Seward & Kissel LLP v. Jeroen Peters
Claim Number: FA2007001904827
Complainant is Seward & Kissel LLP (“Complainant”), represented by Mark J. Hyland of Seward & Kissel LLP, New York, United States. Respondent is Jeroen Peters (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sevvkis.com>, registered with Wild West Domains, LLC.
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 17, 2020; the Forum received payment on July 17, 2020.
On July 20, 2020, Wild West Domains, LLC confirmed by e-mail to the Forum that the <sevvkis.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 July 21, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 10, 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@sevvkis.com. Also on July 21, 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 12, 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
In addition to its claimed rights in the SEWARD & KISSEL mark acquired through its registered service mark described below and at common law through long use as the style and title of its law practice since 1890, Complainant also claims to have common law trademark rights in the mark SEWKIS.
Complainant asserts that the mark SEWKIS has become an established component of its brand; that it owns the domain name <sewkis.com> which it has continuously used as the address of its website since 1996 and as a corporate email addresses for its employees; that it has therefore acquired a goodwill and reputation in the SEWKIS mark through its use as a website and email address.
Complainant additionally submits that its official Twitter account, in operation since March 2014, utilizes the handle @Sewkis and prominently displays the sewkis.com domain on the home page located at https://twitter.com/sewkis; and that its goodwill and reputation in the SEWKIS mark is further illustrated by the fact that Complainant’s website is the first result produced when a search is carried out against the word SEWKIS on the GOOGLE search engine. Complainant has adduced screenshots to support these assertions.
Complainant submits that the disputed domain name, <sevvkis.com> is confusingly similar to Complainant’s SEWARD & KISSEL mark and its contraction to SEWKIS, arguing that previous panels have found that abbreviations of registered marks are also protected under Policy ¶ 4(a)(i). See Sterling Jewelers Inc. v. KAY KAY YAN, FA 1542616 (Forum Mar. 17, 2014) (finding a UDRP Respondent’s <kisskay.com> domain name confusingly similar to a complainant’s KAY and EVERY KISS BEGINS WITH KAY marks).
Complainant submits that the disputed domain name is a contraction of Complainant’s mark SEWARD & KISSEL and the disputed domain name is intended to simulate Complainant’s <sewkis.com> email address.
Complainant argues that the double “v” in the disputed domain name is intended to confuse a reader into thinking it is actually the letter “w,” and therefore make it appear that it is Complainant’s domain name.
For the same reason, Complainant argues that the disputed domain name is identical and/or confusingly similar to Complainant’s SEWKIS common law trademark mark. Complainant submits that while it has not registered the SEWKIS mark, such registration is not required where, as here, Complainant has established common law rights in the mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant adds that the disputed domain name incorporates the entirety of Complainant’s SEWKIS mark and only differs through the misspelling of “sewkis” as “sevvkis” and the addition of a gTLD extension. See Plentyoffish Media ULC v. Super Privacy Service c/o Dynadot, FA 1608001687021 (Forum Sept., 22, 2016) (“Prior panels have found that the misspelling of a mark and the addition of a gTLD does not sufficiently differentiate a domain name from a mark in which a complainant has rights.”)
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that Respondent cannot show that he is “commonly known by the domain name,” considering that his name is materially different from the disputed domain name. See Manolo Blahnik International Limited, Mr. Manolo Blahnik, and MB Foundation Limited v. chen chen, FA 1807001796635 (Forum Aug. 10, 2018) (“UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name.”).
According to the WHOIS records, the disputed domain name was registered on May 18, 2020, subsequent to the registration date of Complainant’s United States registered service mark and domain name. Complainant asserts that there is no relationship between Respondent and Complainant; that Respondent is not a licensee of Complainant; nor has Respondent otherwise obtained authorization to use Complainant’s trademark or domain name. See generally Zebra Technologies Corporation, et al. v. Eagle Technologies Limited, D2010-1073 (WIPO Aug. 27, 2010) (finding Respondent had no legitimate interests with respect to the Domain Name at issue because there was no relationship between Respondent and Complainant, Respondent was not a licensee of Complainant, and Respondent had not otherwise obtained authorization to use Complainants’ trademark).
Complainant asserts that Respondent cannot show that, prior to this dispute, he had use of, or 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. See Policy ¶ 4(c)(i).
Complainant submits that Respondent cannot show that he is “making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”. See Policy ¶ 4(c)(iii).
Complainant refers to copy email correspondence adduced in evidence in an annex to the Complaint, which was sent by Respondent to a client of Complainant, using the disputed domain name on May 19, 2020. The correspondence purports to come from a partner and an employee of Complainant’s firm and requests payment of fraudulent invoices by the client in the sum of $25,017.24. The invoices all include false bank details. Complainant submits that these emails are evidence that the disputed domain name is not being used for any bona fide purpose.
Complainant argues that such fraudulent conduct constitutes bad faith under the Policy. See Universal Protein Supplements Corporation d/b/a Universal Nutrition v. Ohanz, FA 1802001772710 (Forum Mar. 20, 2018) (“Impersonating a complainant by use of a complainant’s mark in a fraudulent email scam is disruptive and evinces bad faith registration and use.”)
Complainant alleges that the disputed domain name was registered and is being used in bad faith arguing Respondent registered the disputed domain name, derived from a contraction of Complainant’s mark, at a time when Complainant had a valid federal service mark.
