DECISION

 

Sullivan & Cromwell LLP v. Mario Messina

Claim Number: FA2503002144068

 

PARTIES

Complainant is Sullivan & Cromwell LLP ("Complainant"), represented by Stephen J. Elliott of Sullivan & Cromwell LLP, New York, USA. Respondent is Mario Messina ("Respondent"), Great Britain.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sullcrom-ny.com>, ('the Domain Name') registered with Eranet International Limited.

 

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 7, 2025; Forum received payment on March 7, 2025.

 

On March 16, 2025, Eranet International Limited confirmed by e-mail to Forum that the <sullcrom-ny.com> Domain Name is registered with Eranet International Limited and that Respondent is the current registrant of the name. Eranet International Limited has verified that Respondent is bound by the Eranet International Limited 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 18, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 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@sullcrom-ny.com. Also on March 18, 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 April 8, 2025, 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:

 

Complainant owns the registered mark SULLCROM in, inter alia, the USA for legal services registered since 2010.

 

The Domain Name registered in 2025 is confusingly similar to the Complainant's SULLCROM trade mark using it in its entirety and only adding to it a hyphen, the descriptive abbreviation "ny" meaning New York where the Complainant is headquartered and the .com gTLD which do not prevent a finding of confusing similarity.

 

The Respondent is not commonly known by the Domain Name and has no right or legitimate interest in the Domain Name. Complainant has not authorised the Respondent to use the Complainant's SULLCROM mark for any purpose. The Domain Name is being passively held. The Domain Name registered in 2025 has been registered and used in opportunistic bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant owns the registered mark SULLCROM in, inter alia, the USA for legal services registered since 2010.

 

The Domain Name registered in 2025 is not being used.

 

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 in this Complaint combines the Complainant's SULLCROM mark (registered, inter alia, in the USA for legal services since 2010), the generic abbreviation "ny", a hyphen and the gTLD .com.

 

The addition of the generic abbreviation "ny" does not serve to distinguish the Domain Name from the Complainant's SULLCROM mark. See Abbott Laboratories v Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of generic terms do not adequately distinguish a disputed domain name from complainant's mark under Policy 4(a)(i)). 

 

The addition of a hyphen to a mark does not distinguish a disputed domain name from the mark incorporated in it per Policy 4(a)(i). See ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) ("Respondent's <workforce-now.com> domain name appropriates the dominant portion of Complainant's ADP WORKFORCE NOW mark and adds a hyphen and the gTLD ".com." These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.").

 

The gTLD .com does not serve to distinguish the Domain Name from the SULLCROM mark, which is the distinctive component of the Domain Name. 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 finds that the Domain Name is confusingly similar to a mark in which the Complainant has rights for the purpose of the Policy.

 

Rights or Legitimate Interests

The Complainant has not authorised the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 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 Name is being passively held. Not using a Domain Name for an active web site does not show a bona fide offering of goods or services or a legitimate non commercial fair use for the purposes of the Policy. See Wahl Clipper Corporation v. Theresa W Chavez, FA 1973154 (Forum Dec. 14, 2021) (When Respondent is not using a disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services.).

 

The Respondent has not answered this Complaint or rebutted the prima facie case evidenced by the Complainant herein.

 

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

 

Registration and Use in Bad Faith

The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from or exploit the trade mark of another. Passive holding of a domain name containing a prior mark with a reputation is commonly held to be bad faith. See Telstra Corporation Limited v Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). The Respondent has not responded to the Complaint and the Panel is entitled to make adverse inferences if a Respondent does not reply to a Complaint where there seems to be no explanation for the registration of the Domain Name other than it is taking advantage of a prior registered trade mark and is being passively held.

 

As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.

 

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 <sullcrom-ny.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Dawn Osborne, Panelist

Dated: April 8, 2025