DECISION

 

Sullivan & Cromwell LLP v. [Redacted for Reasons of Privacy] / Sullivan

Claim Number: FA2403002088252

 

PARTIES

Complainant is Sullivan & Cromwell LLP ("Complainant"), represented by Stephen J. Elliott of Sullivan & Cromwell LLP, New York, USA. Respondent is [Redacted for Reasons of Privacy] / Sullivan ("Respondent"), New York, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sullivancromwallsgroup.com> ('the Domain Name'), registered with Squarespace Domains II LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Dawn Osborne as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 13, 2024; Forum received payment on March 13, 2024.

 

On March 14, 2024, Squarespace Domains II LLC confirmed by e-mail to Forum that the <sullivancromwallsgroup.com> Domain Name is registered with Squarespace Domains II LLC and that Respondent is the current registrant of the name. Squarespace Domains II LLC has verified that Respondent is bound by the Squarespace Domains II 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 March 20, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 9, 2024 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@sullivancromwallsgroup.com. Also on March 20, 2024, 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 April 10, 2024 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.

 

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant's contentions can be summarised as follows:

 

The Complainant is the owner of the trade mark SULLIVAN & CROMWELL registered in the USA for legal services with first use recorded as 1879.

 

The Domain Name registered in 2024 is confusingly similar to the Complainant's trade mark replacing the 'e' with an 'a', omitting the ampersand, and adding a letter 's', the generic term 'group' and the gTLD .com.

 

The Respondent has no rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorised by the Complainant.

 

The Domain Name is not connected to an active web site but has been used for a fraudulent email scheme using the name of one of the Complainant's former employees. This cannot be a bona fide offering of goods or services or a legitimate non commercial fair use. It is deceptive registration and use in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Complainant is the owner of the trade mark SULLIVAN & CROMWELL registered in the USA for legal services with first use recorded as 1879.

 

The Domain Name registered in 2024 is not connected to an active web site but has been used for a fraudulent email scheme using the name of one of the Complainant's former employees.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

The Domain Name consists of a sign confusingly similar to the Complainant's SULLIVAN & CROMWELL mark (registered, inter alia, in the USA for legal services with first use recorded as 1879), substituting the letter 'e' with an 'a', omitting the ampersand, and adding a letter 's', the generic word 'group' and the gTLD .com.

 

The Panel agrees that misspellings such as the addition of a letter 's' or the substitution of a letter 'e' with a letter 'a' does not prevent confusing similarity between the Domain Name and the Complainant's trade mark pursuant to the Policy. See Twitch Interactive, Inc. v Antonio Teggi, FA 1626528 (Forum Aug. 3, 2015) (finding that twitcch.tv is confusingly similar to the TWITCH TV trade mark because the domain name consisted of a common misspelling of the mark by merely adding the letter 'c'). See Omaha Steaks International, Inc. v. DN Manager / Whois-Privacy.Net Ltd, FA 1610122 (Forum July 9, 2015) (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.').

 

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) (where the panel held that the deletion of ampersands from the Complainant's marks did not prevent confusing similarity between them and the Domain Name).

 

Previous panels have found confusing similarity when a respondent merely adds a generic term to a sign confusingly similar to the Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks). The addition of the generic word 'group' does not prevent confusing similarity between the Domain Name and the Complainant's mark.

 

The gTLD .com does not serve to distinguish the Domain Name 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 Name is confusingly similar to the Complainant's registered mark.

 

As such the Panel holds that Paragraph 4 (a) (i) of the Policy has been satisfied.

 

Rights or Legitimate Interests

 The Domain Name has been used in a fraudulent email phishing scheme using the name of one of the Complainant's former employees. 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 Complainant has not authorised the use of its mark.

 

Despite the name of the Complainant's former employee and SULLIVAN appearing in the WhoIS details for the Domain Name since the Domain Name is being used to impersonate the Complainant in a fraudulent email scheme the Respondent is clearly not, in fact, commonly known by the Domain Name.

 

The Respondent has not provided a Response to this Complaint and the prima facie case evidenced by the Complainant has not been rebutted.

 

As such the Panelist finds that the Respondent does not have rights or legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

The use of the name of one of the Complainant's former employees in the Respondent's fraudulent phishing email scheme and the WhoIS details 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 emails constituted bad faith registration and use pursuant to Policy 4(b)(iii)).

 

As such, the Panelist believes that the Complainant has made out its case that the Domain Name was used in a fraudulent email scheme and registered and used in bad faith, and has satisfied the third limb of the Policy under paragraph 4(b)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <sullivancromwallsgroup.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Dawn Osborne, Panelist

Dated: April 10, 2024