The Complainant is Goldman Sachs & Co. LLC (formerly known as Goldman, Sachs & Co.), United States of America (“United States”), represented by Jackson Walker, LLP, United States.
The Respondent is WhoisGuard, WhoisGuard, Inc., Panama / Michele Swanson, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2020. On August 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 25, 2020, 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 August 26, 2020 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 August 27, 2020. 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 September 14, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 9, 2020. The Center appointed Gareth Dickson as the sole panelist in this matter on October 30, 2020. 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 was founded in 1869 and is a subsidiary of The Goldman Sachs Group, Inc., a global investment banking, securities and investment management firm that provides a wide range of financial services to corporations, financial institutions, governments and individuals, under the GOLDMAN and GOLDMAN SACHS marks and online via its website at “www.goldmansachs.com”. The Complainant is the owner of a number of trade mark registrations for GOLDMAN SACHS (the “Mark”) around the world, including: - United States trade mark registration number 1975880, registered on May 28, 1996; The Complainant has, through extensive worldwide use of the Mark over a prolonged period of time, generated substantial goodwill and brand recognition in the Mark around the world. The disputed domain name was registered on May 5, 2020. It currently does not point to any active website but is being used by the Respondent to send emails to customers of the Complainant, which emails contain requests that those customers send payments due to the Complainant to alternative bank accounts. 5. Parties’ Contentions A. Complainant The Complainant argues that it has rights in the Mark by virtue of its ownership of various trade mark registrations for the Mark around the world. It contends that the disputed domain name is confusingly similar to the Mark since the Mark is recognisable within the disputed domain name and the disputed domain name is identical to it but for the subtle misspelling of “sachs” as “sechs”, under the generic Top-Level Domain (“gTLD”) “.com”. The Complainant contends that this amounts to classic typosquatting. The Complainant confirms that the disputed domain name was registered by the Respondent without its permission and that the Respondent is not a licensee of the Complainant. It alleges that the Respondent has been using the disputed domain name to further a fraud, writing to customers of the Complainant while imitating the Complainant, and trying to persuade those customers to send payments due to the Complainant to a bank account nominated by the Respondent but unrelated in any way to the Complainant. The Complainant submits that there is no evidence to suggest that the Respondent: has been commonly known by the disputed domain name (whose name is not reproduced in or even similar to the disputed domain name); is making, or intends to make, a legitimate noncommercial or fair use of it (the disputed domain name having been used specifically for the purposes of obtaining money from third parties); or has ever used or demonstrated preparations to use it in connection with a bona fide offering of goods or services. The Complainant submits that the Respondent must have known of the Complainant and the Mark when it registered the disputed domain name. The Mark, according to the Complainant, is inherently distinctive and is well known throughout the world, as evidenced in prior UDPR decisions. The Respondent’s own use of the disputed domain name to intercept and hijack email chains between the Complainant and its customers confirms beyond any doubt that the Respondent knew of the Mark and the Complainant’s interest in it when it registered the disputed domain name and that it registered it in bad faith. The Complainant also argues that the use of a domain name for per se illegal activity is manifest evidence of bad faith use of the disputed domain name. The Complainant notes too that the Respondent has used a privacy service to conceal its identity for as long as possible. Together, the Complainant submits that the Respondent is using the disputed domain name in bad faith. 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 bears the burden of proving that: a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and c) the disputed domain name has been registered and is being used in bad faith. These criteria are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied. A. Identical or Confusingly Similar The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark. Section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides that “[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”. The Panel therefore accepts that the disputed domain name is confusingly similar to the Mark since it is a common, obvious and intentional misspelling of the Mark, comprising the replacement of “sachs” with “sechs”, which is a minor difference to the Mark and does not alter the phonetic or conceptual similarity between the disputed domain name and the Mark. The disputed domain name is clearly intended to appear, and is, confusingly similar to the Mark. The addition of the gTLD “.com” does not alter this conclusion. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. In the current proceeding, the Complainant has established its prima facie case. The evidence before the Panel is that the Mark enjoys a degree of reputation and inherent distinctiveness that makes a coincidental adoption by the Respondent highly unlikely. The Complainant states that it has not given the Respondent permission to use the Mark, in a domain name or otherwise, and submits that the Respondent has not been commonly known by the disputed domain name. There is no evidence that the Respondent has acquired any common law rights to use the Mark, is commonly known by the Mark or has chosen to use the Mark in the disputed domain name in any descriptive manner or is making any use of the disputed domain name that would establish rights or legitimate interests as a result of a noncommercial or fair use of it. Furthermore, the use of the disputed domain name to send emails seeking the redirection and appropriation of funds properly destined for the Complainant does not constitute a bona fide sale of goods or services or a legitimate noncommercial or fair use within the meaning of the Policy. Section 2.13.1 of the WIPO Overview 3.0 states that: “Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent”. Such consideration applies here. By not participating in these proceedings, the Respondent has failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element. As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Panel notes that the disputed domain name was registered many years after the Mark was registered as a trade mark in the United States, where the Respondent resides, and accepts that the disputed domain name was chosen by reference to the Mark. The disputed domain name is a clear example of a typosquatting domain name, that is, one which was chosen with a trade mark owner in mind, usually after the relevant trade marks have been registered, and for the purpose of diverting traffic away from or otherwise seeking to cause confusion with that trade mark owner by capitalizing on Internet users’ typographical mistakes. This conclusion is inevitable from the fact that the disputed domain name has no meaning other than as a reference to the Marks. The Panel therefore finds that the Respondent’s registration of the disputed domain name was in bad faith since it attempted to appropriate for the Respondent, without the consent or authorisation of the Complainant, rights in the Complainant’s Mark. The disputed domain name is also being used in bad faith. Section 3.1.4 of the WIPO Overview 3.0 states: “[…] given that the use of a domain name for per se illegitimate activity such as the sale of counterfeit goods or phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith”. The disputed domain name has been used to create emails intended to intercept and unlawfully obtain money by deceiving recipients as to the origin of the request for payment. That is manifest evidence of bad faith. Therefore, and on the basis of the information available to it, the Panel must, and does, find that the Respondent’s use of the disputed domain name to send emails which are intended to, and are very likely to, confuse the recipient of such emails as to their origin is without justification. Consideration of these and other factors militates in favour of a finding of bad faith. The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith. 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 Gareth Dickson
- United States trade mark registration number 1985196, registered on July 9, 1996; and
- European Union trade mark registration number 002752715, registered on August 4, 2003; and
- European Union trade mark registration number 002727865, registered on December 5, 2003.
Sole Panelist
Date: November 13, 2020
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