Sullivan & Cromwell LLP v. Whitney Chatterjee / Sullivan&Cromwell / Sullivan & Cromwell / Gareth Rothweiler / ROSE CASTELLANOS
Claim Number: FA2212002022604
Complainant is Sullivan & Cromwell LLP (“Complainant”), represented by Stephen J. Elliott of Sullivan & Cromwell LLP, US. Respondent is Whitney Chatterjee / Sullivan&Cromwell / Sullivan & Cromwell / Gareth Rothweiler / ROSE CASTELLANOS (“Respondent”), CA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names listed in the complaint are <sullivamncromwell.com>, <sullivanacromwell.com>, <sullivancronmwell.com>, <sullivvancromwell.com>, <sullivanccromwell.com>, <sullivanncromwell.com>, <sullivanscromwell.com>, and <sullivancromnwells.com>, registered with Google LLC; NameCheap, Inc..
For the reasons given below, the Panel finds that the only relevant domain names for this case are: <sullivamncromwell.com>, <sullivanacromwell.com>, <sullivancronmwell.com>, <sullivvancromwell.com> ,<sullivanccromwell.com> and <sullivanncromwell.com>.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on December 2, 2022; Forum received payment on December 2, 2022.
On December 2, 2022, Google LLC; NameCheap, Inc. confirmed by e-mail to Forum that the <sullivamncromwell.com>, ,<sullivanacromwell.com>, ,<sullivancronmwell.com>, ,<sullivvancromwell.com>, ,<sullivanccromwell.com>, ,<sullivanncromwell.com>, ,<sullivanscromwell.com>, ,<sullivancromnwells.com> domain names are registered with Google LLC; NameCheap, Inc. and that Respondent is the current registrant of the names. Google LLC; NameCheap, Inc. has verified that Respondent is bound by the Google LLC; 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 December 7, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 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@sullivamncromwell.com, postmaster@sullivanacromwell.com, postmaster@sullivancronmwell.com, postmaster@sullivvancromwell.com, postmaster@sullivanccromwell.com, postmaster@sullivanncromwell.com, postmaster@sullivanscromwell.com, postmaster@sullivancromnwells.com. Also on December 7, 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 January 2, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill 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 several aliases. In support of this allegation it states:
a) all of the disputed domain names were registered with Google LLC or NameCheap, Inc.;
b) all of the disputed domain names were registered using a privacy service (five using “Customer 7151571251,” and three using “Redacted for Privacy,” as identified in WHOIS);
c) the disputed domain names are confusingly similar to each other and to Complainant’s registered mark;
d) the disputed domain names were all registered between September 20, 2022 and November 19, 2022;
e) six of the disputed domain names have been used in substantially identical ways to perpetrate a fraud by sending e-mails purportedly from Complainant (and impersonating one of Complainant’s partners) to elicit payments from third parties;
f) Complainant has reason to believe that the other two disputed domain names (<sullivanscromwell.com> and <sullivancromnwells.com>) were registered, and are intended, for similar fraudulent uses.
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 Panel finds that allegations (a) through (d) above do not necessarily indicate that the domain names are under common control. The six domain names referred to in (e) above are all actually registered by the same entity, namely “Whitney Chatterjee” (with or without the addition of “Sullivan&Cromwell” or “Sullivan & Cromwell”). Thus those six domain names are obviously under common control.
Complainant has not presented any evidence to support its allegation that the other two disputed domain names were registered, and are intended, for similar use as the domain names mentioned above. In fact, Complainant states that it has not received any indication yet that Respondent has used those two domain names to send any fraudulent e-mails. Those two disputed domain name resolve to parked pages displaying sponsored advertising links.
Thus the Panel finds that Complainant has not presented sufficient evidence to find that all the disputed domain names were registered by the same person or entity.
