Sullivan & Cromwell LLP v. Andrew Goodman
Claim Number: FA2207002003447
Complainant is Sullivan & Cromwell LLP (“Complainant”), represented by Stephen J. Elliott of Sullivan & Cromwell LLP, New York, USA. Respondent is Andrew Goodman (“Respondent”), Iowa, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sullcromlawyer.com>, registered with GoDaddy.com, 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.
Alan L. Limbury as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 7, 2022. The Forum received payment on July 7, 2022.
On July 12, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <sullcromlawyer.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 13, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 2, 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 firstname.lastname@example.org. Also on July 13, 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 formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 04, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury 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.
Complainant, Sullivan & Cromwell LLP, provides legal services to clients around the world. Since at least 1998, Complainant’s website has been located at “www.sullcrom.com”. Complainant has rights in the SULLCROM mark based upon registrations with many trademark agencies, including the United States Patent and Trademark Office (“USPTO”). Respondent’s <sullcromlawyer.com> domain name is confusingly similar to Complainant’s mark.
Respondent does not have rights or legitimate interests in the <sullcromlawyer.com> domain name. Respondent is not licensed or authorized to use Complainant’s SULLCROM mark and is not commonly known by the domain name. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate non-commercial or fair use. Instead, Respondent uses the domain name to send fraudulent emails by impersonating one of Complainant’s partners.
Respondent registered and uses the <sullcromlawyer.com> domain name in bad faith. Respondent is sending fraudulent emails using the domain name and is also attempting to create confusion by using Complainant’s SULLCROM mark. Finally, Respondent used a privacy service to register the domain name.
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 legal services since 1879 from its headquarters in New York City. Complainant has clients throughout the world and 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 has shown that it has rights in the SULLCROM mark based upon registrations with multiple trademark agencies world-wide, such as the USPTO (e.g., Reg. No. 3,837,867, registered August 24, 2010). The Panel finds Respondent’s <sullcromlawyer.com> domain name to be confusingly similar to Complainant’s mark because it contains the SULLCROM mark in its entirety, merely adding the term “lawyer” which, far from distinguishing the domain name from the mark, suggests an association between them. The inconsequential generic top-level domain (“gTLD”) “.com” may be ignored.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or 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; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <sullcromlawyer.com> domain name was registered on June 30, 2022, many years after Complainant has shown that its SULLCROM mark had become very well-known worldwide. The evidence provided in the Complaint shows that, on July 6, 2022 the domain name was used to send three e-mails from <[partner name] @sullcromlawyer.com> purporting to be from Complainant’s London street address and impersonating one of Complainant’s partners in a fraudulent attempt to induce the recipients into paying non-existent invoices.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <sullcromlawyer.com> domain name. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has established this element.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s very well-known SULLCROM mark when Respondent registered the <sullcromlawyer.com> domain name and that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source of Respondent’s location. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Further, the Panel finds the domain name was registered and is being used in bad faith in a “phishing” scheme as an email extension to impersonate one of Complainant’s partners and fraudulently to attempt to obtain payments from Complainant’s clients.
Complainant has established this element.
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 <sullcromlawyer.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: August 5, 2022
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