Goldman, Sachs & Co. v. Lis Wevers c/o
Goldman Advertising Services BV
Claim Number: FA0610000812109
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 Lis Wevers c/o Goldman Advertising Services BV (“Respondent”), represented by Paul Veen,1ste Helmersstraat 17, Amsterdam 1054 CV, NL.
The domain name at issue is <goldmensex.com>,
registered with Easyspace Ltd.
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.
Tyrus R. Atkinson, Jr., Jacques de Werra, and Paul M. DeCicco, as
Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 4, 2006; the National Arbitration Forum received a
hard copy of the Complaint on October 6, 2006.
On October 5, 2006, Easyspace Ltd. confirmed by e-mail to the National
Arbitration Forum that the <goldmensex.com>
domain name is registered with Easyspace Ltd. and that the Respondent is the
current registrant of the name. Easyspace
Ltd. has verified that Respondent is bound by the Easyspace Ltd. 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 October 10, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 30, 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@goldmensex.com by e-mail.
A timely Response was received and determined to be complete on October
30, 2006.
A timely Additional Submission was received from Complainant and
determined to be complete on November 3, 2006.
An untimely Additional Submission was received from the Respondent on
November 9, 2006, and was not considered.
On November 9, 2006, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Tyrus R. Atkinson, Jr., Jacques de Werra,
and Paul M. DeCicco as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends as follows:
Complainant, Goldman, Sachs & Co., bases the Complaint upon longstanding use and ownership of its well-known, distinctive and registered GOLDMAN SACHS and GOLDMAN.COM marks, which have acquired substantial goodwill through use in global commerce by Complainant.
Complainant owns a Federal registration for the GOLDMAN SACHS mark, namely U.S. Registration No. 1,985,196, registered on the Principal Register of the United States Patent and Trademark Office on July 9, 1995.
In addition to its U.S. Registration, Complainant owns twenty-one (21) registrations and four (4) pending applications for the GOLDMAN SACHS mark in numerous countries and regions in the world, including the European Union (Community Trademark Registration No. 002727865), registered on May 5, 2003.
Complainant generally uses its GOLDMAN SACHS mark in connection with providing securities brokerage, financial investment, foreign exchange trading, private asset management and investment fund management and administration, trade execution, clearing, order routing and management, and financial portfolio management and advisory services via an online electronic communications network.
Complainant also owns a Federal registration for the GOLDMAN.COM mark, namely U.S. Registration No. 3,071,307, registered on the Principal Register of the United States Patent and Trademark Office on March 21, 2006. Complainant owns all of the goodwill in the GOLDMAN.COM mark associated with exclusive and continuous use of the mark in at least United States commerce since at least as early as September of 2000.
Complainant prevailed in a prior domain name dispute proceeding against the holder of the domain name <goldmansex.com> (hereinafter referred to as “Prior Dispute Proceeding”). Immediately after Complainant prevailed in the Prior Dispute Proceeding, the <goldmansex.com> website began advertising that patrons could “visit Goldmansex via <goldmensex.com>.”
The <goldmensex.com> website was nearly identical to the <goldmansex.com> website. The <goldmensex.com> domain name is used to automatically divert Internet users to <cityoflove.com>. The <cityoflove.com> website is nearly identical to the websites previously available at <goldmansex.com> and Goldmensex.com, an adult entertainment website primarily for business travelers. Yet another feature of the <cityoflove.com> website is to provide pornographic movies for sale.
Complainant’s rights in the well-known, distinctive and registered GOLDMAN SACHS and GOLDMAN.COM marks are established and previously recognized. Further, the disputed domain name, <goldmensex.com>, is confusingly similar to Complainant’s GOLDMAN SACHS mark. <goldmensex.com> incorporates the GOLDMAN SACHS mark, replaces the first instance of the letter “A” with the letter “E”, and replaces the name “Sachs” with the generic term “sex” within the mark. The incorporation of the word “Sex” with the name “Goldmen” in <goldmensex.com> creates a close phonetic and visual equivalent of the GOLDMAN SACHS mark. Because <goldmensex.com> is nearly visually and phonetically equivalent to Complainant’s mark, it is likely to cause confusion among Internet users as to Complainant’s affiliation, or association with Respondent’s website.
