Sullivan & Cromwell LLP v. Andrew Goodman / JUDITH FICKER / Sullcrom
Claim Number: FA2207002003910
Complainant is Sullivan & Cromwell LLP (“Complainant”), represented by Stephen J. Elliott of Sullivan & Cromwell LLP, New York, USA. Respondent is Andrew Goodman / JUDITH FICKER / Sullcrom (“Respondent”), Iowa, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sullivancromwe.com> and <sullcromwells.com>, registered with Google 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.
The Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 12, 2022; the Forum received payment on July 12, 2022.
On July 13, 2022, Google LLC confirmed by e-mail to the Forum that the <sullivancromwe.com> and <sullcromwells.com> domain names are registered with Google LLC and that Respondent is the current registrant of the names. Google LLC has verified that Respondent is bound by the Google 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 14, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 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@sullivancromwe.com, postmaster@sullcromwells.com. Also on July 14, 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 August 9, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable Neil Anthony Brown QC 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: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has submitted that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that the disputed domain names were registered on the same day to the same registrar, registered using the same privacy service, and have been used in substantially identical ways.
Having regard to all the circumstances, the Panel finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. The matter may therefore go forward on that basis and the word “Respondent” shall be taken to mean the domain name holder of each disputed domain name in this proceeding.
A. Complainant
Complainant made the following contentions.
Complainant, Sullivan & Cromwell LLP, offers legal services. Complainant has rights in the SULLCROM mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,837,867 registered August 24 2010) and other international trademark authorities. See Compl. Annex C. Complainant also has rights in the SULLIVAN & CROMWELL mark through its registration of the mark with the USPTO (e.g., Reg. No. 2,195,205, registered October 13, 1998) and other international trademark authorities. See Compl. Annex D. Respondent’s <sullivancromwe.com> and <sullcromwells.com> domain names are virtually identical and confusingly similar to Complainant’s marks. The <sullivancromwe.com> domain name is an attempt to combine the SULLCROM and SULLIVAN & CROMWELL marks, specifically the partial terms “sullivan” and “crom”, together with the letters “we”. The <sullcromwells.com> domain name contains the SULLCROM mark in its entirety and adds the term “wells”, presumably derived from the SULLIVAN & CROMWELL mark. The disputed domain names also include the “.com” generic top-level domain (“gTLD”).
Respondent has no legitimate interests in the <sullivancromwe.com> and <sullcromwells.com> domain names (henceforth referred to as the “disputed domain names”). Respondent is not commonly known by the disputed domain names and Complainant has not authorized or licensed Respondent any rights in the SULLCROM or SULLVIAN & CROMWELL marks. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, the disputed domain names both resolve to inactive webpages. Email addresses incorporating the disputed domain names have been used in conjunction with a phishing scheme.
Respondent registered and uses the disputed domain names in bad faith. Respondent registered the disputed domain names in order to divert customers for commercial gain. Respondent uses email addresses incorporating the disputed domain name in order to participate in phishing. Respondent registered the disputed domain names using a privacy shield. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the SULLCROM and SULLIVAN & CROMWELL marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is a prominent law firm.
2. Complainant has established its trademark rights in the SULLCROM mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,837,867 registered August 24, 2010 and other international trademark authorities. Complainant also has established its trademark rights in the SULLIVAN & CROMWELL mark through its registration of the mark with the USPTO (e.g., Reg. No. 2,195,205, registered October 13, 1998) and other international trademark authorities.
