The Complainant is Goldman Sachs & Co. LLC, United States of America (“United States”), represented by Hunton Andrews Kurth LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Arben Bido, GoldmanCfd Ltd, Marshall Islands. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 16, 2019. On May 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 20, 2019, 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 May 21, 2019 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 May 23, 2019.
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 May 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2019.
The Center appointed George R. F. Souter as the sole panelist in this matter on June 26, 2019. 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 one of the leading banking companies, which traces its activity from 1869. Evidence of the Complainant’s reputation under its GOLDMAN and GOLDMAN SACHS trademarks, together with details of extensive registrations of its GOLDMAN and GOLDMAN SACHS trademarks have been supplied to the Panel. Among its trademark registrations is United States trademark registration number 1975880, GOLDMAN SACHS, registered on May 28, 1996, and United States trademark registration number 4384481, GOLDMAN, registered on August 13, 2013.
The disputed domain name was registered on May 10, 2018. The disputed domain name resolves to a website apparently offering investment related services. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the disputed domain name is confusingly similar to its GOLDMAN trademark, containing its trademark in its entirety, with the mere addition of a descriptive or non distinctive element, namely the letters “cfd”; which the Complainant has informed the Panel is an abbreviation, commonly used in banking circles, of the expression “contract for difference”.
The Complainant alleges that, to the best of its knowledge, the Respondent is not generally known by the disputed domain name, and states that it has never granted permission to the Respondent to use its GOLDMAN trademark in connection with a domain name, or otherwise.
The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith in connection with a website capable of confusing users as to whether the website is either operated by the Complainant, or with the Complainant’s consent. The Complainant also alleges that it has been contacted by a number of victims of the Respondent’s fraudulent activity, with the Respondent’s victims believing that they are retaining Complainant’s services, not the Respondent’s services. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant:
(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-established in prior decisions under the UDRP, with which the Panel agrees, that the mere addition of a generic Top-Level Domain (“gTLD”) is irrelevant when comparing a trademark with a disputed domain name. Accordingly, the Panel finds that the gTLD “.com” is irrelevant when comparing the disputed domain name with the Complainant’s trademark in the circumstances of the present case. In the Panel’s opinion, the letters “cfd”, are clearly a descriptive or non-distinctive element added to the Complainant’s GOLDMAN trademark, and the dominant element of the disputed domain name is the Complainant’s GOLDMAN trademark. It is well-established in prior decisions under the Policy, with which the Panel agrees, that the mere addition of a descriptive or non-distinctive element to a trademark in which the Complainant has rights is insufficient to avoid a finding of confusing similarity between the Complainant’s trademark and the disputed domain name.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s GOLDMAN trademark. B. Rights or Legitimate Interests
It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy.
The Panel considers the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case. The Panel notes that the Complainant never consented to the Respondent’s use of the GOLDMAN trademark. Furthermore, there is no evidence that the Respondent is using the disputed domain name for a bona fide offering of goods or services, or for making a legitimate noncommercial or fair use of the disputed domain name, but rather the Respondent appears to be using the disputed domain name to confuse Internet users likely for commercial gain by trading off of the goodwill associated with the Complainant’s trademark.
The Panel further notes there is a disclaimer on the website at the disputed domain name, indicating “[this] website is […] not associated in any ways with Goldman Sachs or Goldman Sachs International or Goldman Sachs Asset Management International […]”. Considering the disputed domain name is incorporating the Complainant’s well-known trademark GOLDMAN in its entirety with the mere addition of “cfd”, and the evidence provided by the Complainant that it has been contacted by a number of persons asking about the connection between the disputed domain name and the Complainant, the Panel finds that such disclaimer does not avoid a potential confusion or the risk of implied affiliation with the Complainant. Therefore, the Complainant has satisfied that the Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. In the circumstance of the present case, in which the Panel believes that the Respondent has clearly had the Complainant’s trademark in mind when registering the disputed domain name, the Panel regards it as appropriate to find that the disputed domain name was registered in bad faith, and so finds.
The Complainant has provided the Panel with examples of users who have accessed the website operated under the disputed domain name, and been confused as to whether the website was either operated by the Complainant, or with the Complainant’s consent.
It is well-established in prior decisions under the Policy, with which the Panel agrees, that the operation of a website under a disputed domain name which gives rise to confusion as to the authenticity of the website as to whether it is being operated by the Complainant or with the Complainant’s consent, constitutes use of the disputed domain name in bad faith. The Panel is, consequently, of the opinion that the circumstances of the present case render it appropriate to find that the disputed domain name is being used in bad faith, and so finds.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 be transferred to the Complainant.
George R. F. Souter
Sole Panelist
Date: July 10, 2019
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