Sullivan & Cromwell LLP v. Lei Shi
Claim Number: FA2202001983479
Complainant is Sullivan & Cromwell LLP (“Complainant”), represented by Stephen J. Elliott of Sullivan & Cromwell LLP, New York, USA. Respondent is Lei Shi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sollcromconnect.com>, <sullcroconnect.com>, <sullromconnect.com>, <sullcromconnnect.com>, <sulcromconnect.com>, <sullcomconnect.com>, <sullcromconnet.com>, <sullcronconnect.com>, <sulllcromconnect.com>, and <wwwsullcromconnect.com>, (‘the Domain Names’) registered with Chengdu West Dimension Digital Technology Co., Ltd. and Cloud Yuqu LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 7, 2022; the Forum received payment on February 7, 2022. The Complainant was received in English.
On February 8, 2022, Chengdu West Dimension Digital Technology Co., Ltd.; Cloud Yuqu LLC confirmed by e-mail to the Forum that the <sollcromconnect.com>, <sullcroconnect.com>, <sullromconnect.com>, <sullcromconnnect.com>, <sulcromconnect.com>, <sullcomconnect.com>, <sullcromconnet.com>, <sullcronconnect.com>, <sulllcromconnect.com>, and <wwwsullcromconnect.com> Domain Names are registered with Chengdu West Dimension Digital Technology Co., Ltd. and Cloud Yuqu LLC and that Respondent is the current registrant of the names. Chengdu West Dimension Digital Technology Co., Ltd. and Cloud Yuqu LLC have verified that Respondent is bound by the Chengdu West Dimension Digital Technology Co., Ltd. and Cloud Yuqu LLC 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 February 11, 2022, the Forum served the English language Complaint and all Annexes, including a Chinese and English language Written Notice of the Complaint, setting a deadline of March 3, 2022 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@sollcromconnect.com, postmaster@sullcroconnect.com, postmaster@sullromconnect.com, postmaster@sullcromconnnect.com, postmaster@sulcromconnect.com, postmaster@sullcomconnect.com, postmaster@sullcromconnet.com, postmaster@sullcronconnect.com, postmaster@sulllcromconnect.com, postmaster@wwwsullcromconnect.com. Also on February 11, 2022, the Chinese and English language 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 March 9, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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 Domain Names be transferred from Respondent to Complainant.
Preliminary Issue: Language of Proceeding
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
The Complainant’s contentions can be summarized as follows:
The Complainant is the owner of the trade mark SULLCROM (‘the Mark’) registered, inter alia, in the USA for legal services with first use recorded as 1998.
The Domain Names registered in 2021 are confusingly similar to the Mark all including the gTLD “.com” and the following differences.
In the domain name <sollcromconnect.com> the Respondent has substituted the letter “o” for the “u” in the Mark, and added the word “connect.”
In the domain name <sullcroconnect.com> the Respondent has removed the “m” in the Mark, and added the word “connect.”
In the domain name <sullromconnect.com> the Respondent has removed the “c” from the Mark and added the word “connect.”
In the domain name <sulcromconnect.com> the Respondent has removed an “l” in the Mark, and added the word “connect.”
In the domain name <sullcomconnect.com> the Respondent has removed the “r” in the Mark and added the word “connect.”
In the domain name <sullcromconnet.com> the Respondent has added—but intentionally misspelled—the word “connect” (Respondent has removed the second “c”).
In the domain name <sullcromconnnect.com> the Respondent has added—but intentionally misspelled—the word “connect” (Respondent has added a third “n”).
In the domain name <sullcronconnect.com> the Respondent has substituted the letter “n” for the “m” in the Mark, and added the word “connect.”
In the domain name <sulllcromconnect.com> the Respondent has added a third “l,” and added the word “connect.”
In the domain name <wwwsullcromconnect.com> the Respondent has added “www” to the beginning, and the word “connect” to the end.
The Respondent does not have any rights or legitimate interests in the Domain Names, is not commonly known by them and is not authorized by the Complainant. Typosquatting is an indication of lack of rights or legitimate interests in a domain name.
The Domain Names have been pointed to pay per click links.
The domain names <sollcromconnect.com>, <sullcromconnnect.com>, <sulcromconnect.com>, <sullcroconnect.com> and <sullcroconnect.com> have resolved to different websites at different times. On February 3, 2022, they resolved to a blue webpage with pay-per- click links. They have previously resolved to a page that read “Click here to continue,”. When the link was clicked, it redirected to “joshsway.com,” a website purporting to be a “source for dating, relationships, self-improvement, and more” for men. These domain name have also sometimes resolved to Wayfair.com, the furniture shopping website.
The domain name <sullromconnect.com> has resolved to different websites at different times. On February 3, 2022, it resolved to a blue webpage with pay-per- click links. It has previously resolved to a page that read “Click here to continue,”. When the link was clicked, it redirected to “joshsway.com. The domain name has also sometimes resolved to Michaelkors.com.
On February 3, 2022, the domain names <sullcomconnect.com> and <sullcronconnect.com> resolved to a blue webpage with pay-per-click links. It has resolved to a webpage that allowed the user to conduct searches, some of which led to law-related sponsored advertisements.
On February 3, 2022, the domain name <sullcromconnet.com> resolved to a blue webpage with pay-per-click links, some of which related to legal services.
On February 3, 2022, the domain name <sulllcromconnect.com> and <wwwsullcromconnect.com> resolved to a blue webpage with pay-per-click links, some of which related to investment services. It has resolved to a webpage that allowed the user to conduct searches, some of which led to law-related sponsored advertisements.