3. Respondent registered the disputed domain names on July 7, 2022.
4. Respondent has caused the disputed domain names to resolve to inactive webpages. Also, email addresses incorporating the disputed domain names have been used in conjunction with a phishing scheme.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the SULLCROM mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,837,867, registered August 24, 2010) and other international trademark authorities. See Compl. Annex C. Complainant also submits that it has rights in the SULLIVAN & CROMWELL mark through its registration of the mark with the USPTO (e.g., Reg. No. 2,195,205, registered October 13, 1998) and other international trademark authorities. See Compl. Annex D. Registration of a mark with multiple international trademark authorities is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”). Since Complainant provides evidence of registration of the SULLCROM and SULLIVAN & CROMWELL marks with the USPTO, the Panel finds that Complainant has established its trademark rights in the mark under Policy 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SULLCROM and/or SULLIVAN & CROMWELL marks. Complainant argues that Respondent’s <sullivancromwe.com> and <sullcromwells.com> domain names are confusingly similar to Complainant’s marks. The addition of a gTLD and slight alternations to a mark such as the deletion or addition of letters fails to distinguish sufficiently a disputed domain name from a mark per Policy ¶ 4(a)(i). See Myspace, Inc. v. Kang, FA 672160 (Forum June 19, 2006) (finding that the <myspce.com> domain name was confusingly similar to the complainant’s MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). In addition, an attempt by a respondent to combine a complainant’s registered marks may support a finding of confusing similarity. See Wyndham Hotels and Resorts, LLC, and Wyndham Vacation Resorts, Inc. v. James VanBuren, FA 1624028 (Forum July 10, 2015) (“The disputed domain name combines two of Complainant's registered trademarks, WYNDHAM and EXTRA VACATIONS, omitting the space and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks.”). Here, the Panel finds that the <sullivancromwe.com> domain name is an attempt to combine the SULLCROM and SULLIVAN & CROMWELL marks, specifically the partial terms “sullivan” and “crom”, together with the letters “we”, and the <sullcromwells.com> domain name contains the SULLCROM mark in its entirety and adds the term “wells”, presumably derived from the SULLIVAN & CROMWELL mark. The disputed domain names also include the “.com” generic top-level domain gTLD. Therefore, the Panel finds the disputed domain names are confusingly similar to both of Complainant’s marks per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
(a) Respondent has chosen to take Complainant’s SULLCROM and SULLIVAN & CROMWELL marks and to use them in its domain names, making only minor alterations to the marks;
(b) Respondent registered the domain names on July 7, 2022;
(c) Respondent has caused the disputed domain names to resolve to inactive webpages. Also, email addresses incorporating the disputed domain names have been used in conjunction with a phishing scheme;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain names since Respondent is not commonly known by the disputed domain names and Complainant has not authorized or licensed to Respondent any rights in the SULLCROM or SULLIVAN & CROMWELL marks. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). In addition, a lack of authorization to use a complainant’s mark may also indicate that a respondent is not commonly known by the disputed domain name. See Deutsche Lufthansa AG v. Mohamed elkassaby, FA 1801815 (Forum Sep. 17, 2018) (“The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).”). The WHOIS information for the disputed domain names lists the registrants as “Andrew Goodman” and “Judith Ficker/ Sullcrom”. See Registrar Email Verification. Complainant further asserts it has not licensed or otherwise authorized Respondent to use Complainant’s marks. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the disputed domain names instead resolve to inactive webpages. Where the Respondent fails to make active use of a domain, the Panel may find the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). Here, Complainant provides evidence of the disputed domain names resolving to inactive webpages. See Compl. Annex E. Therefore, the Panel finds that Respondent fails to use the disputed domain names for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii);
(g) Complainant argues that Respondent fails to use the disputed domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent purports to be Complainant through its use of emails incorporating the disputed domain names to solicit money and sensitive information on false pretenses. A respondent’s use of an email address incorporating a disputed domain name to pass itself off as an affiliate of the complainant under false pretenses may support a finding of failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the respondent’s use of the disputed domain names to send fraudulent emails purportedly from agents of complainant to be neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Here, Complainant has provided evidence of emails incorporating the disputed domain names that were used to impersonate actual employees of Complainant under false pretenses. See Compl. Annex G. Therefore, the Panel finds that Respondent fails to use the disputed domain names for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii);
