Sullivan & Cromwell LLP v. Kurt Lageschulte
Claim Number: FA2007001905702
Complainant is Sullivan & Cromwell LLP (“Complainant”), New York, USA. Respondent is Kurt Lageschulte (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sullcrom-llp.com>, registered with PDR 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 23, 2020; the Forum received payment on July 23, 2020.
On July 25, 2020, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <sullcrom-llp.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 27, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 17, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sullcrom-llp.com.
Also on July 27, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 18, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims that it has rights in the SULLCROM trademark and service mark acquired through its ownership of the international portfolio of trademark and service mark registrations described below and its extensive use of the mark in its international practice, including on the Internet since 1998 when it established its website located at <www.sullcrom.com>.
Complainant submits that it has acquired an international reputation and goodwill throughout the world, and since its establishment in 1879, has expanded globally with offices in Sydney, Australia; Melbourne, Australia; Washington, D.C.; Los Angeles, California; Palo Alto, California; London, England; Paris, France; Frankfurt, Germany; Brussels, Belgium; Beijing, China; Hong Kong, China; and Tokyo, Japan.
Complainant alleges that the disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the SULLCROM mark and differs only in that it contains a hyphen followed by the letters “LLP”.
Complainant submits that these additional elements are not sufficient to overcome a finding of confusing similarity. See Eastman Chem. Co. v. Patel, Forum FA 0507000524752, 2005 WL 2273305 (Sept. 7, 2005) (“[T]he Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”).
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name arguing that Complainant has not licensed or authorized anyone to use the disputed domain name and according to the Registrar’s WHOIS, Respondent’s name is “Kurt Lageschulte”. Complainant submits that “[a] respondent may not be found to be commonly known by a domain name where the WHOIS does not indicate as much, and where a complainant refutes any connection with such a respondent.” Google Inc. v. Popov Vitaly, Forum FA 1612001710030, 2017 WL 931805, at (Feb. 16, 2017).
Complainant asserts that there is no evidence that before any notice of this dispute, Respondent used, or made demonstrable preparations to use, the disputed domain name, or a name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services (Policy ¶ 4(c)(i)); nor is there any evidence that Respondent is 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 (Policy ¶ 4(c)(iii)).
Complainant refers to an exchange of emails, copies of which are adduced in evidence in an annex to the Complaint, which Complainant submits shows that Respondent has used the disputed domain name to impersonate Complainant’s Chairman in an attempt defraud at least one individual of more than $35,000.
The emails show that Respondent used the disputed domain name to send e-mails purportedly from Joseph C. Shenker, Complainant’s Chairman, to a third-party recipient demanding that the recipient wire $37,902.66 for legal processing fees to a bank account in connection with a grant from “BlueVine” for which the recipient had been induced to apply.
The e-mails falsely stated that Mr. Shenker and Complainant was the “legal counsel” of BlueVine, and that the fees had to be wired before the grant application could be processed.
Complainant asserts that neither Mr. Shenker nor Complainant has any relationship with “BlueVine,” with the Respondent, with the sender of the emails, or with the bank account to which the third party was supposed to wire the funds.
The e-mails were sent by <joseph@sullcrom-llp.com> and contained a signature block depicting Complainant’s name in the same font that Complainant uses on its website. The signature block included Mr. Shenker’s name and title, the address of Complainant’s New York office, and the Internet address of Complainant’s website, <www.sullcrom.com> An e-mail sent on June 2, 2020, directed the recipient to wire the fee to an account in the name of “SULLIVAN AND CROMWELL LLP” at a branch of the Canadian Imperial Bank of Commerce in Scarborough, Ontario, by June 8, 2020.
The recipient was also instructed to send a scanned copy of the front and back of his identification and to complete and sign the agreement provided to him and return them to the e-mail address including the disputed domain name.
Complainant alleges that by impersonating Complainant’s Chairman in these fictitious e-mails, Respondent has attempted to acquire a significant amount of money from an individual who believed that payment of the funds was a condition of receiving a grant for which he had applied. Complainant argues that such use of a domain name for impersonation and deception, as Respondent did here, cannot ever be a use in connection with the bona fide offering of goods or services nor can it be a legitimate or noncommercial or fair use.
Complainant alleges that the disputed domain name was registered and is being used in bad faith.
Complainant argues that the registration of the disputed domain name in bad faith is clear because it is nearly identical to Complainant’s distinctive and well-known SULLCROM mark.
Complainant adds that the SULLCROM mark is an unusual word that derives from Complainant’s name and registered mark SULLIVAN & CROMWELL, under which Complainant has provided legal services since 1879 and has become well-known internationally in legal, financial, and business communities. Complainant submits that “registration of a well-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements.” Allianz, Compañca de Seguros y Reaseguros S.A. v. John Michael, WIPO D2009-0942, 2009 WL 3165757 (Sept. 22, 2009).
