Sullivan & Cromwell LLP v. Elizabeth Wells / slaiom
Claim Number: FA2206002002570
Complainant is Sullivan & Cromwell LLP (“Complainant”), represented by Stephen J. Elliott of Sullivan & Cromwell LLP, New York, USA. Respondent is Elizabeth Wells / slaiom (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sullcromwel.com>, registered with NameCheap, Inc..
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 June 29, 2022; the Forum received payment on June 29, 2022.
On June 30, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <sullcromwel.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 June 30, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 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@sullcromwel.com. Also on June 30, 2022, 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 July 25, 2022, 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 rights in the SULLCROM and SULLIVAN & CROMWELL marks established by ownership of its international portfolio of registrations described below, and its use of the marks extensively, including on the Internet in its legal services practice with clients throughout the world. Complainant currently has 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 <sullcromwel.com> is confusingly similar to its SULLCROM and SULLIVAN & CROMWELL marks arguing that Complainant’s SULLCROM mark is plainly recognizable in the disputed, and the addition of the element “wel” does not serve to dispel confusing similarity and cannot overcome a finding of confusing similarity. See Florida National University v. Registration Private, Domains by Proxy LLC/Toby Schwarzkopf, WIPO Case D2017-0138, (addition of phrase “loanforgiveness” did “not serve to distinguish the disputed domain names from the Complainant’s” mark “FloridaNationalUniversity”).
Complainant next alleges that Respondent has no rights or legitimate interests in the disputed name and, referring to copy emails described below, which have been exhibited in an annex to the Complaint, argues that:-
Firstly, while a domain name registrant may demonstrate a right or legitimate interest in a disputed domain name if the registrant has, before any notice of a dispute, used, or made demonstrable preparations to use, the domain name at issue, or a name corresponding to the domain name at issue, in connection with a bona fide offering of goods or services (Policy ¶ 4(c)(i)), or if the registrant 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)), neither of these considerations applies to Respondent.
Instead, as shown in the copy emails annexed to the Complaint, Respondent used the disputed name to send e-mails impersonating one of Complainant’s named partners in an attempt defraud a third party company into paying a non-existent invoice.
Specifically, on June 21, 2022, Respondent used the disputed name to send an e-mail purportedly from a partner of Complainant, (whose name is provided in the Complaint and in the copy emails), to a third-party recipient.
The subject-line of the e-mail was stated as “Overdue Payment,” and the e-mail stated that a purported invoice attached to the e-mail had been issued “for over a month now and we expect that payment should have been made[,] kindly advise when payment will be made with a specified payment date and time.”
The e-mail urged the recipient to send a response “as soon as you can” and requested that payment be made to “our other account.” Attached to the e-mail was a PDF file, titled Invoice_0686982.pdf, which contained a forged invoice, purportedly from Complainant, for approximately $350,000, which stated “Payment Due Upon Receipt.” The forged invoice used Complainant’s letterhead, including the identification of Complainant’s correct domain name.
The forged invoice also included wire payment information directing payment to a bank account that is not associated with Complainant, which instead appears to be an account set up by Respondent to receive fraudulent payments.
Complainant submits that the copy emails further show that on June 23, 2022, the same sender sent a follow-up e-mail purporting to be from the same named partner of Complaint, which stated that “[a]ttached to this email is our new bank account information[,] kindly ensure payment is remitted to our new bank account” and that “[w]e look forward to receiving payment soon.” Attached to the June 23, 2022 e-mail was another PDF file, including a notice directed “To Whom It May Concern,” which falsely stated that “Sullivan and Cromerll (sic) wishes to advise you on the following changes to our bank details,” and which provided the same false account information set out in the forged invoice attached to the first e-mail.
Complainant argues that the copy emails show that they were sent using the disputed name and make plain Respondent’s fraudulent scheme to coerce the recipient into paying the amount of the forged invoice into Respondent’s own account by tricking the recipient into believing it was sent by Complainant.
The exhibited copy e-mails show that they were sent by <Complainant’s named <(partner)@ sullcromwel.com >, and contained a signature block depicting Complainant’s firm name. The signature block included Complaint’s partner’s name, the address of Complainant’s New York office, and office and mobile phone numbers.
Complainant asserts that neither its named partner nor Complainant has any relationship with Respondent, the sender of the e-mails, the invoice attached to the e-mail, or the bank account to which the recipient of the e-mail was directed to send payment.