Complainant argues that because Respondent has used the disputed domain name to perpetrate a fraudulent scheme by impersonating Complainant, Complainant’s partner and a named employee it follows that the disputed domain name was registered with actual knowledge of Complainant and its trademarks. See California Cosmetics, Inc. v. Silk Skin Care/Xiao Cho, FA 1488796 (Forum Apr. 23, 2013) (citing Digi Int’l v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”)).
Complainant asserts that Respondent has maintained his registration of the disputed domain name even after Complainant sent Respondent a cease and desist letter on May 21, 2020 which is exhibited in an annex to the Complaint and argues that Respondent’s complete failure to respond to this letter constitutes bad faith. See The Toronto-Dominion Bank v. Nicklas Bigum / Media Devote, FA 1709001750848 (Forum Oct. 26, 2017) (“Failure to respond to a cease-and-desist letter may properly be considered in finding bad faith registration and use of a domain name.”).
Complainant adds that the disputed domain name is an example of typosquatting as it is intended to simulate Complainant’s SEWKIS mark and <sewkis.com> email address by substituting the double “v” for the letter “w”. See, e.g., Under Armour, Inc. v. Jeff Randall, FA 1410001585022 (Forum Nov.18, 2014) (finding that the respondent’s <unerarmour.com> domain name constitutes typosquatting of the complainant’s UNDER ARMOUR mark, which is evidence of bad faith pursuant to Policy ¶ 4(a)(iii)).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a U.S. law firm founded in 1890, with offices in New York and Washington, D.C. providing services under the name and mark SEWARD & KISSEL for which it owns United States registered service mark, registration number 3650630, registered on July 7, 2008 on the Principal Register for services in international class 45.
Complainant has an established Internet presence. It the owner of the domain name <sewkis.com> in 1996 which it uses as the address of its website since it was created on March 4,1996 and corporate email addresses for its employees and has utilised the handle @Sewkis on its official Twitter account since March 2014.
The disputed domain name was registered on May 18, 2020 and has been used as an email address to send scam emails purporting to come from Complainant, to one of Complainant’s client’s in an attempt to perpetrate a fraud.
There is no information available about Respondent except for that which is provided in the Complaint, the Registrar’s WhoIs 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 shown that it is the owner of the abovementioned service mark registration and has also acquired common law rights in the SEWARD & KISSEL mark through long and continuous use as the style and title of its law practice.
Complainant has also proven that on the balance of probabilities it has common law rights in the SEWKIS mark acquired through its use of the mark on the Internet in particular as the address of its website, as an email address and as a TWITTER handle.
The disputed domain name <sevvkis.com> is almost identical to Complainant’s SEWKIS mark as the double letter “v” is easily mistaken for the letter “w”.
For the purposes of comparison, the gTLD <.com> extension may be ignored in the circumstances of this Complaint as a domain extension, is recognized as a technical necessity for a domain name and serves no other purpose or meaning in the context.
This Panel finds therefore that Complainant has succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name arguing
· that Respondent cannot show that he is “commonly known by the domain name as his name is materially different from the disputed domain name;
· that according to the WHOIS records, the disputed domain name was registered on May 18, 2020, subsequent to the registration date of Complainant’s trademark registration and domain name;
· that there is no relationship between Respondent and Complainant;
· that Respondent is not a licensee of Complainant; nor has Respondent otherwise obtained authorization to use Complainant’s trademark or domain name;
· that Respondent cannot show that, prior to this dispute, it had “use of, or 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;
· that Respondent cannot show that he is “making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue” by using Complainant’s marks as part of the disputed domain name;
· that the copies of the fraudulent emails, adduced in evidence as an annex to the Complaint, sent by Respondent using the disputed domain name as an address on May 19, 2020, which purported to be sent by a partner and an employee of Complainant’s firm, to a client of the firm, seeking payment of fraudulent invoices in the sum of $25, 017.24, cannot be deemed a bona fide purpose.
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 the 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).
The choice and registration of disputed domain name <sevvkis.com> which is almost identical to Complainant’s SEWKIS mark, domain name <sewkis.com>, website address and TWITTER handle, and the uncontested evidence adduced by Complainant which shows that the disputed domain name is being used as an email address to send fraudulent emails to one of Complainant’s clients on the day after it was registered on 18, 2020, must lead inevitably to the conclusion that the disputed domain was registered with actual knowledge of Complainant, its name, service mark, domain name, website address and TWITTER handle. It is implausible that the disputed domain name was registered for any reason other than to target and take predatory advantage of Complainant’s goodwill and reputation and defraud its clients.
In the circumstances of this Complaint, this Panel must find that the substitution of the double “v” in the disputed domain name for the letter “w” in Complainant’s mark is an example of typosquatting intended to confuse Internet users into believing that emails coming from Respondent are actually from Complainant.
This Panel finds therefore that on the balance of probabilities, by using the disputed domain name to send fraudulent emails, Respondent is intentionally attempting to confuse, mislead and defraud recipients of emails coming from Respondent impersonating Complainant.
This Panel finds therefore that the disputed domain name was registered and is being used in bad faith. Complainant has succeeded in the third element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested in the Complaint
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sevvkis.com> domain name be TRANSFERRED from Respondent to Complainant.
_______________________________
James Bridgeman SC
Panelist
Dated: August 13, 2020
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