WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Goldman Sachs & Co. LLC (formerly known as Goldman, Sachs & Co.) v. WhoisGuard, WhoisGuard, Inc. / Ligm Aballs
Case No. D2020-2232
1. The Parties
The Complainant is Goldman Sachs & Co. LLC (formerly known as Goldman, Sachs & Co.), United States of America, represented by Jackson Walker, LLP, United States of America (“United States”).
The Respondent is WhoisGuard, WhoisGuard, Inc., Panama / Ligm Aballs, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <goldmansachs-uk.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
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 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 September 8, 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 September 8, 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 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 1, 2020.
The Center appointed Andrew F. Christie as the sole panelist in this matter on November 6, 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
Founded in 1869 by Marcus Goldman and Samuel Sachs, the Complainant is a subsidiary of The Goldman Sachs Group, Inc., a leading global investment banking, securities and investment management firm that provides a wide range of financial services to a substantial and diversified client base that includes corporations, financial institutions, governments and individuals.
The Complainant owns numerous trademark registrations worldwide for the word trademark GOLDMAN SACHS, including United States Registration No. 1,985,196 (registered on July 9, 1996) and European Union Registration No. 2727865 (registered on December 5, 2003).
The Complainant owns, and conducts Internet activities using, the domain name <goldmansachs.com>.
The disputed domain name was registered on May 12, 2020. It currently resolves to a landing page established by the Registrar, at which are links to other pages established by the Registrar containing paid advertisements. The disputed domain name has been used to send emails that contain the Complainant’s name and logo. The Complainant has provided screenshots of such emails, sent in June and July 2020, which falsely purport to be from an employee of the Complainant and which either offer an investment opportunity or request a payment.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights because: (i) it is identical to its GOLDMAN SACHS trademark, with the addition of “-uk”; (ii) “uk” is the initialism of the United Kingdom, which is the location in which the disputed domain name is being used to defraud customers of the Complainant; and (iii) the addition of the suffix “.com” to the disputed domain name is not a distinguishing factor.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) it is a well-established principle that an unauthorized party cannot claim a legitimate interest in a domain name that contains, or is confusingly similar to, a complainant’s mark, because such party’s activities cannot constitute a bona fide offering of goods or services under the Policy; (ii) the disputed domain name does not resolve to a functioning website, just a landing page with the Registrar’s logo; (iii) the only documented use of the disputed domain name has been to perpetrate fraud upon unsuspecting consumers who believe they are dealing with the Complainant; (iv) long before the Respondent registered the disputed domain name it had at least constructive notice of the Complainant’s trademarks, because they were registered at least as early as 1996 and enjoy wide fame; (v) to the best of the Complainant’s knowledge, the Respondent does not hold any proprietary rights in or to any registered trademark for “goldmansachs-uk” or for any other similar name, term, phrase, symbol, device, or combination of the foregoing; (vi) the Complainant has never consented to the Respondent’s use of its GOLDMAN SACHS trademark in connection with the disputed domain name, and there is no affiliation or connection between the Complainant and the Respondent; and (vii) to the best of the Complainant’s knowledge, the Respondent has never been known by the disputed domain name or by any other term that incorporates or is similar to the GOLDMAN SACHS trademark in whole or in part.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the GOLDMAN SACHS trademark is unique and distinctive, and not associated with anyone other than the Complainant and its affiliates; (ii) as the Complainant’s reputation is significant, and its trademark is similar to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred; (iii) the GOLDMAN SACHS trademark is uniquely associated with the Complainant, and the Respondent has been using that association to perpetrate fraud by posing as the Complainant’s employees; (iv) it is clear that the Respondent chose the disputed domain name to free-ride off the name and goodwill amassed by the Complainant in the GOLDMAN SACHS trademark, to confuse Internet users for its own commercial gain, and in furtherance of its fraudulent activity; and (v) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, and did not register the disputed domain name with a legitimate intent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Once the generic Top-Level Domain (“gTLD”) “.com” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the Complainant’s registered word trademark GOLDMAN SACHS followed by a hyphen and the letters “uk”. The Complainant’s word trademark GOLDMAN SACHS is the dominant element of the disputed domain name. The addition of the hyphen and the letters “uk”, which Internet users are likely to read as being an initialism of “United Kingdom”, does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s word trademark. Accordingly, 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 Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its GOLDMAN SACHS trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The website to which the disputed domain name resolves is simply a landing page established by the Registrar. According to the present record, therefore, the disputed domain name is not being used in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Accordingly, 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 disputed domain name was registered many years after the Complainant first registered its GOLDMAN SACHS trademark. The evidence on the record provided by the Complainant with respect to the use of its GOLDMAN SACHS trademark, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time of registration of the disputed domain name, the Respondent knew of the Complainant’s trademark. Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name to send fraudulent emails that falsely purport to be from the Complainant and which either invite investment or request payment. Accordingly, the Panel finds that the disputed domain name has been registered and is being 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, <goldmansachs-uk.com>, be transferred to the Complainant.
Andrew F. Christie
Date: November 20, 2020