Complainant adds that Respondent’s unlawful use of the disputed domain name to impersonate Complainant’s Chairman to carry out an attempted fraud, as described above, shows beyond doubt that the disputed domain name was registered and is being used in bad faith. Complainant submits that panels established under the Policy, have repeatedly found bad-faith registration and use when a respondent uses a disputed name to impersonate a firm’s employees in deceptive e-mails just as Respondent did here. See, e.g.¸ Kramer Law Firm, P.A. v. BOA Online, Mark Heuval, WIPO D2016-0387, 2016 WL 1625715, at (Apr. 11, 2016) (“Numerous UDRP panels have found . . . impersonation to constitute bad faith, even if the relevant domain names are used only for email.”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant uses the SULLCROM mark to identify the services and products it provides in its international legal practice and is the owner of a large international portfolio of trademark registrations including the following
· United States registered service mark SULLCROM, registration number 3837867, registered as of August 24, 2010, on the Principal Register for legal services;
· United States registered service mark SULLCROM, registration number 4407300 registered as of September 24, 2013, on the Principal Register for educational services;
· European Union Trade Mark SULLCROM, registration number 012151271, registered as of February 12, 2014, for computer software; downloadable electronic publications; printed publications; business, financial, educational, website, and legal services;
· Australian registered trade mark and service mark SULLCROM, registration number 1643359, registered as of March 23, 2015, for computer software; downloadable electronic publications; printed publications; business, financial, educational, website, and legal services;
· Hong Kong registered trade mark SULLCROM, registration number 302154663, registered as of February 7, 2012, for computer software; downloadable electronic publications; printed publications; business, financial, educational, website, and legal services.
Complainant has an established Internet presence and since at least 1998, Complainant’s website has been located at <www.sullcrom.com>.
The disputed domain name <sullcrom-llp.com> was registered on May 30, 2020 and has been used as an email address to impersonate Complainant’s Chairman in correspondence with a third party.
There Is no information provided about Respondent except for that set out in the Complaint and the information provided by the Registrar in response to the Forum’s request for verification of the registration details of the disputed domain name.
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."
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has adduced clear, convincing and uncontested evidence that it has rights in the SULLCROM trademark and service mark acquired through its ownership of the international portfolio of trademark and service mark registrations described above and its extensive use of the mark in its international practice, including on the Internet with its website located at <www.sullcrom.com> which it has maintained since 1998.
The disputed domain name <sullcrom-llp.com>, consists of Complainant’s SULLCROM trademark and service mark, a hyphen, the letters “llp” and the <.com> generic Top Level Domain (gTLD) extension.
Complainants SULLCROM mark is the initial, dominant and only distinctive element in the disputed domain name. The hyphen has no distinguishing character nor do the letters “llp” which would in context be taken as a commonplace generic acronym to designate a Limited Liability Partnership and for the purposes of comparison the gTLD <.com> extension may be ignored in the circumstances of this Complaint because as a top level domain extension, it would be recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that the disputed domain name is confusingly similar to the SULLCROM mark in which Complainant has rights and Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out an uncontested a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing that
· Complainant’s SULLCROM mark is distinctive;
· Complainant has not licensed or authorized anyone to use the disputed domain name that is confusingly similar to its distinctive mark;
· Respondent is not commonly known by the disputed domain name and according to the Registrar’s WHOIS, Respondent’s name is Kurt Lageschulte;
· there is no evidence that before any notice of this dispute, Respondent used, or made demonstrable preparations to use, the disputed domain name, or a name corresponding to the disputed domain name, in connection with a bona fide offering of goods or services (Policy ¶ 4(c)(i));
· nor is there any evidence that Respondent is “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” (Policy ¶ 4(c)(iii));
· Respondent has used the disputed domain name to send emails in which Respondent has impersonated Complainant’s Chairman in an attempt defraud at least one individual of more than $35,000 which is neither a bona fide offering of goods or services nor a legitimate or noncommercial or fair use of the disputed domain name.
It is well established that if Complainant makes out a prima facie case, the burden of production shifts to Respondent to prove his rights or legitimate interests in the disputed domain name. Respondent has failed to file any Response to the Complaint or provide any defense to Complainant’s allegations and so has not discharged the burden.
In these circumstances this Panel must find that on the balance of probabilities Respondent has no rights or legitimate interests in the disputed domain name. Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).
Having considered the evidence adduced, this Panel finds that the disputed domain name was registered and is being used in bad faith.
The disputed domain name is nearly identical to Complainant’s distinctive and well-known SULLCROM mark. It is implausible that the registrant of the disputed domain name was unaware of Complainant, its SULLCROM mark and its website at <www.sullcrom.com> when the disputed domain name was chosen and registered. On the balance of probabilities, the disputed domain name was chosen and registered with full knowledge of Complainant, its name and trademarks in order to take predatory advantage of Complainant’s goodwill and reputation, to send spear phishing emails to at least one unsuspecting third party.
This Panel accepts that the uncontested evidence of the email exchange described above, which Complainant has adduced in an annex to the Complaint, allows this Panel to find that, on the balance of probabilities, Respondent has used the disputed domain name in bad faith as the address of deceptive emails purporting to come from the Chairman of the Complainant, in an attempt to perpetrate a fraud on at least one third party.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third and final element of the test in Policy ¶ 4(a)(iii) it is entitled to succeed in its application for transfer of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sullcrom-llp.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: August 19, 2020
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