The disputed domain name is also confusingly similar to Complainant’s GOLDMAN.COM mark. <goldmensex.com> incorporates the GOLDMAN.COM mark, replaces the letter “A” with the letter “E”, and inserts the generic term “sex” within the mark.
Respondent lacks rights and legitimate interests in <goldmensex.com>. Respondent obtains commercial benefit by using <goldmensex.com>, which is confusingly similar to Complainant’s well-known, distinctive and registered GOLDMAN SACHS and GOLDMAN.COM marks, to redirect Internet users to <cityoflove.com>.
Respondent uses <goldmensex.com> to redirect Internet users to the previously transferred <goldmansex.com> and presently available <cityoflove.com> websites. None of the three protections for domain name registrants provided in Policy ¶ 4(c)(i)-(iii), including that Respondent is making a bona fide offering of goods or services, is commonly known by the domain name, and is making a legitimate, noncommercial or fair use of the domain name, are available to Respondent.
Prior to notice of this dispute, Respondent has not been using <goldmensex.com> with a bona fide offering of goods or services. Respondent was utilizing a virtually identical domain name that also failed to meet the standard.
Given the Prior Dispute Proceeding, there is no doubt that Respondent is the kind of bad actor that the Rules and Policies are designed to address. Only after losing the Prior Dispute Proceeding did Respondent begin using a virtually identical domain name to redirect users to its adult-oriented site. More specifically, <goldmensex.com> has been registered and is being used in bad faith because it creates a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of the use of <goldmensex.com> and/or of the adult entertainment services and pornographic material promoted at <cityoflove.com>. In addition, <goldmensex.com> tarnishes Complainant’s well-known, distinctive and registered GOLDMAN SACHS and GOLDMAN.COM marks.
Given the
popularity of Complainant’s well-known marks, Respondent had to have been aware
of Complainant’s marks prior to registering
the disputed domain name. More
specifically, Respondent was aware of Complainant’s well-known marks before
posting the <goldmensex.com> website and then using it to redirect
Internet users to <cityoflove.com>, particularly in view of the Prior
Domain Dispute Proceeding.
B. Respondent
Respondent
contends as follows:
The
Complainant prevailed in a prior domain name dispute regarding domain name
<goldmansex.com>. There the panel ignored the importance in an ICANN
proceeding of the respondent showing proof a valid trademark registration in
the domain name at issue, since this proves rights in the domain name and hence
the claim should have been denied.
The
Respondent has a legitimate right in the domain name at issue based on its
ownership of the registered trademark for "Goldmansex," which was awarded
on June 28, 2001 by the Benelux Trademark Office. The Respondent operates from
the Netherlands so this registration is appropriate under the
circumstances. The Respondent's
trademark registration covers the exact type of services that the Respondent provides
through the domain at issue. As a
result, the Respondent has rights in the domain <goldmensex.com>
and the Complainant's request for transfer of the domain must be denied.
Given the
Respondent's longstanding and legitimate trademark registration in the domain
name at issue in this case, the Respondent's ownership of the domain cannot be
categorized as cybersquatting or cyberpiracy.
As a result, this dispute does not fit into the "relatively narrow
class of cases" ripe for adjudication in this forum.
Complainant
has failed to carry its burden of proof under ¶ 4(a)(ii) of the Policy.
The
registration of trademark "Goldmansex" and registration of domain
name <goldmensex.com> predate the Complainant's registration of
GOLDMAN.COM by almost five years.
It is
unlikely that Internet users would confuse the Complainant's financial services
web sites with those of the Respondent’s, whether from domain name confusion or
website or domain name appearance. The
Respondent's domain name is not a misspelling related to the Complainant. Internet users searching for the
Complainant, whether as existing customers or prospective customers, would
immediately recognize the difference between the "Goldman Sachs" name
and the "Goldmensex" domain, without even needing to visit the
Respondent's site. The Respondent's domain name has two fewer letters than that
of the Complainant and an Internet user would have to misspell five letters
before being directed to the Respondent's domain name.
