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.
Respondent is Contact Privacy Inc. Customer 0159258593, Canada / James O’Neill, the Ayco Company, L.P., 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 December 10, 2020. On December 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 11, 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 Complainant on December 28, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 30, 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 Respondent of the Complaint, and the proceedings commenced on January 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 31, 2021. The Center appointed Lorelei Ritchie as the sole panelist in this matter on February 12, 2021. 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 Founded in 1869, Complainant, together with its affiliated companies (collectively, “Complainant”), is a leading global investment banking, securities, and investment management firm. Complainant operates under the GOLDMAN SACHS mark, among others. Complainant owns various trademark registrations globally. These include United States Registration No. 1,985,196, for GOLDMAN SACHS (registered July 9, 1996), and United States Registration No. 4,384,481, for GOLDMAN (registered with a claim of acquired distinctiveness on August 13, 2013). Complainant also owns domain names that incorporate its GOLDMAN SACHS mark, and variations thereof. These include The disputed domain name Complainant contends that (i) the disputed domain name Specifically, Complainant contends that it owns the GOLDMAN SACHS mark, and that the mark is “famous worldwide,” with wide-spread media coverage, and a recognized ranking from Interbrand’s Best Global Brands, as no. 53 in 2019. Complainant contends that Respondent has incorporated the GOLDMAN SACHS mark into the disputed domain name, and added to it the mark AYCO, which is a corporate affiliate of Complainant that offers additional financial services. Complainant contends that Respondent lacks rights or legitimate interest in the disputed domain name, and rather has registered and is using it in bad faith to profit from the good will of Complainant’s mark for Respondent’s own commercial gain. In particular, Complainant contends that Respondent has acted in bad faith in sending out fraudulent emails, when Respondent was clearly aware of Complainant’s rights in the GOLDMAN SACHS mark. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel must first determine whether the disputed domain name The disputed domain name incorporates in full Complainant’s GOLDMAN SACHS mark. The Panel notes that the disputed domain name also contains the term AYCO. Prior UDRP panels have agreed that supplementing a Complainant’s trademark with another trademark does not, by itself, “avoid a finding of confusing similarity” under the first UDRP element. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.12. See, for example, Chevron Corp. v. Young Wook Kim, WIPO Case No. D2001-1142 (transferring The Panel is aware that another petroleum company’s famous mark, viz. “Texaco”, also is contained in the disputed domain name and that Texaco is not a party to this proceeding. However, the Panel finds the Complainant nonetheless satisfies the requirements of the Policy at 4a(i): “your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.” In this case, the Panel finds the Respondent’s domain name, Here, the disputed domain name consists of Complainant’s mark GOLDMAN SACHS, along with the mark AYCO, which is the name of a corporate affiliate that was acquired by Complainant, and through which Complainant offers additional financial services to consumers. The Panel therefore finds that Complainant has satisfied the first UDRP element, in showing that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy. B. Rights or Legitimate Interests The Panel next considers whether Complainant has shown that Respondent has no “rights or legitimate interest” as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”. Respondent did not submit a reply to the Complaint, however. Rather, as mentioned in Section 4 of this Panel’s decision, Respondent has used an email account associated with the disputed domain name to engage in fraudulent behavior whereby Respondent has merely used the disputed domain name to set up email accounts in an apparent phishing scheme. Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interest in the disputed domain name, which Respondent has not rebutted. The Panel therefore finds that Complainant has satisfied the second UDRP element. C. Registered and Used in Bad Faith There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”. As noted in Section 4 of this Panel’s decision, although the disputed domain name resolves to an inactive web page, Respondent has used the disputed domain name to set up an email account in a manner apparently calculated to confuse potential consumers of Complainant into providing Respondent their sensitive personal and financial information. Hence, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain. The disputed domain name, incorporates in full Complainant’s GOLDMAN SACHS mark and the AYCO mark owned by Complainant’s corporate affiliate. The Panel thus finds that despite the passive website use, Respondent registered and used the disputed domain name with knowledge of Complainant’s prior rights, thereby evidencing bad faith. See WIPO Overview 3.0, section 3.4, which notes that “[p]anels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution.” Overall, the Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with 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 Lorelei Ritchie
Sole Panelist
Date: February 23, 2021
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