Under the Forum’s Supplemental Rule 4(c), the Panel must determine which domain names are commonly owned and elect which Respondent to proceed against, as a UDRP decision can proceed against only one Respondent. The Panel is then required to dismiss the Complaint in relation to the domain names not commonly owned by the chosen Respondent.
Accordingly, the Panel will rule only on the <sullivamncromwell.com>, <sullivanacromwell.com>, <sullivancronmwell.com>, <sullivvancromwell.com>, <sullivanccromwell.com> and <sullivanncromwell.com>domain names, and it will dismiss, without prejudice, the complaint regarding the <sullivanscromwell.com>, and <sullivancromnwells.com>domain names. See Brian Renner v. Contactprivacy.com, FA1007001335211 (Forum Aug. 26, 2010); see also Amazon Technologies, Inc. v. M M / shanwang chen / feifei lin / HUA ZHANG / L H / Eddie Nash / Heather Brooker, FA2111001973471 (Forum Dec 17, 2021).
A. Complainant
Complainant is a multinational law firm that has provided legal services since 1879 from its headquarters in New York City. Complainant claims rights in the SULLIVAN & CROMWELL mark through its registration in the United States in respectively 1998. The mark is registered elsewhere around the world.
Complainant alleges that the disputed domain names are virtually identical and confusingly similar to its SULLIVAN & CROMWELL mark because they consist of misspellings of the mark, removing the ampersand and adding the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names and Complainant has not authorized or licensed to Respondent any rights in its mark. Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names in furtherance of a fraudulent email phishing scheme. Specifically, Respondent used the disputed domain names to send emails with the subject stated as “Unpaid Invoice,” “Outstanding Invoice,” “Unpaid Court Order,” or “Court Order and Due Payment,” purportedly being sent by “Whitney Chatterjee”. The emails falsely suggest that the sender is a lawyer at Sullivan & Cromwell LLP that is “chasing an unpaid invoice issued to your company”, “chasing a court order judgment”, or “request[ing] payment” of a “court order approved judgment.” The emails assert that the sender “h[as] been advise[d] to contact you on this matter and [was] hoping [the recipient could] get this settled”, or that “[f]ailure to make payment for th[e] court order will leave us with no alternative but to bring legal action”. In the emails, “Whitney Chatterjee” is falsely identified as “Debt Collection Litigation Counsel” for Complainant. The emails contain a signature block with Ms. Chatterjee’s name, a false title, Complainant’s full name, and the address of Complainant’s London office.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent uses the disputed domain names in furtherance of a fraudulent email phishing scheme. Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the SULLIVAN & CROMWELL mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the mark SULLIVAN & CROMWELL dating back to 1998 and uses it to provide legal services around the world.
The disputed domain names were registered in 2022.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent used the disputed domain names to pass off as Complainant in furtherance of a fraudulent email phishing scheme; the signature blocks of the fraudulent emails display Complainant’s business name and the address of one of its offices.
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 disputed domain names consist of misspellings of Complainant’s SULLIVAN & CROMWELL mark, with the omission of the ampersand and the addition of the “.com” generic top-level domain (“gTLD”). Such changes do not distinguish the domain names from the mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“The [<morganstonley.com> and <morganstainley.com>] Domain Names are confusingly similar to Complainant’s marks, as they fully incorporate the MORGAN STANLEY mark, varying it only by subtle misspellings, omitting a space between the words, and adding the generic top-level domain (“gTLD”) ‘.com.’”); see also Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (finding, (finding, “The domain name differs from the mark only in that the domain name substitutes the letter ‘a’ in the word ‘steak’ with the letter ‘c’ and adds the generic Top Level Domain (‘gTLD’) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”); see also Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark).
Further, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”) states under 1.7: “In specific limited instances, … the broader case context such as website content trading off the complainant’s reputation … may support a finding of confusing similarity.” In the instant case, the disputed domain names are used specifically to trade off Complainant’s reputation, because they are used to pass off as Complainant in emails in furtherance of a fraudulent phishing scheme. Such use provides further justification for a finding of confusing similarity to Complainant’s mark.
