DECISION

 

Sullivan & Cromwell LLP v. Dr. Vikas Yadav

Claim Number: FA2502002140666

 

PARTIES

Complainant is Sullivan & Cromwell LLP ("Complainant"), represented by Stephen J. Elliott of Sullivan & Cromwell LLP, New York, USA. Respondent is Dr. Vikas Yadav ("Respondent"), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sullcromlawoffices.com>, registered with Wild West Domains, LLC.

 

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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

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

 

On February 18, 2025, Wild West Domains, LLC confirmed by e-mail to Forum that the <sullcromlawoffices.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, 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 February 19, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 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@sullcromlawoffices.com. Also on February 19, 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 12, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. 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

i) Since at least 1998, Complainant has used the SULLCROM mark to identify its legal services and products and services related to its legal practice. Complainant has rights in the SULLCROM mark based upon numerous trademark registrations around the world including registration with the USPTO (e.g., Reg. No. 3,837,867 registered August 24, 2010). The disputed domain name is confusingly similar to Complainant's SULLCROM mark because it contains Complainant's mark in its entirety adding non-distinguishing element "law offices."

 

ii) Respondent has no legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent to hold any rights in the SULLCROM  mark.  Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use.

 

iii) Respondent registered and uses the disputed domain name in bad faith. The mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. Further indication of Respondent's bad faith is the use of a privacy service.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on January 7, 2025.

 

2. Complainant holds established rights in the SULLCROM mark based upon numerous trademark registrations around the world including registration with the USPTO (e.g., Reg. No. 3,837,867 registered August 24, 2010).

 

3. Respondent's website employs a mechanism known as "dynamic URL generation" or "dynamic hyperlink generation," which causes certain hyperlinks to change continuously with each visit.

 

4. Respondent's website dynamically alters categories such as "Judicial scrivener services," "Patents," "Trademarks," "Individual rehabilitation attorneys," "Criminal defense attorneys," "Specializing in sexual offenses," and "Legal consultations" with each visit. Clicking on any of these categories displays multiple third parties under the designation of "sponsors," along with a brief description and a link to their respective websites.

 

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

Complainant claims rights in the SULLCROM mark based on numerous trademark registrations around the world, including registrations with the USPTO (e.g., Reg. No. 3,837,867 registered August 24, 2010). Registration of a mark with the USPTO is a valid demonstration of rights in a mark. Since Complainant provides evidence of the registration of the SULLCROM mark with the USPTO, the Panel finds that Complainant has established rights in the marks under Policy ¶ 4(a)(i).

 

Complainant contends that the disputed domain name <sullcromlawoffices.com> is confusingly similar to Complainant's SULLCROM mark because it contains Complainant's mark in its entirety. The additional non-distinctive element, i.e., "lawoffices" does not negate the confusing similarity of the disputed domain name. The Panel notes that additional terms related to a complainant's business can heighten the likelihood of confusing similarity between the domain name and the mark. See Expedia v. Sameh Elsayed, FA 1941132 (Forum May 10, 2021) ("The disputed domain name <expedia-traveleg.com> incorporates Complainant's registered EXPEDIA trademark, adding a hyphen, the generic term 'travel,' the geographic abbreviation 'eg,' and the '.com' top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark."). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant's SULLCROM mark per Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Section 2.1, WIPO Jurisprudential Overview 3.0 ("Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.").

 

Complainant argues that Respondent has no rights or legitimate interest in the disputed domain name as Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use Complainant's mark, and Respondent is not affiliated with Complainant. Relevant information, such as WHOIS information, can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The Panel notes that the WHOIS data lists "Dr. Vikas Yadav" as the registrant, and there is no evidence in the record to suggest Respondent was authorized to use the mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Complainant has not demonstrated how the disputed domain name is being specifically used. Upon the Panel's review of the website associated with the disputed domain name, it was found to host hyperlinks titled, among others, "Judicial scrivener services," "Patents," "Trademarks," "Individual rehabilitation attorneys," "Criminal defense attorneys," "Specializing in sexual offenses," and "Legal consultations." Clicking on these hyperlinks redirects users to various third-party websites offering content related to legal services. Notably, the Panel observed that the website linked to the disputed domain name employs a mechanism commonly referred to as "dynamic URL generation" or "dynamic hyperlink generation," which causes certain hyperlinks on the website to change continuously with each visit.

 

Past panels have found that using a confusingly similar domain name to display related or unrelated links does not demonstrate a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Constellation Wines U.S., Inc. v. Tex. Int'l Prop. Assocs., FA 948436 (Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). See also State Farm Mutual Automobile Insurance Company v. ICS INC., FA 1532398 (Forum Dec. 31, 2013) (finding respondent is not making a bona fide offering of goods and services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the domain name resolves to a parked page containing click-through links for various products and services unrelated to complainant). Therefore, the Panel finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).

 

The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. 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 has no rights or legitimate interests in the disputed domain name.

 

Registration and Use in Bad Faith

Complainant contends that Respondent registered and uses the disputed domain name in bad faith. The mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. Further indication of Respondent's bad faith is its use of a privacy service.

 

The Panel observes that the website associated with the disputed domain name hosts hyperlinks with titles such as "Judicial scrivener services," "Patents," "Trademarks," "Individual rehabilitation attorneys," "Criminal defense attorneys," "Specializing in sexual offenses," and "Legal consultations." Additionally, the website employs "dynamic URL generation" or "dynamic hyperlink generation," causing certain hyperlinks to change continuously with each visit. 

 

The Panel notes that using a domain name to host hyperlinks, whether related or unrelated to Complainant's business, for commercial gain is indicative of bad faith under Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA 1625786 (Forum Aug. 2, 2015) (finding bad faith where the respondent used the disputed domain name to host a variety of hyperlinks, through which the respondent presumably gained commercially).

 

The Panel finds that Respondent used the disputed domain name to host a variety of hyperlinks, through which Respondent presumably gained commercially. Furthermore, Respondent disrupts Complainant's business by redirecting Internet users seeking Complainant to Complainant's competitors. Based on these factors, the Panel concludes that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii) or (iv).

 

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 <sullcromlawoffices.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: March 12, 2025