Complainant argues that by impersonating one of Complainant’s partners in fictitious emails, Respondent attempted to acquire a payment from a company using a fraudulent invoice and false payment instructions and submits that such use of a disputed 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.” See Alliant Energy Corp. v. Joey Schumer, Forum FA 1811001815590 (impersonation of “a complainant’s executive does not constitute a bona fide offering of goods or services . . . or a legitimate noncommercial or fair use”).
Secondly, Complainant submits that a registrant may also demonstrate a right or legitimate interest in a disputed name if the registrant has, as an individual, business, or other organization, been commonly known by the domain name, even if the registrant has not acquired trademark or service mark rights (Policy ¶ 4(c)(ii)).
Complainant asserts that it has not licensed or authorized anyone to use the SULLCROM and SULLIVAN & CROMWELL marks or to register or use the disputed name and has no knowledge of Respondent being commonly known by Complainant’s marks. Complainant argues 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.
Complainant next alleges that the disputed domain name was registered and is being used in bad faith arguing that Respondent’s bad-faith registration of the disputed name is clear from Respondent’s registration of a domain name that is nearly identical to Complainant’s distinctive SULLCROM and SULLIVAN & CROMWELL marks that are well-known internationally in legal, financial, and business communities. See Allianz, Compañca de Seguros y Reaseguros S.A. v. John Michael, WIPO Case D2009-0942 which held 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.
Complainant submits that the “other elements” in this Complaint are that as shown in the email correspondence exhibited in the annex to the Complaint, Respondent is using the disputed domain name to carry out an attempted fraud, as described above.
Complainant adds 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 Case D2016-0387 (“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 provides legal services under the SULLCROM and SULLIVAN & CROMWELL marks for which it holds an international portfolio of trademark and service mark registrations that include
· United States registered service mark SULLCROM, registration number 3,837,867 registered on the Principal Register on August 24, 2010 for services in international class 45;
· United States registered service mark SULLCROM, registration number 4,407,300 registered on the Principal Register on September 24, 2013 for services in international class 41;
· European Union Trade Mark SULLCROM, registration number 012151271, registered on September 18, 2013 for goods and services in classes 9, 16, 35,36, 41, 42 and 45;
· Australian registered trade mark, SULLCROM registration number 1643359, registered on March 23, 2015, for goods and services in classes 9, 16,35,36, 41,42 and 45;
· Hong Kong registered trade mark, SULLCROM, registration number 302154663, registered on December 24, 2012 for goods and services in classes 9, 16, 35, 36, 41, 42 and 45; and
· numerous other registrations for SULLCROM and SULLIVAN & CROMWELL marks in jurisdictions across the world, for which Complainant has exhibited copies of certificates of registration in the annex to this Complaint.
Complainant has an established Internet presence and maintains its website for its legal services at <www.sullcrom.com>.
The disputed domain name <sullcromwel.com> was registered on June 21, 2022 and has being used to create an email account that Respondent has used to impersonate Complainant by sending fraudulent emails to a third party purporting to have been sent by a named Partner of Complainant requesting payment of fees.
The name of the registrant of the disputed domain name is redacted on the published WhoIs, but in its response to the request by the Forum for verification of the registration details of the disputed domain name, the Registrar has disclosed that Respondent is the registrant.
There is no information available about Respondent, except for that provided in the Complaint, the Registrar’s WhoIs and the information provided by the Registrar in its response to the said request by the Forum for verification of the registration details for 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 provided uncontested evidence to prove that it holds rights in the SULLCROM and SULLIVAN & CROMWELL marks established by its ownership of its international portfolio of registrations described below its use of the marks extensively, including on the Internet, in its legal services practice with clients across the world, and 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.
The disputed domain name <sullcromwel.com> consists of Complainant’s SULLCROM mark in its entirety, in combination with the element “wel” and the generic Top Level Domain (“gTLD”) extension <.com>.
Complainant’s SULLCROM mark is the dominant and only distinctive element in the disputed domain name. The element “wel” has no distinguishing character and on the balance of probabilities, when incorporated as it is in the disputed domain name, immediately following the element “crom”, it is likely to be considered to be an abbreviation of the name “Cromwell” in Complainant’s name and eponymous SULLIVAN & CROMWELL registered trademark.
