Sullivan & Cromwell LLP v. Whitney Chatterjee / cromwell / lawyer
Claim Number: FA2210002014697
Complainant is Sullivan & Cromwell LLP (“Complainant”), represented by Stephen J. Elliott of Sullivan & Cromwell LLP, US. Respondent is Whitney Chatterjee / cromwell / lawyer (“Respondent”), US.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sullivancrommwell.com>, <sullivancromwelli.com>, and <sullivanmcromwell.com>, (“the Domain Names”) registered with Google LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to Forum electronically on October 4, 2022; Forum received payment on October 4, 2022.
On Oct 04, 2022, Google LLC confirmed by e-mail to Forum that the <sullivancrommwell.com>, <sullivancromwelli.com>, and <sullivanmcromwell.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 October 10, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 31, 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@sullivancrommwell.com, postmaster@sullivancromwelli.com, postmaster@sullivanmcromwell.com. Also on October 10, 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, Forum transmitted to the parties a Notification of Respondent Default.
On November 7, 2022 pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Dawn Osborne as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 alleged that the entities which control the Domain Names at issue are effectively controlled by the same person and/or entity, which is operating under the same false name with different addresses. 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.” The Domain Names have all been registered with the same false name which is the real name of one of the Complainant’s partners and used for fraudulent e-mails that all follow the same template wording. The Panel finds that the Domain Names are effectively controlled by the same person and/or entity that will be referred to as ‘Respondent’ herein and these Proceedings can proceed against all the Domain Names.
A. Complainant
The Complainant’s contentions can be summarised as follows:
The Complainant owns the mark SULLIVAN & CROMWELL registered, inter alia, in the USA for legal services with first use in commerce recorded as 1879. It uses the domain name sullcrom.com.
The Domain Names registered in 2022 are confusingly similar to the Complainant’s mark merely omitting its ampersand and adding the letter ‘m’ or the letter ‘i’ and the gTLD .com none of which prevents said confusing similarity.
The Respondent has no rights or legitimate interests in the Domain Names and is not commonly known by them or authorised by the Complainant.
The Domain Name has been used for a fraudulent e-mail scheme to impersonate the Complainant using the Complainant’s mark and the name of one of its partners so there is no bona fide offering of goods and services or legitimate non commercial fair use. Phishing is registration and use in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant owns the mark SULLIVAN & CROMWELL registered, inter alia, in the USA for legal services with first use in commerce recorded as 1879.
The Domain Names registered in 2022 have been used for phishing e-mails using the same template wording purporting to come from the Complainant falsely using the same name of one of its partners. False details also corresponding to the real name of that partner have also been given to the WhoIS database for the Domain Names.
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 Domain Names include the Complainant's SULLIVAN & CROMWELL mark (registered in the USA for legal services with first use recorded as 1879), merely omitting its ampersand and adding the single letter ‘m’ or ‘i’ and the gTLD .com.
The addition of a single letter does not prevent of using similarity between a trade mark and a domain name. See Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’). The Panel agrees that the addition of the single letter ‘m’ or ‘i’ to the Complainant's mark does not prevent confusing similarity between each of the Domain Names and the Complainant's trade mark pursuant to the Policy.
The omission of punctuation like ampersands does not prevent confusing similarity between a complainant’s mark and a domain name. See Health Devices Corp. v Aspen STC, FA 158254 (Forum July 1, 2003). The panel held that the deletion of ampersands from the Complainant’s marks did not prevent confusing similarity between them and the Domain Name.)
The gTLD .com does not serve to distinguish the Domain Names from the Complainant’s mark. See Red Hat Inc v Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are each confusingly similar for the purpose of the Policy to a mark in which the Complainant has rights.
As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorised the Respondent to use signs confusingly similar to its mark. The Respondent has falsely used the name of one of the Complainant’s partners for the WhoIS details and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The Domain Names have been used in a fraudulent e-mail phishing scheme using the same template wording and the Complainant’s mark and the name of one of the Complainant’s partners. This is deceptive and confusing. As such it cannot amount to the bona fide offering of goods and services or a legitimate non commercial or fair use. (See DaVita Inc. v Cynthia Rochelo FA 1738034 (Forum July 20, 2017) finding that ‘Passing off in furtherance of a fraudulent scheme is not considered a bona fide offering of goods or services or legitimate non commercial or fair use’.)
The Respondent has not responded to this Complaint or provided any explanation to counter the prima facie case put forward by the Complainant as set out herein.
As such the Panelist finds that the Respondent does not have rights or legitimate interests in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The use of the Complainant’s mark and the name of one of the Complainant’s partners in the phishing e-mail scheme in this case shows that the Respondent has actual knowledge of the Complainant, its rights, business and services. Impersonating a complainant by use of a complainant’s mark in a fraudulent phishing scheme is disruptive and evinces bad faith registration and use. See Microsoft Corporation v Terrence Green/ Whois Agent/Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr 4, 2016)(finding that respondent’s use of the disputed domain name to send fraudulent e-mails constituted bad faith registration and use pursuant to Policy 4 (b)(iii).)
Providing false information at the time of a domain name’s registration may be evidence of respondent’s bad faith registration and use under Policy 4(a)(iii). See Farouk Systems, Inc. v. Jack King / SLB, FA1505001618704 (Forum June 19, 2015) (finding bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent had provided false contact information when registering the disputed domain name). Here in the context of phishing providing falsely the name of one of the Complainant’s partners to the WhoIS database is a clear indication of bad faith.
As such, the Panelist believes that the Complainant has made out its case that the Domain Names were registered and used in bad faith and has satisfied the third limb of the Policy under para 4(b)(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 <sullivancrommwell.com>, <sullivancromwelli.com>, and <sullivanmcromwell.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: November 8, 2022
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