Users
that do visit the web site to which the Respondent's domain resolves would not
believe that they were on a site affiliated with the Complainant, given the
different content and appearance of the web site. The Respondent does not
mention the Complainant anywhere on its website, does not even utilize a
remotely similar look and feel to that of the Complainant's websites, and
offers a completely different service than those of the Complainant.
The
Complainant’s registered marks “Goldman Sachs” and "Goldman.com" are
limited to the classification of “financial services.” While registration on the principal register
is prima facie evidence of the validity of the registered mark, it only
demonstrates “the registrant's exclusive right to use the registered mark in
commerce on or in connection with the goods or services specified in the
registration.”
The term
"Goldman" is a very common and generic name. A search on whois.net for top level domains
reveals that 805 domain names start with the word "Goldman”, most of which
are not owned by the Complainant.
The <goldmensex.com>
domain name is making an bona fide offering: it supplies an information
service, which offers services very similar to the escort directory of the
Yellow Pages, a well respected American company. <goldmensex.com>
does not offer any sexual explicit material or pornographic material. True,
there is an Adult Cinema Center available, but this is neither owned nor
operated by Goldman Advertising Services BV. Furthermore a visitor of the
website first has to perform 6 actions before he is confronted with sexual
explicit material. This means he is not
unexpectedly confronted with it, but is deliberately looking for such material.
The
Respondent did not register, and is not using, the <goldmensex.com>
domain in bad faith; ICANN Policy ¶ 4(a)(iii).
The Respondent registered and is using the <goldmensex.com> domain as a reflection of the Respondent's business name and registered trademark. The Respondent did not acquire the name for purposes of selling the name to the Complainant and has never offered to sell the domain to any third party.
The
Respondent clearly has not registered the domain name for the purpose of
disrupting the business of a competitor. The Respondent and the Complainant are
not competitors and are in completely different lines of business. The
Respondent does not promote or otherwise advertise any products or services
similar to those of the Complainant. Respondent’s only purpose was to have
Respondent secure the same interests and rights through the registration of the
domain name in dispute.
FINDINGS
Complainant has rights in trademarks
confusingly similar to the at-issue domain name.
Respondent has a Benelux trademark in the
word mark GOLDMANSEX.
The registration of a trademark does not give
the mark holder per se rights in any and every domain name registered which may
be identical or materially similar to the registrant’s trademark.
The Respondent uses the at-issue domain name
to direct traffic to website(s) which are unrelated to Complainant’s
activities.
The Parties are not competitors.
The issues before this Panel were previously
address in a prior UDRP proceeding between the same parties.
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.
Complainant’s rights in the well known, distinctive and registered GOLDMAN SACHS and GOLDMAN.COM marks are established and previously recognized in a prior proceeding between the parties to this dispute. See Goldman, Sachs & Co. v. NA, FA 741852 (Nat. Arb. Forum Aug. 31, 2006) (finding Complainant’s numerous trademark registrations demonstrate its rights in the GOLDMAN SACHS and GOLDMAN.COM marks under Policy ¶ 4(a)(i)).
The <goldmensex.com> domain name is confusingly similar to the Complainant’s GOLDMAN SACHS trademark and/or other trademarks held by the Complainant, which incorporate the GOLDMAN SACHS mark. The domain name merely substitutes the first instance of the letter “A” with the letter “E”, and replaces the name “Sachs” with the generic term “sex” within the mark. The incorporation of the word “Sex” with the name “Goldmen” in <goldmensex.com> creates a close phonetic and visual equivalent of the GOLDMAN SACHS marks. Because <goldmensex.com> is nearly visually and phonetically equivalent to Complainant’s mark, it is likely to cause confusion among Internet users as to Complainant’s affiliation, or association with Respondent’s website for business travelers. See Goldman, Sachs & Co., supra (finding <goldmansex.com> confusingly similar to GOLDMAN SACHS mark); see also Microsoft Corp. v. Rushton, D2004-0123 (WIPO Apr. 27, 2004) (finding <mikerosoft.com> phonetically identical and confusingly similar to MICROSOFT mark); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding Respondent attracted Internet users to its website, for commercial gain, by creating a likelihood of confusion with Complainant’s mark as source, sponsorship, or affiliation with Respondent’s website).
