Goldman Sachs Goes After GoldmanSex.com

[Dave Zan]

Got this rather hilarious news bit in another forum, posting it here for your
enjoyment. :-D

http://www.foxnews.com/story/0,2933,203722,00.html

Goldman Sachs Group, the blue-chip investment bank, wants a Netherlands man to change the name of a sex-themed Web site called goldmansex.com.

Of course, it won't be funny if goldmansex loses. But I can understand why if
that happens.

 

[whitebark]

The website owner should have at least made some effort to cover himself. Couldn't he have themed his site around a 'goldman' who has sex? Paint a guy in gold paint... you know the rest - mission accomplished.:lock1:

Then again I imagine the real Goldman has plenty of said gold to take him down.

 

[Ian]

i doubt that would have saved him. These real estate people have a lot of money to waste in preventing attrition of brand name!!

 

[maartenbuuron]

Goldmansex showing proof of a trademark in the domain name, a different sector in which it operates and a complete different spelling. What else does a respondent have to proof preventing of loosing his domain? The NAF completely ignored their own policies to pleasure the complainent.

The verdict is pretty scarry: every big company can claim all domains that are remotely similar to their trademark. A respondent trademark and the sector in which the respondent operates does not matter when a big corperations starts a procedure. This case very clearly shows how serious the NAF is about their own regulations: this is not confusingly similar and the respondent has rights in the domain name. Still the judge decides to transfer the domain name and everybody is saying 'that is the way it works'.

I do not understand the world we live in anymore.

The website launced their new name: www.cityoflove.com

 

[DNQuest.com]

We have talked abbut this before and I have agreed to disagee on this with you, but I would have ruled the same way too. TM is more than black and white reading... say them both outloud and they sound almost the same. Plus the industry your friend is in isn't always looked fondly on.

 

[denny007]

They mostly rule in favour of USA companies. Should the bank be from Netherland and the owner for the USA the verdict would be opposite.

 

[Dave Zan]

They mostly rule in favour of USA companies. Should the bank be from Netherland and the owner for the USA the verdict would be opposite.

I guess it's somewhat "easy" to come to those conclusions. But John has said
it best everywhere: this sort of thing is case-sensitive, it depends on any and
all factors gathered.

Note this UDRP I read the other day (and boy, that panelist must have had a
lot of hard work. :-D):

http://www.wipo.int/amc/en/domains/decisions/html/2006/d2006-0730.html

 

[DNQuest.com]

They mostly rule in favour of USA companies. Should the bank be from Netherland and the owner for the USA the verdict would be opposite.

Actually, it is mostly US companies whose TMs are infringed upon (US companies tend to be more world reknowned and tend to be more litigious).

Dave, that was an interesting read. The respondant was able to show rights to the name in a foreign country. The panelists did a very good job on that one.

 

[labrocca]

We have talked abbut this before and I have agreed to disagee on this with you, but I would have ruled the same way too. TM is more than black and white reading... say them both outloud and they sound almost the same. Plus the industry your friend is in isn't always looked fondly on.

Sorry but usage is important and you know it. Apple Records and Apple Computer are confusingly similar but you know it's their usage that's important. GoldmanSex has no relation to financial institutions. I think there was prejudice here or Goldman Sachs is greasing some wheels. It's total bullcrap.

 

[Brett Lewis]

Sorry but usage is important and you know it. Apple Records and Apple Computer are confusingly similar but you know it's their usage that's important. GoldmanSex has no relation to financial institutions. I think there was prejudice here or Goldman Sachs is greasing some wheels. It's total bullcrap.

This is not a trademark infringement case. There is no requirement under the UDRP that the use at issue be confusingly similar. Is there a trademark? Yes. Is it confusingly similar? Too close to risk. Did the Respondent have legitimate rights and interests? Depends on the facts. Did he act in bad faith to trade off of the notoriety of Goldman Sachs? Again, it is a factual issue. If it was good faith use, the panel did not buy his explanation. I could say that my friends call me "Google," on account of my bulging eye, but that would not make it a believable story.

In the end, registering anything close to a trademark for a porn site is risky. There may also have been a trademark dilution claim for tarnishment here that could have been brought in court.


Brett E. Lewis, Esq.
Lewis & Hand, LLP
www.lewishand.com

 

[maartenbuuron]

First of all it is not a porn site: it is a yellow pages for adult entertainment without showing any explicit material. True, you can download adult entertainment movies via a partner but it takes 6 actions before you reach this cinema and respectible firm like Google also offer links to porn.

Secondly the complainent did not show any proof that registration was in bad faith: it all boils down to the claim: "we are big and famous, so it must be bad faith". They did not show any proof to build their case

Goldmansex was in a completely different line of business, was not referring to GS, was not redirecting traffic to another url and hold a valid trademark in the domain name at issue. Furthermore the judge build his decion on the basis of the trademark Goldman: a registration made by GS not earlier than March 2006. Indeed: after Goldmansex went live.

