DECISION

 

Sullivan & Cromwell LLP v. Vendettis Roofing LLC / Vendetti Roofing LLC

Claim Number: FA2502002140662

 

PARTIES

Complainant is Sullivan & Cromwell LLP ("Complainant"), represented by Stephen J. Elliott of Sullivan & Cromwell LLP, New York, USA. Respondent is Vendettis Roofing LLC / Vendetti Roofing LLC ("Respondent"), Colorado, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sullcromslawoffices.com>, registered with HOSTINGER operations, UAB.

 

PANEL

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 18, 2025; Forum received payment on February 18, 2025.

 

On February 19, 2025, HOSTINGER operations, UAB confirmed by e-mail to Forum that the <sullcromslawoffices.com> domain name is registered with HOSTINGER operations, UAB and that Respondent is the current registrant of the name. HOSTINGER operations, UAB has verified that Respondent is bound by the HOSTINGER operations, UAB 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 February 24, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 17, 2025 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@sullcromslawoffices.com. Also on February 24, 2025, 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 March 18, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons 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

Complainant asserts trademark rights in SULLCROM and submits that the domain name is confusingly similar to its trademark.  

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant further alleges that Respondent registered and used the disputed domain name in bad faith having targeted Complainant's trademark and business.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

 

1.                      Complainant provides legal services;

2.                      Complainant owns, inter alia, United States Patent & Trademark Office ("USPTO") Reg. No. 4,407,300, registered September 24, 2013, for the mark, SULLCROM; and

3.                      the disputed domain name was registered on January 27, 2025, and is not in use.

 

DISCUSSION

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.  

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).  Complainant therefore has rights since it provides proof of registration of the trademark SULLCROM with the USPTO, a national trademark authority.   

 

Complainant submits that the domain name is confusingly similar to the trademark. For the purposes of comparison of the disputed domain name with the trademark, the gTLD, ".com", can be disregarded (see, for example, Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) holding that: "The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name."); Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) holding that: "A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.")). Thereafter, the domain name appends "slawoffices" which would be read as the letter "s" (most likely in its possessive form, 's) and the descriptive words "law offices". The Panel finds the disputed domain name to be confusingly similar to the trademark (see, for example, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1804001782013 (Forum June 4, 2018) holding: "Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."; Sullivan & Cromwell LLP v Whitney Chatterjee/Sullivan, FA 2207002004528, (Forum Aug. 15, 2022) finding <sullcromwelllaws.com> confusingly similar to the trademark).

 

The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i) before any notice to you of the dispute, your use 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;  or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000‑0624).

 

There is no suggestion that Respondent might be commonly known by the disputed domain name, or that Respondent has any trademark rights. The Complaint states that the disputed domain name is not in use. It also states that Respondent has not been given permission to use the trademark and that there is no relationship between the parties. The Panel finds that Complainant has made a prima facie case that Respondent lacks a right or interest in the disputed domain name (see, for example, Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) finding that the respondent's non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

The onus shifts to Respondent. Absent a Response that onus is not met and so the Panel finds that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.  

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established. 

 

The four specified circumstances are:

 

'(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

 

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the site or location.'

 

There is nothing to indicate that any of those four scenarios might apply and Complainant has not argued for their application. As such, it must show – as separate matters - registration in bad faith and use in bad faith.

 

Complainant is confronted by the fact that there has been no use but correctly states that non-use of a disputed domain name does not prevent a finding of bad faith [use] under the doctrine of passive holding. That is so provided the Complaint meets the requirements for passive holding laid out in the leading case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, most notably, proof of notoriety of the trademark.

 

In that regard the Complaint states – without proof – that "[s]ince 1998 … Complainant's website has been located at www.sullcrom.com, and Complainant has used the SULLCROM mark to identify its legal services and products and services related to its legal practice. The Mark is based on a distinctive combination of elements in Complainant's name: 'sull' from 'Sullivan' and 'crom' from 'Cromwell.'".

 

The Panel accepts the claim that the trademark is per se distinctive but can find no proof of its use other than as part of Complainant's web address, not enough of itself to prove reputation. The claim to use of the trademark on the website since 1998 is not supported by the Panel's own permitted enquiries. The Internet Archive (Wayback Machine) search tool indeed shows a first appearance of a website at www.sullcrom.com in February 1998 but there is no appearance of the trademark then, or through to June 2017 where the Panel stopped investigation. What appears – aside from the eponymous SULLIVAN & CROMWELL – is the abbreviation "S & C", but no other. That remains true of the website as it appears at the time of this Decision.

 

The Complaint cites the case of Sullivan & Cromwell LLP v. Kurt Lageschulte, FA 1905702, (Forum Aug. 19, 2020) ("Complainant has adduced clear, convincing and uncontested evidence that it has rights in the SULLCROM trademark and service mark acquired through its ownership of the international portfolio of . . . registrations . . . and its extensive use of the mark in its international practice, including on the Internet with its website located at <www.sullcrom.com> which it has maintained since 1998."

 

That decision was not concerned with passive holding in bad faith but instead with blatant misuse of the relevant domain name. The decision is not focused on whether the trademark was well-known and is understandably uncritical of the web use. Further, the reference to an extensive international practice seems based on Complainant's submission "that it has acquired an international reputation and goodwill throughout the world, and since its establishment in 1879, has expanded globally with  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."  The reputation and goodwill spoken of would, it seems, attach to the practice name but is unhelpful with respect to the trademark at issue.

 

The Panel finds that Complainant has not brought evidence to satisfy any of the paragraph 4(b) circumstances, nor meet the requirements of Telstra Corporation Limited v. Nuclear Marshmallows with respect to passive holding (use) in bad faith. Accordingly, the Panel finds that the third and final element of the Policy has not been satisfied.

 

DECISION

Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <sullcromslawoffices.com> domain name REMAIN WITH Respondent.

 

 

 

 

Debrett G. Lyons, Panelist

Dated: March 19, 2025