Respondent’s assertion that consumers are not likely to confuse the parties’ respective websites because of the different nature of each website’s content is without merit. The test for “confusing similarity” in a UDRP proceeding does not consider the type or class of service and the content of a website as a factor in comparing a trademark with a domain name. The absence of risk of confusion resulting from the difference of activities of the parties (here financial services as opposed to adult content) and differences in the claimed services in the respective trademarks is not relevant. The Policy itself is consistent with this notion and which is clearly confirmed in the WIPO Panel Views on Selected UDRP Questions ¶ 1.2, http://www.wipo.int/amc/en/domains/search/overview/index.html#12 (last visited Nov. 21, 2006)
Furthermore, regardless of the content of Respondent’s website, the disputed domain name is confusingly similar
under the doctrine of initial interest confusion, which cannot be overcome by
content or disclaimers.
Complainant must first make out a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain names under ¶ 4(a)(ii) of the Policy. The threshold for such showing is low. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005). Once a prima facie case is established, the burden then shifts to Respondent who must demonstrate that it nevertheless has rights or legitimate interests in the at-issue domain name. Complaintant has satisfied its burden, Respondent has not.
First, Complainant shows that it is not commonly known as “Goldmansex” or as “Goldmensex”. The identical issue was decided by the panel in Goldman, Sachs & Co. v. NA, FA 741852 (Nat. Arb. Forum Aug. 31, 2006).
Second, Respondent is using the disputed domain name to redirect Internet users to Respondent’s website featuring adult-oriented content. This is not a bona fide offering of goods or services as Respondent is using Complainant’s marks to attract Internet users, tarnishing Complainant’s marks and public goodwill in the process. Complainant points out in its Additional Submission that previous panels have consistently found that the use of a disputed domain name in connection with adult-oriented goods or services is not a bona fide offering under the Policy.
Nor is the Respondents use of the domain name a legitimate noncommercial or fair use as contemplated by 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 Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent.”).
Respondent has a Benelux trademark in the word mark GOLDMANSEX and claims that the fact of the trademark is a per se bar against a panel finding that Respondent lacks rights or interest in the domain name. However, based on evidence filed by the Complainant, it appears that the application for the Benelux trademark GOLDMANSEX was filed on June 28, 2001 by Mr Paul A.M. Veen (who appears to be the representative of the Respondent in these proceedings) and that the trademark was subsequently assigned to the Respondent on October 10, 2005 . Consequently, Respondent cannot allege now that its Benelux trademark would merely be reflecting the distinctive part (i.e. “Goldman”) of its corporate name (i.e. Goldman Advertising Services BV) given that the Respondent only recently became the owner of the trademark. In any case, while Respondent may have a trademark in GOLDMANSEX it does not have a mark in the at-issue domain name <goldmensex.com>. Nevertheless, if the GOLDMANSEX mark is valid, then trademark protection of such mark might extend to the at-issue domain name for the same reasons that the Panel holds above that the domain name is confusingly similar to Complainants mark(s).
On the other hand, the Respondent’s “trademark” seems to be a sham. Indeed the domain name references web sites that are separately branded and accessed through a redirected referral by the at-issue domain name. The Respondent fails offer any reason why the advertising company is called as it is. The name of the Respondent’s signatory is not Goldman, nor is the principal named respondent (Lis Wevers). There is nothing in the Respondents papers which would make Respondent’s trademark story seem less dubious as Respondent fails to adequately explain the domain name registration without reference to the Benelux trademark.
