Sullivan & Cromwell LLP v. Whitney Chatterjee / SULLA / SULCR / CROM / WELA / Sullivan & Cromwell
Claim Number: FA2208002009481
Complainant is Sullivan & Cromwell LLP (“Complainant”), represented by Stephen J. Elliott of Sullivan & Cromwell LLP, New York, USA. Respondent is Whitney Chatterjee / SULLA / SULCR / CROM / WELA / Sullivan & Cromwell (“Respondent”), Iowa, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sullivamcromwell.com>, <sulivamcromwell.com>, <sullivancromweil.com>, <sullivancromwellaw.com>, <sulivancromwellaw.com>, registered with 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.
Charles A. Kuechenmeister, Panelist.
Complainant submitted a Complaint to the Forum electronically on August 23, 2022; the Forum received payment on August 23, 2022.
On August 24, 2022, Google LLC confirmed by e-mail to the Forum that the <sullivamcromwell.com>, <sulivamcromwell.com>, <sullivancromweil.com>, <sullivancromwellaw.com>, and <sulivancromwellaw.com> domain names (the Domain Names) are registered with Google LLC and that Respondent is the current registrant of the names. Google LLC has verified that Respondent is bound by the Google 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 August 26, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of September 15, 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@sullivamcromwell.com, postmaster@sulivamcromwell.com, postmaster@sullivancromweil.com, postmaster@sullivancromwellaw.com, postmaster@sulivancromwellaw.com. Also on August 26, 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 27, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 DOMAIN NAMES AND RESPONDENTS
The Complaint names five persons as Respondents and relates to five Domain Names. Paragraph 3(c) of 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 alleges that all five Domain Names are effectively controlled by the same person or entity. The evidence demonstrates that the Domain Names were all registered between August 7 and August 22, 2022 (abstract of registration information shown in WHOIS reports, submitted as Complaint Annex B), the Doman Names are all registered with the same Registrar (Id.), the Domain Names were registered using the same privacy service by “Customer 7151571251” (Id.), the Domain Names are similar to each other, and four of the five Domain Names have been used in substantially identical ways to perpetrate a fraud by sending emails purportedly from Complainant to request payments from third parties (copies of emails submitted as Complaint Annex D). The information furnished to the Forum by the registrar lists (“Whitney Chatterjee” as the individual registrant for each of the Domain Names. The organization names listed as registrants for each of the Domain Names, and the addresses of the registrants, are all different, but based upon the many similarities first addressed above, the Panel has no difficulty finding that all five Domain Names are registered to the same person or entity or are under common control, and will proceed as to all of them. Caterpillar v. Arendt, FA1805001789701 (Forum July 2, 2018), (“The Panel finds that the domain names are under common control because the three domain names are constructed in the same manner, were registered on the same date with the same registrar, have been used in the same way, and use Cloudflare servers. Also, the registrant used the same privacy service for all three domain names. These elements are sufficient to find that the domain names were registered by the same domain name holder.”). References to “Respondent” in this Decision, while in the singular, refer to all named Respondents.
A. Complainant
Complainant is a law firm, with offices in the U.S., Europe, China and Japan. It has rights in the SULLIVAN & CROMWELL mark based upon its registration of that mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <sullivamcromwell.com>, <sulivamcromwell.com>, <sullivancromweil.com>, <sullivancromwellaw.com>, <sulivancromwellaw.com> Domain Names are confusingly similar to Complainant’s SULLIVAN & CROMWELL trademark in that they fully incorporate the mark with subtle misspellings and add the “.com” generic top-level domain. (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Names. It is not using the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead uses four of them for fraudulent emails to pass off as Complainant and passively holds the other, it is not commonly known by the Domain Names, and Complainant has not authorized it to use its mark.
Respondent registered and uses the Domain Names in bad faith. It is using four of them for fraudulent emails to impersonate Complainant and defraud people of their money and is passively holding the other, and it registered all of them with actual knowledge of Complainant and its mark.
B. Respondent
Respondent did not submit a Response in this proceeding.
