Sullivan & Cromwell LLP v. Adam Bath / New Ventures Services, Corp / Whitney Chatterjee / VANCROM / SULLIV / CROM / SULLIVA / CROMWELL / SULLI / WELLSULL
Claim Number: FA2208002007575
Complainant is Sullivan & Cromwell LLP (“Complainant”), represented by Stephen J. Elliott of Sullivan & Cromwell LLP, New York, USA. Respondent is Adam Bath / New Ventures Services, Corp / Whitney Chatterjee / VANCROM / SULLIV / CROM / SULLIVA / CROMWELL / SULLI / WELLSULL (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sullivcrom.com>, <sullivancromllp.com>, <sulivancronwell.com>, <sullvancromwell.com>, <sulliuancromwell.com>, <sulivancromwell.com>, <sullivancrowell.com>, <sullivacromwell.com>, <sullivcromwell.com> and <suilivancromwell.com> (collectively “Domain Names”), registered with NameCheap, Inc., Network Solutions, LLC, and Google LLC.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 8, 2022; the Forum received payment on August 8, 2022.
Between August 9 and August 11, 2022 NameCheap, Inc., Network Solutions, LLC and Google LLC confirmed by e-mail to the Forum that the <sullivcrom.com>, <sullivancromllp.com>, <sulivancronwell.com>, <sullvancromwell.com>, <sulliuancromwell.com>, <sulivancromwell.com>, <sullivancrowell.com>, <sullivacromwell.com>, <sullivcromwell.com> and <suilivancromwell.com> domain names are registered with them and that Respondent is the current registrant of the names. Each of the Registrars has verified that Respondent is bound by their 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 August 17, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 2022 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@sullivcrom.com, postmaster@sullivancromllp.com, postmaster@sulivancronwell.com, postmaster@sullvancromwell.com, postmaster@sulliuancromwell.com, postmaster@sulivancromwell.com, postmaster@sullivancrowell.com, postmaster@sullivacromwell.com, postmaster@sullivcromwell.com, and postmaster@suilivancromwell.com. Also on August 17, 2022, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On September 13, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
In the instant proceedings, Complainant has alleged that the entities which control the Domain Names are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant has provided detailed evidence of the connections between each of the Domain Names and in particular that: 1) the Domain Names were registered within a 2 month period in 2022 2) Eight of the 10 Domain Names were registered with the same registrar, Google LLC 3) Eight of the 10 Domain Names were registered using the same privacy service 4) each of the Domain Names are variants of Complainant’s SULLCROM or SULLIVAN & CROMWELL marks 5) nine of the 10 Domain Names have been used in a substantially identical manner to send phishing e-mails purportedly from the Complainant. This evidence, in the Panel’s opinion, strongly suggests that the Domain Names are owned/controlled by a single Respondent; were the named Respondents unrelated, it would be unlikely that multiple unconnected entities would register very similar domain names with (in most cases) the same registrar and privacy service within a 2-month period and, with respect of 9 of the Domain Names, use them for an almost identical (and illegal) purpose.
In light of these contentions, which none of the identified Respondents deny, the Panel concludes that, on the balance of probabilities, the Domain Names are commonly owned/controlled by a single Respondent who is using multiple aliases. Hereafter the single Respondent will be referred to as “Respondent” for this Decision.
A. Complainant
Complainant is a well-known American law firm, providing a variety of legal services and products. Complainant asserts rights in the SULLCROM and SULLIVAN & CROMWELL marks through registration of the marks with multiple trademark agencies around the world, including the United States Patent and Trademark Office (USPTO) (e.g., Reg. No. 4,407,300, registered on September 24, 2013 and Reg. No. 2,195,205, registered on October 13, 1998). The Domain Names are confusingly similar to Complainant’s marks as they incorporate one or other of the marks in their entirety, adding or removing a letter, adding a generic term, or changing punctuation, as well as adding a generic top-level domain (gTLD).
Respondent lacks rights or legitimate interests in the Domain Names. Complainant has not authorized or licensed Respondent to use the SULLCROM or SULLIVAN & CROMWELL mark, nor is Respondent commonly known by the Domain Names. Further, Respondent is not using the Domain Names in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use. The Domain Names resolve to inactive webpages and Respondent uses e-mail addresses associated with the Domain Names to pass off as Complainant in furtherance of a phishing scheme.
Respondent registered and uses the Domain Names in bad faith. Respondent uses the Domain Name to pass off as Complainant via email by impersonating partners of the Complainant. Similarly, Respondent had actual notice of Complainant’s rights in Complainant’s marks, evidenced by the use of the Domain Names to pass off as Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the SULLCROM and SULLIVAN & CROMWELL marks. Each of the Domain Names is confusingly similar to one of Complainant’s SULLCROM and SULLIVAN & CROMWELL marks. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Names and that Respondent registered and has used the Domain Names in bad faith.