What seems apparent is that neither the Respondent’s mark nor the at-issue domain name were obtained to distinguish the Respondent’s goods or services in commerce, but rather to trade off the notoriety of the Complainant’s well know marks. Respondent may have rights in its registered trademark, but it does not necessarily have rights in the at-issue domain name. Respondent’s assertion that "there is not a single case in the history of either the NAF or the WIPO where a respondent showed proof of a valid trademark in the domain name at issue and where the panel decided to transfer the domain name" is incorrect. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi, D2000-0847 (WIPO October 12, 2000). In Madonna Ciccone the panel held that "it would be a mistake to conclude that mere registration of a trademark creates a legitimate interest under the Policy. That panel also opined:
To establish cognizable rights, the overall circumstances should demonstrate that the registration was obtained in good faith for the purpose of making bona fide use of the mark in the jurisdiction where the mark is registered, and not obtained merely to circumvent the application of the Policy.
Id.
While the Madonna Ciccone panel was concerned with a Tunisian
trademark registration and noted that the fact of a Tunisian registration was
indicative bad faith motives, we see no reason why that panel’s underlying
rational should not apply to more conventional trademark registrations. Where,
as here, it appears likely that a trademark was obtained to shield a domain
name from an unfavorable UDRP result, a Panel should not be bound by an
immutable rule that would, if followed blinded, work an inequity on one of the
parties or pervert the objectives of the Policy.
Indeed, the domain name registration agreement between Registrar and
Registrant, the very document that grants the right to use a domain name to a
registrant, mandates that the registration will not be used against the rights
of any third-party. If a registrant intends to use the registration to trade on
another’s mark then the registration agreement is breached and the grant of
rights to the registrant is null and void. The Respondent may thus have rights
in the mark, but no rights in the domain name by virtue of its breach of the
registration agreement.
Respondent’s contention that trademark rights decidedly cut in favor of
a showing of rights or interests in a domain name was also rejected in Société
de Bains de Mer et du Cercle des Etrangers à Monaco Ltd. v. Piranha Interactive
Ltd., D2000-1333 (WIPO, Dec., 18, 2000. There, in contending that it had a
right or legitimate interest, the respondent pointed to its Tunisian trademark
registration and its pending Canadian trademark registration in the disputed
domain name, The panel first noted that it is not requested to rule on the
validity of the Tunisian mark and Canadian application but “rather has to
contemplate whether the registration of the domain name in issue conforms to
the ICANN policy, especially in view of the cases that already have been
adjudicated.’ This Panel takes a similar approach above. Next, that panel recognized that under
previous decisions, the use to which the disputed domain name was being put was
not a legitimate one. As for the direct question of whether the respondent had
any legitimate right or interest in the domain name given the fact that it had
registered the identical trademark in Tunisia and had a pending application in
Canada, the Panel stated:
Finally, it is important to note that the
respondent registered its Tunisian trademark on June 5, 2000, well after the
registration of the litigious domain name on February 25. 1999 and also after
the registration of the complainant’s trademark several years before. At the
time of the registration the respondent had absolutely no trademark protection.
Therefore the panel cannot find any legitimate right or interest in favor of
the respondent.
Id.
According to its WHOIS record, the at-issue domain name was registered
on or about May 29, 2001. The
application for the Benelux trademark was made on June 28, 2001. Because rights
and interests in the disputed domain name are measured at the time the domain
name is registered, the subsequent Benelux trademark registration cannot
satisfy Respondent’s burden. In any case, as already noted, Respondent became
the owner of the Benelux trademark only in 2005. Consequently, Respondent
cannot derive any rights or legitimate interests in the domain name <goldmensex.com>
on the basis of the Benelux trademark.
Goldman Sachs had common law rights to its famous mark, GOLDMAN SACHS,
over one century prior to the registration of the domain name and registered
trademark rights in the United States and Benelux years prior to Respondent’s
registration of the domain name <goldmensex.com>. A comparison of
the parties’ respective rights at the time <goldmensex.com> was
registered is fatal to Respondent’s claims regarding rights and interest in the
domain name.
Additionally, Respondent’s reference in this context to the citation made by the Respondent to High Speed Productions v. Fabio Blanco relates to the STOP Policy and not the UDRP Policy is biased and does not save Respondent claim of having legitimate rights or interest. FA 102951 (Nat. Arb. Forum Mar. 6, 2002). Respondent cites High Speed Productions for the proposition that:
Paragraph 4(c)(i) of the STOP Policy provides that if a party is the owner or beneficiary of a trademark or service mark that is identical to the domain name, then that party has demonstrated a right or legitimate interest in respect of the domain name. The requirement is simple, straightforward, and without regard to time.