These uses are not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Domain Names have been registered and used in bad faith. Respondent intentionally attracts Internet users to web sites including competing ones for commercial gain by creating a likelihood of confusion with the Complainant’s mark, thereby disrupting the Complainant’s business. Typosquatting is bad faith per se. The Respondent used privacy services and did not reply to the Complainant’s cease and desist letter except for with respect to <wwwsullcromconnect.com>, Complainant received an e-mail response from “Lei” at “fourstone@126.com,” in which “Lei” stated that they would “not sell or transfer this domain to any other third parties” and that, if Complainant “want[ed] this domain,” it could purchase it for “$2,199 at escrow.com.” “Lei” stated that purchasing the domain would be “the fastest way to get this domain” suggesting that the Respondent registers domain names to sell for profit.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the trade mark SULLCROM (‘the Mark’) registered, inter alia, in the USA for legal services with first use recorded as 1998.
The Domain Names registered in 2021 have been used for pay per click links including some for legal services or pointed to third party commercial web sites.
The Respondent suggested the Complainant should buy <wwwsullcromconnect.com> for over US$2000 on escrow.com.
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”).
The Domain Names consist of the Complainant’s SULLCROM mark (registered in the USA for legal services with first use recorded as 1998) or a misspelling of that mark, the word ‘connect’ or a misspelling of that word and/or the generic abbreviation ‘www’ and the gTLD “.com”.
The Panel agrees that misspellings of a complainant’s mark do not distinguish domain names from a complainant's trade mark pursuant to the Policy. See Capital One Financial Corp. v. Huang Li Technology Corp c/o Dynadot, FA 1620197 (Forum June 16, 2015).
The addition of the generic word ‘connect’ or a misspelling of it and/or the generic abbreviation ‘www’ does not serve to distinguish the Domain Names from the Complainant’s mark. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of generic terms do not adequately distinguish a disputed domain name from complainant’s mark under Policy 4(a)(i).).
The gTLD “.com” does not serve to distinguish the Domain Names from the Complainant’s mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the TLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark or any misspelling of it. There is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Redirection to a website that competes with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
It is clear from the evidence also that the Respondent has used the pages attached to the Domain Names to link to commercial pay per link links offering services not connected with the Complainant. It does not make it clear that there is no commercial connection with the Complainant. See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”).
The Domain Names all appear to be typosquatted domain names. Typosquatting can provide additional evidence that a respondent has no rights or legitimate interests in a disputed domain name. See Macy’s Inc. and its subsidiary Macy’s West Stores, Inc. v. chen wenjie c/o Dynadot Privacy, FA1404001552918 (Forum May 21, 2014) (“Respondent’s disputed domain names are typosquatted versions of Complainant’s registered mark. Typosquatting shows a lack of rights or legitimate interests.”).
The Respondent has tried to sell at least one of the Domain Names to the Complainant for a sum well in excess of registration costs by directing them to buy that domain name for over US$2000 on escrow.com. This is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015).
The Respondent has not provided a Response to this Complaint or produced any evidence to counter the prima facie case set out by the Complainant as summarised above.
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent has not answered this Complaint or explained why it should be allowed to register Domain Names containing signs confusingly similar to the Complainant’s mark.
Typosquatting itself is evidence of relevant bad faith registration and use. See Diners Club int'l Ltd. v. Domain Admin ****** It's all in the name ******, FA 156839 (Forum June 23, 2003) (registering a domain name in the hope that Internet users will mistype the Complainant’s mark and be taken to the Respondent’s site is registration and use in bad faith). Typosquatting also indicates the Respondent had knowledge of the Complainant and its rights. See InfoSpace, Inc. v. Greiner, FA 227653 (Forum Mar. 8, 2004) (“Respondent’s domain name is a simple and popular variation of a trademark commonly used by typosquatters …Such a domain name evidences actual knowledge of the underlying mark prior to the registration of the domain name, and as Respondent failed to submit any evidence to counter this inferrence [sic], Respondent’s actions evidence bad faith registration of the disputed domain name.”). Registration of multiple typosquatted domains targeting the Complainant suggests a pattern of activity.
Use for pay per click links also indicates bad faith being disruptive of the Complainant’s business and diverting customers for commercial gain and can indicate actual knowledge of the Complainant and its business. See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy 4(b)(iii)”); see also Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy 4(b)(iv)). See also University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (where the Panel inferred Respondent’s actual knowledge based on Respondent’s use of the domain name to promote links related to the same field as where Complainant’s mark is used.). Respondent is also using the Domain Names to point to pay per click links to make profit from promoting services not associated with the Complainant in a disruptive and confusing manner. See Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith).
. Under Policy ¶ 4(b)(i), an offer to sell a disputed domain name indicates bad faith if it is likely that a respondent intended to make such an offer when registering the domain. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). The pattern of activity shown by registration of ten Domain Names containing a sign confusingly similar to the Complainant’s mark makes it more likely than not that as part of its scheme to make a profit from the Domain Names the selling of the Domain Names for profit was also in the intentions of the Respondent when the Domain Names were registered.
As such, the Panel holds that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(i), (ii), (iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sollcromconnect.com>, <sullcroconnect.com>, <sullromconnect.com>, <sullcromconnnect.com>, <sulcromconnect.com>, <sullcomconnect.com>, <sullcromconnet.com>, <sullcronconnect.com>, <sulllcromconnect.com>, and <wwwsullcromconnect.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: March 10, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page