(h) Complainant submits that, because Respondent has used emails incorporating the disputed domain names to solicit money on false pretenses, Respondent has engaged in phishing and thus demonstrated its lack of rights or legitimate interest in Complainant’s mark. See Wells Fargo & Co. v. WhoisGuard, FA 1103650 (Forum Dec. 13, 2007) (“There is no dispute that respondent previously used the disputed domain name to obtain personal and financial information from Internet customers of complainant. This fraudulent use [is] known as ‘phishing’”). The impersonation of a complainant in conjunction with a phishing scheme may indicate a lack of rights or legitimate interest in a disputed domain name. See Allianz of Am. Corp. v. Bond, FA 690796 (Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Here, Complainant has provided evidence of Respondent’s use of Complainant’s marks and identifying information to solicit financial information on false pretenses. See Compl. Annex G. As the Panel agrees, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain names, per Policy ¶4 (a)(ii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the disputed domain names in bad faith because Respondent attempts to take advantage of confusion with Complainant’s well-known marks to attract Internet users to its competing website for commercial gain. Use of a domain name that is confusingly similar to a well-known mark can be evidence of a bad faith attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”). See also Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). Here, Complainant contends that Respondent takes advantage of confusing similarity with Complainant’s marks for commercial gain. As the Panel agrees, the Panel finds that Respondent registered and used the disputed domain names in bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent has registered and used the disputed domain names in bad faith because Respondent uses email addresses incorporating the disputed domain names in order to pass itself off as affiliated with Complainant. The use of emails to impersonate an employee of a complainant can be evidence of an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Airbnb, Inc. v. JAMES GRANT, FA1760182 (Forum Dec. 28, 2017) (“Using a misleading email address to defraud unwary customers certainly constitutes bad faith.”); see also Smiths Group plc v. Snooks, FA 1372112 (Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). As previously noted, Complainant provides evidence of Respondent’s use of email addresses incorporating the disputed domain names to pose fraudulently as being affiliated with Complainant. See Compl. Annex G. Therefore, the Panel agrees and finds that Respondent registered and used the disputed domain names in bad faith per Policy ¶ 4(b)(iv).
Thirdly, Complainant contends that, because Respondent is using Complainant’s identity to obtain personal financial information from internet users, Respondent has engaged in phishing and thus demonstrated bad faith registration and use. Phishing may in and of itself be considered evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Zoetis Inc. and Zoetis Services LLC v. VistaPrint Technologies Ltd, FA1506001623601 (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).”). As previously mentioned, Respondent’s use of email addresses incorporating the disputed domain names to pass itself off as an employee of Complainant and solicit financial information appears to constitute phishing. See Compl. Annex G. As the Panel agrees, the Panel finds that Respondent’s registration and use of the disputed domain names to be in bad faith, pursuant to Policy ¶ 4(a)(iii).
Fourthly, Complainant notes that Respondent used a privacy shield to register the disputed domain names. Registration of a disputed domain name using false WHOIS information, including the use of a privacy shield, suggests bad faith in the absence of evidence or successful argument to the contrary. See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sep. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”). Here, Complainant notes the WHOIS information for both disputed domain names lists the registrant’s name as “Contact Privacy Inc. Customer 7151571251.” There is no evidence or argument from Respondent to the contrary to explain this having been done. Thus, as the Panel agrees, it finds Respondent registered and uses the disputed domain names in bad faith.
Fifthly, Complainant contends that in light of the fame and notoriety of Complainant’s marks, it is inconceivable that Respondent could have registered the disputed domain names without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that arguments of bad faith based on constructive notice are usually not accepted because prior UDRP decisions generally decline to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain names and finds that actual knowledge 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). In this case, the Panel notes the notoriety of Complainant’s SULLCROM and SULLIVAN & CROMWELL marks. As the Panel determines Respondent had actual knowledge of Complainant’s rights in the marks, it finds that Respondent registered the disputed domain names in bad faith per Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sullivancromwe.com> and <sullcromwells.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: August 11, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page