Goldman, Sachs & Co. v. Richard Hawkins
Claim Number: FA0610000812119
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 Richard Hawkins (“Respondent”), 12 Gombarrah Rd., Canberra, ACT 2121, AU.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <goldmansecks.com>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
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, Direct Information Pvt Ltd d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <goldmansecks.com> domain name is registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Direct Information Pvt Ltd d/b/a Publicdomainregistry.com has verified that Respondent is bound by the Direct Information Pvt Ltd d/b/a Publicdomainregistry.com 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 17, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 6, 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@goldmansecks.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 10, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <goldmansecks.com> domain name is confusingly similar to Complainant’s GOLDMAN SACHS mark.
2. Respondent does not have any rights or legitimate interests in the <goldmansecks.com> domain name.
3. Respondent registered and used the <goldmansecks.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Goldman, Sachs & Co., is a financial services company that has used the GOLDMAN SACHS mark in commerce in the United States since at least as early as December 1869. Complainant has utilized the GOLDMAN SACHS mark in connection with its offering of financial services, including investment brokerage and management, financial research, financing services, real estate investment, and consulting. Complainant holds numerous federal trademark registrations for its GOLDMAN SACHS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,985,196 issued July 9, 1996). Complainant also holds trademark registrations for the GOLDMAN SACHS mark in several jurisdictions throughout the world, including Australia, the jurisdiction in which Respondent resides.
Respondent, Richard Hawkins, registered the <goldmansecks.com> domain name on July 19, 2006. Respondent’s disputed domain name resolves to an adult entertainment website displaying a pornographic image with the caption “G Oldman Secks.”
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 asserts and has submitted evidence of federal trademark registrations for the GOLDMAN SACHS mark with the USPTO. As a result, the Panel finds that Complainant’s federal trademark registration with the USPTO sufficiently establishes Complainant’s rights in the GOLDMAN SACHS mark pursuant to Policy ¶ 4(a)(i). See Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)… .”).
Furthermore, the Panel finds that Respondent’s <goldmansecks.com> domain name is confusingly similar to Complainant’s GOLDMAN SACHS mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name consists of a slight misspelling of Complainant’s GOLDMAN SACHS mark, with the addition of the generic top-level domain (“gTLD”) “.com.” Moreover, the disputed domain name is phonetically similar to Complainant’s registered GOLDMAN SACHS mark. Prior panels have found confusing similarity under Policy ¶ 4(a)(i) between a domain name that misspells and is phonetically similar to a complainant’s mark. See VeriSign, Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the pronunciation and spelling between the domain name <venesign.com> and the complainant’s mark, VERISIGN, are so close that confusion can arise in the mind of the consumer); see also Am. Online, Inc. v. Peppler, FA 103437 (Nat. Arb. Forum Feb. 22, 2002) (finding the word “quest” and “crest” to be similar in sound and, thus, that the respondent’s <mapcrest.com> domain name and the complainant’s MAP QUEST mark are confusingly similar). Additionally, previous panels have consistently held that the addition of gTLD does not distinguish a domain name from a registered mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Therefore, the Panel in the present case finds that Respondent’s <goldmansecks.com> domain name is confusingly similar to Complainant’s GOLDMAN SACHS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In accord with Policy ¶ 4(a)(ii), Complainant initially bears the burden of demonstrating that Respondent lacks rights or legitimate interests with respect to the disputed domain name. However, once Complainant sufficiently demonstrates a prima facie case, the burden shifts to Respondent to establish that it has rights or legitimate interests in connection with the disputed domain name under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel finds that Complainant has demonstrated a prima facie case and will evaluate the evidence on record to determine whether Respondent has any rights or legitimate interests with respect to the disputed domain name under Policy ¶ 4(c).
The Panel finds that the evidence on record indicates that
Respondent’s <goldmansecks.com> domain name resolves to adult
entertainment website displaying a pornographic image with the caption “G
Oldman Secks.” As a result, the Panel
finds that Respondent’s use of the disputed domain name does not constitute
either a bona fide offering of goods or services per Policy ¶ 4(c)(i),
or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Target Brands, Inc. v. Bealo
Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of
the <targetstore.net> domain
name to redirect Internet users to a pornographic website did not equate to a bona
fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)); 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”).
Furthermore, the evidence on record fails to demonstrate that Respondent is commonly known by the <goldmansecks.com> domain name pursuant to Policy ¶ 4(c)(ii). Complainant asserts that Respondent is not authorized to use the GOLDMAN SACHS mark. Additionally, Respondent’s WHOIS information suggests that Respondent is known as “Richard Hawkins,” and not by the disputed domain name. Thus, the Panel concludes that the evidence on record does not establish that Respondent is commonly known by the <goldmansecks.com> domain name in accord with Policy ¶ 4(c)(ii). See M. Shanken Commc’ns, Inc. v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent is not commonly known by the <cigaraficionada.com> domain name because the WHOIS information lists the registrant of the domain name as as “WORLDTRAVELERSONLINE.COM,” and no other evidence exists in the record indicating that the respondent is known by the domain name); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent utilizes the <goldmansecks.com> domain name to operate an adult website displaying a pornographic under the caption “G Oldman Secks.” Consequently, the Panel finds that Respondent registered and used the disputed domain name, which is confusingly similar to Complainant’s GOLDMAN SACHS mark, to tarnish Complainant’s registered mark. Therefore, the Panel concludes that Respondent registered the <goldmansecks.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (“[W]hatever the motivation of Respondent, the diversion of the domain name to a pornographic site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <goldmansecks.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 22, 2006
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