For all the above reasons, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise allowed Respondent to use its SULLIVAN & CROMWELL mark. Respondent is not commonly known by the disputed domain names: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by a disputed domain name. See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Where the WHOIS is related to the disputed domain name, the Panel may still find the respondent lacks rights or legitimate interest in the disputed domain name if the respondent lacks authorization to use the complainant’s mark and the respondent fails to provide affirmative evidence in support of its identity. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). Here, the WHOIS information for the disputed domain name lists the registrant as “Whitney Chatterjee / Sullivan&Cromwell / Sullivan & Cromwell”, but Respondent provides no affirmative evidence in support of this identity and no evidence in the record suggests Respondent is authorized to use the SULLIVAN & CROMWELL mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
Respondent uses the disputed domain names in furtherance of a fraudulent email phishing scheme. Specifically, Complainant presents evidence showing that Respondent used the disputed domain names to send emails with the subject stated as “Unpaid Invoice,” “Outstanding Invoice,” “Unpaid Court Order,” or “Court Order and Due Payment,” purportedly being sent by “Whitney Chatterjee”. The emails falsely suggest that the sender is a lawyer at Sullivan & Cromwell LLP that is “chasing an unpaid invoice issued to your company”, “chasing a court order judgment”, or “request[ing] payment” of a “court order approved judgment.” The emails assert that the sender “h[as] been advise[d] to contact you on this matter and [was] hoping [the recipient could] get this settled”, or that “[f]ailure to make payment for th[e] court order will leave us with no alternative but to bring legal action”. In the emails, “Whitney Chatterjee” is falsely identified as “Debt Collection Litigation Counsel” for Complainant. Use of a domain name in a phishing scheme is not a bona fide offering of goods or services per Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name per Policy ¶ 4(c)(iii). See Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”); see also DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Therefore the Panel find that Respondent fails to use the disputed domain names to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, Respondent uses the disputed domain names to pass off as Complainant and conduct a fraudulent email phishing scheme. Using an infringing domain name to pass off as an employee of a trademark holder in furtherance of a phishing scheme may demonstrate bad faith disruption of Complainant’s business, as well as attraction to commercial gain under Policy ¶¶ 4(b)(iii) and/or (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). Thus the Panel finds bad faith registration and use under Policy ¶¶ 4(b)(iii) and/or (iv).
Further, by registering multiple infringing domain name, Respondent has engaged in a pattern of bad faith registration and use per Policy ¶ 4(b)(ii). See NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732458 (Forum July 3, 2017) (finding that registration of several infringing domain names in a case satisfies the burden imposed by the Policy ¶ 4(b)(ii)). Thus the Panel finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(ii).
Finally, Respondent registered the disputed domain names with actual knowledge of Complainant’s mark: the signature blocks of the fraudulent emails display Complainant’s business name and the actual address of one of its offices. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also 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). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
The Panel dismisses, without prejudice, the Complaint against the <sullivanscromwell.com> and<sullivancromnwells.com>domain names.
Having established all three elements required under the ICANN Policy for the domain names <sullivamncromwell.com>, <sullivanacromwell.com>, <sullivancronmwell.com>, <sullivvancromwell.com>, <sullivanccromwell.com> and <sullivanncromwell.com>, the Panel concludes that relief shall be GRANTED for those domain names.
Accordingly, it is Ordered that the <sullivamncromwell.com>, <sullivanacromwell.com>, <sullivancronmwell.com>, <sullivvancromwell.com>, <sullivanccromwell.com>, and <sullivanncromwell.com> domain names be TRANSFERRED from Respondent to Complainant and that the <sullivanscromwell.com> and<sullivancromnwells.com> domain names REMAIN WITH Respondent.
Richard Hill, Panelist
Dated: January 3, 2022
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