The gTLD extension <.com> would be considered by Internet users as a necessary technical requirement for a domain name and therefore does not prevent a finding of confusing similarity between the disputed domain name and Complainant’s SULLCROM mark.
This Panel finds therefore that the disputed domain name <sullcromwel.com> is confusingly similar to the SULLCROM mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
It is not necessary to consider the question of similarity between the disputed domain name and Complainant’s SULLIVAN & CROMWELL mark.
Complainant has made out a prima facie case that Respondent has no rights legitimate interests in the disputed domain name arguing that
· copy email correspondence that has been exhibited in an annex to the Complaint shows that Respondent used the disputed name to send emails impersonating one of Complainant’s partners in an attempt defraud a company into paying a non-existent invoice;
· specifically, on June 21, 2022, Respondent used the disputed name to send an email purportedly from a partner of Complainant, to a third-party recipient, with a subject-line “Overdue Payment” and having a forged attached urging payment of $350,000 directing payment to a bank account that is not associated with Complainant, which instead appears to be an account set up by Respondent to receive fraudulent payments;
· a further follow up email in similar terms was sent on June 23, 2022, also purporting to be from the same sender and requesting payment;
· neither Complainant nor its named partner has any relationship with Respondent, the sender of the e-mails, the invoice attached to the e-mail, or the bank account to which the recipient of the e-mail was directed to send payment;
· such use of the disputed domain name as an email address, to impersonate one of Complainant’s partners in fictitious emails and to engage in fraud, impersonation and deception cannot ever be a use of the disputed domain name in connection with the bona fide offering of goods or services nor can it be a legitimate or noncommercial or fair use;
· there is no evidence that before any notice of a dispute, Respondent used, or made demonstrable preparations to use, the domain name, or a name corresponding to the domain name, in connection with a bona fide offering of goods or services (Policy ¶ 4(c)(i)),
· there is no evidence that Respondent has ever been commonly known by the disputed domain name;
· Complainant has not licensed or authorized anyone to use the SULLCROM and SULLIVAN & CROMWELL marks or to register or use the disputed name and has no knowledge of Respondent being commonly known by Complainant’s marks.
It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.
Respondent has failed to discharge that burden and therefore this Panel must find that 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 Complainant has adduced uncontested evidence that it had used the SULLCROM and SULLIVAN & CROMWELL marks extensively to provide its legal services and has established offices in countries across the world.
Complainant’s registrations for its SULLCROM mark date back as far as United States service mark registration number 3,837,867 registered on the Principal Register on August 24, 2010, long before the disputed domain name was registered on June 21, 2022. Complainant’s reputation is enhanced by its Internet presence and its website at <www.sullcrom.com>.
The SULLCROM mark is a distinctive combination of the first syllables in Complainant’s name, trademark and eponymous domain name SULLIVAN & CROMWELL together with the element “wel” that is, on the balance of probabilities, a reference to the name “Cromwell” in Complainant’s name, mark, domain name and website address.
Given the similarity of the disputed domain name to the SULLCROM mark, the distinctive character of the SULLCROM mark, and that the disputed domain name is structured to infer a reference to Complainant by adding the letters “wel” to the SULLCROM mark as described above, it is most improbable that the registrant of the disputed domain name was unaware of Complainant, its name, mark, international legal practice and Internet presence when the disputed domain name was chosen and registered.
This Panel finds therefore that on the balance of probabilities the disputed domain name was chosen and registered in bad faith to target and take predatory advantage of Complainant’s reputation and goodwill in the SULLCROM mark and the SULLIVAN & CROMWELL name and mark.
The uncontested evidence shows that the disputed domain name has been used to create an Internet account and that Respondent has used the account to send emails to third parties, purporting to be a partner of Complainant. The express purpose of the emails was to demand payment of an invoice which Complainant has shown to be fraudulent. Therefore Respondent has engaged in a fraudulent attempt to confuse, defraud and deceive the third party by impersonating Complainant and its partner.
Such use of the disputed domain name is clearly use in bad faith for the purpose of the Policy. This Panel finds therefore that the disputed domain name was registered in bad faith.
As this Panel has found 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sullcromwel.com> domain name be TRANSFERRED from Respondent to Complainant.
_____________________________________________
James Bridgeman SC
Panelist
Dated: July 26, 2022
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