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. 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”).
Complainant has rights in the SULLCROM and SULLIVAN & CROMWELL marks under Policy ¶ 4(a)(i) through its registration of the marks with the USPTO (e.g., Reg No. 4,407,300, registered on September 24, 2013 for the SULLCROM mark and Reg. No. 2,195,205, registered on October 13, 1998 for the SULLIVAN & CROMWELL mark). Registration of a mark with a trademark agency such as the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
The Panel finds that each of the Domain Names is confusingly similar to one of the Complainant’s SULLCROM and SULLIVAN & CROMWELL marks as they each consist of minor variations of one of the marks, either adding or removing letters, adding the generic abbreviation “llp”, removing the ampersand, as well as appending the “.com” gTLD. Such changes are insufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i) analysis. See Morgan Stanley v. Domain Admin / Whois Privacy Corp., FA 1783121 (Forum June 1, 2018) (“Respondent’s <morganstanle.com> domain name is confusingly similar to Complainant’s MORGAN STANLEY mark as it wholly incorporates the mark, but for the omission of the letter ‘y’ and spacing within the mark, and appends the ‘.com’ gTLD.”); see Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”); see Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (finding top-level domains are irrelevant for purposes of Policy ¶ 4(a)(i) analysis).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Names. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names as Respondent is not commonly known by the Domain Names, nor has Complainant authorized Respondent to use the SULLCROM and SULLIVAN & CROMWELL marks. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name).
The WHOIS lists “Adam Bath / New Ventures Services, Corp / Whitney Chatterjee / VANCROM / SULLIV / CROM / SULLIVA / CROMWELL / SULLI / WELLSULL” as registrants of record. While certain entities listed in the WHOIS bear some resemblance to the Domain Names, there is no affirmative evidence that the Respondent is actually commonly known under these names as opposed to simply registering the Domain Name under a fake name for the purpose of asserting rights or legitimate interests. Even if a respondent appears from the WHOIS record to be known by the domain name, without additional affirmative evidence, it can be concluded that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”); see also Hewlett-Packard Co. v. HP Supplies, FA 282387 (Forum July 22, 2004) (“The Panel finds, because of the prominence of the HP mark, that Respondent’s registration under the ‘HP Supplies’ name does not establish that Respondent is commonly known by the <hpsupplies.com> domain name.”). Given the lack of evidence that the Respondent is actually known under a name corresponding to the Domain Names, and Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Names in accordance with Policy ¶ 4(c)(ii).
The Domain Names are presently inactive which by itself does not show a bona fide offering of goods and services. Complainant alleges, and provides evidence supporting its allegations, that Respondent has used a number of email addresses associated with nine of the 10 Domain Names (the 10th being most likely held pending similar use) to pass itself off as Complainant (indeed named partners of the Complainant) in furtherance of various phishing scams including through e-mails demanding payment of fictitious invoices. Use of a disputed domain name to pass off as a complainant through emails is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also Caterpillar Inc. v. ruth weinstein, FA 1770352 (Forum Mar. 7, 2018) (“Use of a disputed domain name in an attempt to pass itself off as a complainant and to conduct a phishing scheme is indicative of a failure to use said domain name in connection with a bona fide offer of goods and services per Policy ¶ 4(c)(i) or a legitimate noncommercial or otherwise fair use per Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that, at the time Respondent registered the Domain Names, between June 1, 2022 and July 31, 2022, Respondent had actual knowledge of Complainant’s SULLCROM or SULLIVAN & CROMWELL marks. Respondent has used the Domain Names to create e-mail addresses to pass itself off as Complainant (indeed named partners of the Complainant) for financial gain. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Names in bad faith as Respondent uses email addresses associated with nine of the 10 Domain Names (the 10th likely being held pending similar use) to attempt to impersonate named partners of the Complainant for financial gain. Using a disputed domain name to pass off as an employee of a complainant via email can demonstrate bad faith under Policy ¶¶ 4(b) (iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Accordingly, the Panel finds that Respondent registered and uses the Domain Names in bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sullivcrom.com>, <sullivancromllp.com>, <sulivancronwell.com>, <sullvancromwell.com>, <sulliuancromwell.com>, <sulivancromwell.com>, <sullivancrowell.com>, <sullivacromwell.com>, <sullivcromwell.com> and <suilivancromwell.com> domain names be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: September 14, 2022
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