Sullivan & Cromwell LLP v. Julie Hd
Claim Number: FA1803001775918
Complainant is Sullivan & Cromwell LLP (“Complainant”), represented by Stephen J. Elliott of Sullivan & Cromwell LLP, New York, USA. Respondent is Julie Hd (“Respondent”), Bahrain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sullicrom.com>, registered with PSI-USA, Inc. dba Domain Robot.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 14, 2018; the Forum received payment on March 14, 2018.
On March 15, 2018, PSI-USA, Inc. dba Domain Robot confirmed by e-mail to the Forum that the <sullicrom.com> domain name is registered with PSI-USA, Inc. dba Domain Robot and that Respondent is the current registrant of the name. PSI-USA, Inc. dba Domain Robot has verified that Respondent is bound by the PSI-USA, Inc. dba Domain Robot 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 March 16, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 5, 2018 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@sullicrom.com. Also on March 16, 2018, 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 April 9, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Sullivan & Cromwell LLP, is a legal services provider with clients and offices in numerous countries. Complainant uses its SULLCROM mark to promote its products and services and established rights in the mark through registration with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,837,867, registered Aug. 24, 2013). Additionally, Complainant has used its <www.sullcrom.com> domain name to promote its business since 1998. Respondent’s <sullicrom.com> domain name is confusingly similar to Complainant’s mark as it merely includes the added letter “I” in the middle of the fully-incorporated mark.
Respondent does not have rights or legitimate interests in the <sullicrom.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its SULLCROM mark. Respondent is also not commonly known by the disputed domain name, as the WHOIS information of record lists “Julie Hd” as the registrant. Further, Respondent is not using the <sullicrom.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to distribute malware and to conduct a fraudulent email phishing scheme.
Finally, Respondent registered and is using the <sullicrom.com> domain name in bad faith. Respondent registered the disputed domain name with full knowledge of Complainant’s rights in its <www.sullcrom.com> and SULLCROM marks. Respondent is also using the domain name to distribute malware and conduct a fraudulent email phishing scheme.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Sullivan & Cromwell LLP, is a legal services provider with clients and offices in numerous countries. Complainant uses its SULLCROM mark to promote its products and services and established rights in the mark through registration with multiple trademark agencies, including the USPTO (e.g., Reg. No. 3,837,867, registered Aug. 24, 2013). Additionally, Complainant has used its <www.sullcrom.com> domain name to promote its business since 1998. Respondent’s <sullicrom.com> domain name is confusingly similar to Complainant’s mark.
Respondent, Julie Hd, registered the <sullicrom.com> domain name on February 8, 2018.
Respondent does not have rights or legitimate interests in the <sullicrom.com> domain name. Respondent uses the domain name to distribute malware and to conduct a fraudulent email phishing scheme.
Finally, Respondent registered and is using the <sullicrom.com> domain name in bad faith.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the SULLCROM mark under Policy ¶ 4(a)(i) through registration with the USPTO. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (Complainant’s registration with the USPTO or any other governmental authority adequately proves its rights under Policy ¶ 4(a)(i)).
Respondent’s <sullicrom.com> domain name is confusingly similar to Complainant’s SULLCROM mark as it merely includes the added letter “I” to the fully incorporated mark.
Respondent is not using the <sullicrom.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Respondent uses the domain name to carry out a fraudulent email phishing scheme. Use of a domain name to phish for Internet users’ information by email may not be considered a bona fide offering of goods or services. See Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA 1550388 (Forum May 5, 2014) (“Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant's website. The Panel found that such actions precluded a bona fide offer or fair use.”). Complainant provided an email sent by Respondent using the email address sccontactus@sullicrom.com. The email states that the recipient is “expected to appear in court on February 19th, 2018” and prompts the recipient to click a link to “download the details.” Complainant contends that by clicking the link, the recipient inadvertently downloads harmful malware to his or her computer and that Respondent uses the malware to phish for the recipient’s information. Accordingly, the Panel finds that Respondent has failed to use the domain name for a bona fide offer or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii).
Further, Respondent’s use of the <sullicrom.com> domain name to distribute harmful malware cannot be considered a bona fide offering or fair use. See Snap Inc. v. Domain Admin / Whois Privacy Corp., FA 1735300 (Forum July 14, 2017) (“Use of a disputed domain name to offer malicious software does not constitute a bona fide offering or a legitimate use per Policy ¶ 4(c)(i) & (iii).”).
Respondent is using the <sullicrom.com> domain name to distribute malware and to conduct a fraudulent email phishing scheme which is bad faith under Policy ¶ 4(a)(iii) and Policy ¶ 4(b)(iv). See Google, Inc. v. Petrovich, FA 1339345 (Forum Sept. 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)); see also Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA 1623601 (Forum July 14, 2015) (“Respondent’s attempt to use the <zoietis.com> domain name to phish for personal information in fraudulent emails also constitutes bad faith pursuant to Policy ¶ 4(a)(iii).”).
Respondent registered and is using the <sullicrom.com> domain name in bad faith by registering the disputed domain name with full knowledge of Complainant’s rights in its SULLCROM mark. Actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sullicrom.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: April 21, 2018
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