DECISION

 

Sullivan & Cromwell LLP v. Mario Messina

Claim Number: FA2503002144071

 

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-uk.com>, registered with Eranet International Limited.

 

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.

 

Charles A. Kuechenmeister, 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-uk.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-uk.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 Charles A. Kuechenmeister 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 a Response or any other submittal from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a law firm. It has rights in the SULLCROM mark based upon its registration of that mark with the United States Patent and Trademark Office ("USPTO").  Respondent's <sullcrom-uk.com> domain name is confusingly similar to Complainant's SULLCROM trademark in that it fully incorporates the mark, merely adding a hyphen, the "uk" abbreviation for United Kingdom which increases confusion, and the ".com" generic top-level domain. ("gTLD").

 

Respondent has no rights or legitimate interests in the domain name. There is no evidence that it is using or has made any preparations to use the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use, it is not commonly known by the domain name, and Complainant has not licensed or authorized it to use its mark.

 

Respondent registered and uses the domain name in bad faith. It registered and is using the confusingly similar domain name while itself having no connection with Complainant.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:

 

(i)                      the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii)                      the respondent has no rights or legitimate interests in respect of the domain name; and

(iii)                      the domain name has been registered and is being used in bad faith.

 

In view of Respondent's failure to submit a Response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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"), WIPO Overview 3.0, at ¶ 4.3 ("In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent's default—a complainant has failed to prove its case."). The WIPO Overview is not a definitive statement of applicable law which governs any particular issue, but it does express a consensus among a significant number of UDRP panelists as to how particular issues typically are and should be resolved. The Panel accepts that consensus on this and other issues addressed later in this Decision. 

 

The Panel finds as follows with respect to the matters at issue in this proceeding:

 

Identical and/or Confusingly Similar

The SULLCROM mark was registered to Complainant with the USPTO (3,837,867) on August 24, 2010 (USPTO registration certificate included in Complaint Exhibit 2). Complainant's registration of its mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) ("Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.").

 

Respondent's <sullcrom-uk.com> domain name is identical or confusingly similar to the SULLCROM mark. It fully incorporates that mark, merely adding a hyphen, the common "uk" abbreviation for United Kingdom and the ".com" gTLD. These changes do not distinguish the domain name from Complainant's mark for the purposes of Policy ¶ 4(a)(i). Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs."); ULIONA LIMITED v. Ettouil Oualid / Apk4play, FA 1983297 (Forum May 15, 2022) ("Respondent's domain name is confusingly similar to Complainant's SAVEFROM mark. It incorporates the entire mark, merely inserting a hyphen between the words "save" and "from," and adding the ".net" gTLD.  These changes do not distinguish the Domain Name from Complainant's mark for the purposes of Policy ¶ 4(a)(i)."); Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255, (Forum May 4, 2015) ("The addition of 'US' or 'USA' does not alter the underlying mark held by the complainant. . . . The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds."). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity "typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name."  Notwithstanding the changes described above, Complainant's mark is clearly recognizable within the domain name.

 

Further, the addition of descriptive terms that relate to a complainant can actually enhance confusion. That is the case with the domain name involved here. The "uk" abbreviation for United Kingdom suggests that the resolving website would be a Complainant site oriented toward its services in that country, where, according to the Complaint, its second largest office is located. Adding it to Complainant's mark in the domain name enhances the confusing similarity. Avaya, Inc., Ibid. ("Prior UDRP panels have found consistently that the addition of a geographic term of this sort, when added to a domain name that is otherwise identical to the mark at issue, creates a confusing similarity. The reason why this is so is that it gives the impression to the internet user that it relates to the activities of Complainant in the geographic region specified and that the domain name will lead to a website dealing with the same subject.").

 

For the reasons set forth above, the Panel finds that the domain name is identical or confusingly similar to the SULLCROM mark, in which Complainant has substantial and demonstrated rights.

 

Rights or Legitimate Interests/Registration and Use in Bad Faith

If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests."). If a respondent fails to come forward with such evidence, the complainant's prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.

 

Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent's rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):

 

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

(iii)                      the respondent is 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 asserts that Respondent has no rights or legitimate interests in the domain name because (i) there is no evidence that it is using or has made any preparations to use the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use, (ii) it is not commonly known by the domain name, and (iii) Complainant has not licensed or authorized it to use its mark.  These allegations are addressed as follows:

 

The WHOIS information provided to Forum by the registrar lists the named Respondent as the registrant of the domain name. This name bears no resemblance to the domain name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed Domain Name when the identifying information provided by WHOIS was unrelated to the Domain Name or respondent's use of the same), 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 Panel is satisfied that Respondent has not been commonly known by the domain name for the purposes of Policy ¶ 4(c)(ii).

 

Complainant alleges that it has not licensed or authorized Respondent to use its mark. Complainant has specific competence to make this allegation and it is not disputed. In the absence of evidence that a respondent is authorized to use a complainant's mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register Domain Name featuring the complainant's mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) ("Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.").

 

Both of the above factors contribute to a prima facie case of no rights or legitimate interests. In order to meet its initial burden under Policy ¶ 4(a)(ii), however, a Complainant must present evidence on all three of the factors listed in Policy ¶ 4(c), including Policy ¶¶ 4(c)(i) and (iii).

 

Complainant alleges that there is no evidence that Respondent has used or made any preparations to use the domain name in connection with a bona fide offering of goods or services or is making a legitimate noncommercial or fair use of it. That is the full extent of Complainant's offering with respect to these two factors. There is no evidence or even an unsupported description of the uses Respondent is making of the domain name.  Without evidence of what a respondent is doing with a domain name it is not possible determine the presence or absence of a bona fide or legitimate use. Complainant has utterly failed to make a prima facie case with respect to the circumstances described in Policy ¶ 4(c)(i) and (iii).

 

Complainant has the burden of proof on the Policy ¶ 4(a)(ii) element as well as the other two. It has failed to meet that burden, and this is fatal to its case.

 

Registration or Use in Bad Faith

As Complainant has failed to satisfy the requirements of Policy ¶ 4(a)(ii), the Panel may decline to analyze the third element of the Policy.  Netsertive, Inc. v. Ryan Howard / Howard Technologies, Ltd., FA 1721637 (Forum Apr. 17, 2017) (finding that because the complainant must prove all three elements under the Policy, the complainant's failure to prove one of the elements makes further inquiry into the remaining element unnecessary), Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent's rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)). The Panel elects to adopt this approach and does not analyze the registration and use in bad faith elements.

 

DECISION

Complainant having failed to establish all three elements required under the Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <sullcrom-uk.com> domain name REMAIN WITH RESPONDENT.

 

 

 

Charles A. Kuechenmeister, Panelist

April 9, 2025