlon Brando v. thewordbank twb, FA 505502 (Nat. Arb. Forum Aug. 16, 2005) (“Respondent cannot divest this Panel of jurisdiction by attempting to characterize this matter as simply a ‘trademark dispute.’ Trademark issues are not only routinely considered in the context of Policy matters, but these issues must be considered in all Policy matters under the terms of the Policy. If Complainant did not have rights in some mark, the inquiry must end there and the requested relief cannot be granted.”); see also Abbott Laboratories v. Patel, FA 740337 (Nat. Arb. Forum Ag. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in an domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else).
Pursuant to Rule 18, the Panel exercises its discretionary authority to proceed with this case in spite of Respondent’s allegations of trademark infringement. The Panel therefore concludes that it can render a decision with respect to the <goldmansex.com> domain name that appropriately resolves the matter without delving into any issues of trademark law.
DISCUSSION
Paragraph 15(a) of the
Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs
this Panel to “decide a complaint on the basis of the statements and documents
submitted in accordance with the Policy, these Rules and any rules and
principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant alleges that it has registered the GOLDMAN SACHS mark with numerous trademark authorities around the world, including the United States Patent and Trademark Office, the European Union’s Office for Harmonization in the Internal Market and the Benelux Trademarks Office. Complainant further alleges that it registered the GOLDMAN.COM mark with the USPTO as well. The GOLDMAN SACHS mark was recognized by the USPTO by registration issued July 9, 1996, the European Union’s Office for Harmonization in the Internal Market issued its registration May 5, 2003 and the Benelux Trademarks Office issued its registration of such mark August 1, 1995. With respect to Complainant’s registered mark GOLDMAN.COM, it is found that the USPTO issued its registration March 21, 2006. The Panel finds that the Complainant’s numerous trademark registrations demonstrate its rights in the GOLDMAN SACHS and GOLDMAN.COM marks pursuant to Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (“Complainant’s numerous registrations for its HONEYWELL mark throughout the world are sufficient to establish Complainant’s rights in the HONEYWELL mark under the Policy ¶ 4(a)(i).”).
Complainant also alleges that the <goldmansex.com> domain name is confusingly similar to its GOLDMAN SACHS mark because the disputed domain name incorporates the predominant term of Complainant’s mark, GOLDMAN, and simply adds the term “sex,” which Complainant claims is phonetically similar to the other term of the mark, SACHS. The Panel finds that Respondent has failed to sufficiently distinguish the <goldmansex.com> domain name from Complainant’s mark simply by placing a term in the mark with a term of similar pronunciation, and that the Panel thus finds that there is a resulting confusion because of such similarity under Policy ¶ 4(a)(i). See Colibri Corp. v. Dinoia, FA 662937 (Nat. Arb. Forum May 5, 2006) (finding that the <calibri.com> domain name was visually and phonetically similar to the complainant’s COLIBRI mark); see also Gen. Elec. Co. v. Basalt Mgmt., D2000-0925 (WIPO Oct. 25, 2000) (finding the <generalelectricsex.com> domain name to be confusingly similar to the complainant’s GENERAL ELECTRIC mark).
The Panel is aware that Complainant
must first make a prima facie case
that Respondent lacks rights and legitimate interests in the <goldmansex.com> domain name under
Policy ¶ 4(a)(ii). Having established
such prima facie case, the burden
would then shift to the Respondent to show that it does in fact have rights or
legitimate interests. See Document Techs., Inc. v. Int’l Elec.
Commc’ns Inc., D2000-0270 (WIPO Jun. 6, 2000) (“Although Paragraph 4(a) of
the Policy requires that the Complainant prove the presence of this element
(along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts
to the Respondent to rebut the showing by providing concrete evidence that it has
rights to or legitimate interests in the Domain Name.”).
Complainant points out that Respondent is not commonly known by the <goldmansex.com> domain name, because there is a WHOIS Privacy Shield on the contact information for the registrant of the <goldmansex.com> domain name, and no other evidence of record suggests that Respondent is commonly known by the <goldmansex.com> domain name. Complainant further asserts that it has not authorized nor licensed Respondent to register or use a domain name incorporating a variation of Complainant’s GOLDMAN SACHS mark. The Panel finds that Respondent is not in fact commonly known by the disputed domain name and therefore finds that Respondent does not have rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See The Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Complainant also
alleges that Respondent’s use of the <goldmansex.com>
domain name is to further its maintaining an adult entertainment website
catering to business travelers and others seeking escort services in over 300
cities around the world. It claims that
the website displays the text, “Goldmansex provides the largest global
directory for adult entertainment to business travelers” and “Covers 5,000
clubs and escort agencies in the 300 largest business centers in the
world.” Complainant states that
Respondent’s website is identical to the website at the <cityoflove.com>
domain name and that this provides evidence that Respondent is redirecting
Internet users searching for information on Complainant’s financial services to
an adult-oriented website for commercial gain.
The Panel is convinced that
Respondent’s use of the <goldmansex.com>
domain name to operate an adult entertainment website is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) nor is it a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii). See Isleworth Land Co. v. Lost In Space, SA,
FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding that the respondent’s use
of its domain name to link
unsuspecting Internet traffic to an adult orientated website, containing images
of scantily clad women in provocative poses, did not constitute a connection
with a bona fide offering of goods or
services or a noncommercial or fair use); see
also Am. Online, Inc. v. Bates, FA 192595 (Nat. Arb. Forum Oct. 7, 2003) (“Attempts to
commercially benefit from a domain name that is confusingly similar to
another's mark by linking the domain name to an adult-oriented website [is]
evidence that the registrant lacks rights or legitimate interests in the domain
name.”).
Registration and Use in Bad Faith
The Panel has found above that Respondent has no rights or legitimate interests in the <goldmansex.com> domain name pursuant to Policy ¶ 4(a)(ii). The Complainant has alleged and the Panel so finds, that Respondent is intentionally attempting to attract, for commercial gain, Internet users searching for Complainant’s financial services thereby directing such inquiries to Respondent’s website filled with adult-oriented content. The Panel finds that Respondent is taking advantage of the confusing similarity between the <goldmansex.com> domain name and the GOLDMAN SACHS mark in order to profit from the goodwill associated with Complainant’s mark and that such conduct constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a pornographic website constituted bad faith registration and use under Policy ¶ 4(b)(iv)); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where the respondent attracted users to his website for commercial gain and linked his website to pornographic websites).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <goldmansex.com> domain name be TRANSFERRED from Respondent to Complainant.
ROBERT T. PFEUFFER, Senior District Judge, Panelist
Dated: August 31, 2006
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