Id.
However, the Respondent intentionally omitted two key sentences preceding this citation. To wit:
Both parties spend considerable time arguing whether Respondent has rights or legitimate interests in the domain name at issue in terms of the UDRP requirements. However, the STOP Policy incorporates a significant change from the UDRP, and that change is dispositive.
Id. Consequently, this reference cannot be of any help to Respondent.
In conclusion, Respondent has no legitimate rights or interests with
respect to the domain name.
The at-issue domain name has been
registered and is being used in bad faith because it creates a likelihood of
confusion with Complainant’s marks as to the source, sponsorship, affiliation,
or endorsement of the use of <goldmensex.com> and/or of the adult
entertainment services and pornographic material promoted at
<cityoflove.com>. See Goldman, Sachs & Co., supra
(finding Respondent is taking advantage of the confusing similarity between
<goldmansex.com> and the GOLDMAN SACHS mark 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)). In addition, the at-issue domain name and its use tarnishes
Complainant’s well known, distinctive and registered GOLDMAN SACHS and
GOLDMAN.COM marks. See Wells Fargo & Company v. Party Night Inc. and Peter Carrington,
FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (Respondent’s
tarnishing use of <weellsfargo.com>, <wellesfargo.com> and
<wellssfargo.com> to redirect Internet users to adult-oriented websites
is evidence of bad faith); see also MatchNet
plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding association of
a confusingly similar domain name with a pornographic website can constitute
bad faith); see also Ty, Inc. v.
O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that linking domain
names in question to adult-oriented websites is evidence of bad faith).
Given the
popularity of Complainant’s well-known marks,
Respondent had to have been aware of Complainant’s marks prior to registering
the disputed domain name. See Victoria's Secret et al v.
Victoria's Cyber Secret, FA 96536 (Nat. Arb. Forum Mar. 9, 2001) (popularity of mark prior to Respondent’s registration
supports Respondent’s awareness of mark and finding of bad faith). Respondent was aware of Complainant’s well
known marks before posting the <goldmensex.com> website and then
using it to redirect Internet users to <cityoflove.com>, particularly in
view of the prior UDRP proceeding. This
fact supports a finding of bad faith. See Kraft
Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (finding fact
“that the Respondent chose to register a well-known mark to which he has no
connections or rights indicates that he was in bad faith when registering the
domain name at issue.”).
The Panel
notes that the doctrine of constructive notice of trademark registration should
be handled carefully in a non-United States case such as here. See Prestige
Brands Holding Inc. & Prestige Brands International, Inc. v. The domain is
not for sale / Motohisa Ohno, D2006-0608 (WIPO July 17, 2006 ).
Nevertheless, factors exist here from which it can be inferred that the Respondent
knew about the Complainant's trademarks when it registered the domain name.
These factors are (without limitation): 1) The well known character of the
Complainant's trademarks as evidenced inter alia by world brand rankings; 2) registration of two domain
names which both closely imitate Complainant's trademarks; 3) the absence of
any compelling reason given by the Respondent which would justify or explain
the choice of the at-issue domain name, except by reference to its Benelux
trademark and seemingly baseless business name.
Respondent’s
use of the disputed domain name in the context of its loss in the prior dispute
is also evidence of bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so
obviously connected with the Complainants that the use or registration by
anyone other than Complainants suggests ‘opportunistic bad faith’.”); see
also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it
is “inconceivable that the respondent could make any active use of the disputed
domain names without creating a false impression of association with the
Complainant.”).
Finally, the use of domain names which are
confusingly similar to third party trademarks for commercial adult or
pornographic content is a bad faith use. See Caesars World, Inc v. Alaiksei
Yahorau, D2004-0513 (WIPO July 25, 2005).
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 <goldmensex.com>
domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Jacques de Werra, and
Paul M. DeCicco, Panelists
Dated: November 22, 2006
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