WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Goldman Morgenstern & Partners Consulting LLC v. DomainsByProxy LLC / Samuel Morgenstern, Goldman, Morgenstern & Partners Inc.
Case No. D2015-1877
1. The Parties
The Complainant is Goldman Morgenstern & Partners Consulting LLC of New York, New York, United States of America ("United States"), represented by Rechtsanwalt Albrecht Saß, Germany.
The Respondent is DomainsByProxy LLC of Scottsdale, Arizona, United States / Samuel Morgenstern, Goldman, Morgenstern & Partners Inc. of Helena, Montana, United States, self-represented.
2. The Domain Name and Registrar
The disputed domain name <gomopacrime.com> is registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 21, 2015. On October 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 October 22, 2015 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 amendment to the Complaint on October 27, 2015.
The Center verified that the Complaint together with the amendment to the 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 proceeding commenced on October 30, 2015. In accordance with the Rules, paragraph 5, the due date for Response was November 19, 2015. The Response was filed with the Center on November 8, 2015.
The Center appointed Angela Fox as the sole panelist in this matter on December 3, 2015. 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.
On December 15, 2015, due to exceptional circumstances, the Panel extended the due date for rendering its decision to January 8, 2016.
4. Factual Background
The Complainant is a financial intelligence consultancy, founded in 2000. It is based in the United States but also operates in Germany through a website at "www.gomopa.net".
The Complainant offers its services under the trademark GOMOPA, in which it owns registered trademark rights in various jurisdictions, including in the United States and Germany. Annexed to the Complaint were details of German trademark registration no. 30410270 for GOMOPA registered on August 23, 2004, and United States federal trademark registration no. 3407862 for GOMOPA registered on April 8, 2008, both in the name of the Complainant.
The disputed domain name was registered on May 12, 2015. It has been in use to host a website criticizing the Complainant's business and in particular making allegations of criminal wrongdoing, including blackmail, extortion and fraud, by the Complainant's shareholders. Screenshots from the website linked to the disputed domain name were attached to the Complaint.
5. Parties' Contentions
The Complainant submits that the disputed domain name is confusingly similar to its GOMOPA trademark, in which it owns registered trademark rights in at least the United States and Germany.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name, and that it was registered and has been used in bad faith with the intention of misleading the Complainant's clients and business partners and of tarnishing the Complainant's trademark. The Complainant submits that the Respondent has defamed the Complainant and its shareholders on the website linked to the disputed domain name, with the intention of disrupting the Complainant's business.
The Complainant contends that the Respondent's use of a privacy service is intended to shield it from the consequences of its defamatory conduct. Following disclosure of the Respondent's actual contact information by the privacy service with whom the disputed domain name was registered, the Complainant also contends that the Respondent's actual contact details appear to be false.
In its Response, the Respondent challenges the authority of the Complainant's representative to bring the Complaint on the Complainant's behalf, and states that its enquiries have not disclosed an entity with the Complainant's name at the Complainant's address in New York. The Response does not address the substantive issues apart from disputing that the disputed domain name is similar to the Complainant's registered trademark.
The Respondent adds that "we are going to an ordinary American court, and will appeal against every decision of WIPO in favor of applicant/complainant, and will make WIPO responsible for any kind of detriments. In addition, it is not important to mention all the absurd accusations" which "should remain for a further review".
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the 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 the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The Complainant has proved ownership of registered trademark rights in GOMOPA. The disputed domain name comprises the term "gomopa", a non-distinctive pejorative term, "crime", and the non-distinctive generic Top-Level Domain suffix ".com". The element "gomopa" is identical to the Complainant's GOMOPA trademark. The non-distinctive pejorative term "crime" merely modifies the term "gomopa".
Previous UDRP panels have found that pejorative additions do not typically avoid confusing similarity of domain names and trademarks, particularly among Internet users for whom the relevant language is not a first language (see, inter alia, Sermo, Inc. v. CatalystMD LLC, WIPO Case No. D2008-0647 and Air Austral v. Tian Yi Tong Investment Ltd., WIPO Case No. D2009-0020).
In this case, the pejorative word "crime" is not capable of distinguishing the disputed domain name from the Complainant's trademark. There is, in particular, a risk of confusion on the part of Internet users who do not speak English as a first language and who therefore do not understand the meaning of the word "crime".
The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has made out a prima facie case that the Respondent does not enjoy a right or legitimate interest in the disputed domain name. Although it filed a Response, the Respondent has made no effort to prove that it does enjoy a right or legitimate interest.
The Respondent has been using the disputed domain name to link to a website making allegations of criminal wrongdoing by the Complainant's shareholders.
Under paragraph 4(c)(iii) of the Policy, a respondent may have a right or legitimate interest in a disputed domain name if the panel is persuaded on its evaluation of the evidence that the respondent has been making a 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.
In this case, the Respondent's activities appear to be noncommercial in nature. However, as noted in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.4, the right to criticize does not necessarily extend to a right to register and use a domain name that is confusingly similar to a complainant's trademark. In this case, the disputed domain name incorporates the Complainant's trademark in its entirety, as well as a derogatory word, "crime". Some Internet users may immediately perceive that the word "crime" has a negative meaning and that the disputed domain name is therefore probably not a website of or authorized by the Complainant. For others, however, and particularly for those who do not speak English, the presence of the word "crime" will not have this effect, and from these circumstances in particular the disputed domain name is likely to attract Internet users looking for a website of or relating to the Complainant. Such users will instead arrive at the Respondent's website, which contains criminal allegations against the Complainant's shareholders of a nature which is likely to be particularly damaging to a company trading, as the Complainant does, in the field of financial services. As the Respondent's website is in German and is therefore targeting non-English speakers, this is a very real risk.
The Respondent's use of the Complainant's trademark to attract Internet users to its website in these circumstances does not, in the Panel's view, confer a right or legitimate interest in the disputed domain name. Nor indeed does the Respondent argue that it does.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The content of the Respondent's website shows that the Respondent had the Complainant in mind when it registered the disputed domain name.
Moreover, as noted above, the disputed domain name is inherently liable to mislead Internet users who are not familiar with the English language into visiting the Respondent's website while looking for information from or relating to the Complainant. That website displays criminal allegations against the Complainant's shareholders which are likely to make a detrimental impression on those who read them, including on potential clients and business partners of the Complainant. Although there is no evidence that the Respondent intended to profit commercially from the operation of this website, intention to derive a commercial advantage is not essential to a finding of bad faith—the question is whether, overall, the circumstances indicate that the disputed domain name was registered and has been used in bad faith.
In this case, the Panel considers that, on balance, the Respondent's conduct evinces bad faith. The Respondent chose the disputed domain name because it was likely to attract Internet users looking for information on or relating to the Complainant. The disputed domain name is inherently likely to confuse some Internet users, including in particular Internet users for whom English is not a native language and who form the target audience of the Respondent's German-language website. The Respondent is likely to benefit from such confusion by attracting a wider audience for its allegations. The Respondent may well believe in the truth of the allegations published on its website, but the Respondent's subjective state of mind with regard to its website content does not necessarily translate to good faith in the Respondent's choice of the disputed domain name and use of it to attract Internet users to its campaign. In this case, given the confusing similarity of the disputed domain name with the Complainant's trademark, and the potential for confusion and damage which the Respondent should have appreciated, the Panel is satisfied that the disputed domain name was registered and has been used in bad faith.
Although the Respondent filed a response, it made no effort to rebut the Complainant's allegation of bad faith.
The Panel concludes that the disputed domain name was registered and has been used in bad faith.
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, <gomopacrime.com>, be transferred to the Complainant.
Date: January 8, 2016