 

[DNQuest.com]

Maarten, you are too close to the situation and are unable to be objective.

Yes, it IS in the porn industry no matter how you spin it, the site was designed around the porn business (fine, call it adult entertainment, it is still porn)

Goldman Sachs has been around since the 1860s, what is this nonsense that the registration was 2006? They more than earned a TM on thier name.

What this boils down to is you friend was riding a famous TM in the porn business. It has nothing to do with being big and famous, it has to do with a "little guy" trying to ride the coattail of a big guy who spent time and money to build thier company up and they are protecting thier mark. And they have every right to.

As far as a different line of business, it is the porn industry. If it was a different catagory, that could have been a different story. But phonetically, they are very confusingly similar (and yes, TM does cover phonetics in regards to TMs because they are considered confusingly similar).

You do need to step back and take a realistic look at the situation.

 

[maartenbuuron]

I agree I'm very close to the case and I have to admit in a 'normal' court I can imagine a judge decides in favour of GS, but this is not a normal court: the NAF gives their judges very strict criteria they have to apply on the cases they judge about.

They do that because their procedure is extreemly fast and straightforward. To avoid the risk that they take the wrong decision the complainent has to come up with convincing proof on all of the three NAF conditions. You can have your feelings about ligitimite use of the domain name by Goldmansex, but you have to admit there is no proof on all these three NAF conditions and hence the claim should be denied. That is the only point I wanted to make in my earlier postings.

 

[DNQuest.com]

Actually, there are only 3 pieces of criteria which is used for deciding cases.

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

All the complaintant needs to do is to convince the panel that all 3 = yes

1 - yes, there is no dispute there
2 - yes, there is no dispute there (the glodman story, though maybe true, isn't legitimate, but it did make me laugh)
3 - This one is based on opinion of the panel based on the facts presented before them. The owner did not use the domain in a manner which would give him rights to the domain (links pages or parking pages have view as not acquiring rights and used as legitimate interest). It was a porn link page. And with the first 2 being yes, along with seeing how the domain being used. The panelist can safely assume that 3 = yes.

 

[maartenbuuron]

1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights: there are 4 letters different and the word SEX is in the domain name. It is similar but not confusingly similar: there is not one fool in the world would make this mistake.

(2) the Respondent has no rights or legitimate interests in respect of the domain name: the respondent has a registered trademark and according to ICANN regulations a trademark proofs rights in the domain name.

(3) the domain name has been registered and is being used in bad faith: Goldmansex was not redirecting traffic to another site, is in a complete different line of business and is not referring to GS.

Zero out of three I would say.

 

[PRED]

Hi,
it's not just stupid decisions like this happening in states. Nominet make decisions like this in the UK. They like all other organizations like them will always kiss the arse of big business & lack a backbone. Look behind the veneer of the organizations like Nominet. Full of yes men etc
It's a stupid case to bring for many reasons.
If they had failed they would have been a laughing stock, the press would have picked up on it & a few people might have started getting the name confused. ( only to curiously look at the 'sex' site though)
It says to people they can't have a bit of fun at the expense of billion dollar organizations. What ever happened to free speech & the intellectual property rights of the losing domain owner?
I own a trademark too, & although i don't want someone copying the name & buying a different domain ending to mine & trying to steal business. This is nothing like it.
Decisions like this piss me off. :director:
Predator

 

[DNQuest.com]

1 - said phonetically... very confusingly similar... TMs aare not just written word only... if the sound the sane when said, then a TM can be enforced.... Do the 2 names sound very similar??? and answer it honestly..

2- The Complainant has greater rights to the TM name, and the respondant has a TM by a questionable entity... it is the same entity that people used to defreaud thousands of domains during pre registartion periods to screw the public out of domains...

3- the indusrty is the porn industry... the TM holder has every right to protect thier mark from dilution... the reality is that industry is looked down upon and TMs are protect from any association from it...

 

[denny007]

the glodman story

glodman.com it is, thanks !

 

[typist]

glodman.com it is, thanks !

brilliant. now the good folks at goldman (the bankers) are shooting themselves in the foot by attracting the attention of highly professional domain collectors. I wonder if they will go after "GOLDMA" and "GODMAN" ?

 

[denny007]

brilliant. now the good folks at goldman (the bankers) are shooting themselves in the foot by attracting the attention of highly professional domain collectors. I wonder if they will go after "GOLDMA" and "GODMAN" ?

Exactly my thought:
oldman
godman
golman
goldan
goldma
All are also somewhat generic, yet WIPO panel would probably order to transfer.