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:
(1) 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
(2) the 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, 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (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 Panel finds as follows with respect to the matters at issue in this proceeding:
The SULLIVAN & CROMWELL mark was registered to Complainant with the USPTO (Reg. No. 2,195,205) on October 13, 1998 (USPTO registration certificate included in Complaint Annex. C). Complainant’s registration of its mark with the USPTO establishes its rights in that mark for the purposes of Policy ¶ 4(a)(i). BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)).
Respondent’s <sullivamcromwell.com>, <sulivamcromwell.com>, <sullivancromweil.com>, <sullivancromwellaw.com>, <sulivancromwellaw.com> Domain Names are confusingly similar to Complainant’s SULLIVAN & CROMWELL mark. They fully incorporate the mark, albeit with subtle misspellings, e.g., “sulivam” for “sullivan,” “cromweil” for “Cromwell,” omit the ampersand and spaces, and add the letters “aw“ to produce “sullivancromwellaw,” and the .com” gTLD. These changes do not distinguish the Domain Names from Complainant’s mark for the purposes Policy ¶ 4(a)(i)). Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“The [<morganstonley.com> and <morganstainley.com>] Domain Names are confusingly similar to Complainant’s marks, as they fully incorporate the MORGAN STANLEY mark, varying it only by subtle misspellings, omitting a space between the words, and adding the generic top-level domain (“gTLD”) ‘.com.’”), Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”), Russell & Bromley Limited v. KIM H. SUK, FA 1729773 (Forum June 12, 2017) (finding respondent’s <russellandbromley.com> domain name identical to complainant’s RUSSEL & BROMLEY mark, because “[t]he ampersand is a prohibited character in a domain name so there is no difference between the ampersand (in the mark) and the word ‘and’ (in the domain name)”), Home Depot Product Authority, LLC v. Angelo Kioussis, FA 1784554 (Forum June 4, 2018) (“The domain name contains the mark in its entirety, with only the addition of the generic letters ‘sb’ and the digits ‘2018,’ plus the generic Top Level Domain (“gTLD”) ‘.com.’ These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.”). 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 Names.
For the reasons set forth above, the Panel finds that the Domain Names are identical or confusingly similar to the SULLIVAN & CROMWELL mark, in which Complainant has substantial and demonstrated rights.
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’s 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;
(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 because (i) it is not using the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use but instead uses four of them for fraudulent emails to pass off as Complainant and passively holds the other, (ii) it is not commonly known by the Domain Names, and (iii) Complainant has not authorized it to use its mark. These allegations are addressed as follows:
Complaint Annex D consists of copies of emails from one “Whitney Chatterjee” at email addresses based upon each of the Domain Names except <sulivancromwellaw.com> to an unnamed addressee, requesting payment of a purported invoice: “I am a Lawyer from Sullivan & Cromwell LLP representing a client, chasing an unpaid invoice issued to your company. I have been advise [sic] to contact you on this matter and hoping you can get this settled as soon as possible Kind Regards, Whitney Chatterjee Debt Collection Litigation Counsel.” Complainant states that the title appearing for Ms. Chatterjee in the emails is false, as is the purported invoice. The emails do not contain any instructions on how the addressee should pay the invoice, e.g., send payments to Respondent’s bank account, as is typical in these kinds of cases, but these emails are clearly attempts to impersonate Complainant, and it may be inferred that the Respondent would likely attempt at some point to ask for payment to be sent to it. Using a domain name to gain commercially through a fraudulent email scam is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“Passing off as a complainant through e-mails is evidence that a respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) & (iii).”), Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”), 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).
Complaint Annex E is a screenshot of the website resolving from the <sulivancromwellaw.com> Domain Name. It is a parking page which states that “This site can’t be reached.” This is not an active use of the Domain Name. As such it is neither a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii). Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ ’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”), 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name).
The information furnished to the Forum by the registrar lists “Whitney Chatterjee” as the individual registrant and various acronyms, e.g., SULLA, SULCR, CROM, and WELA, as the organization registrant of all of the Domain Names except <sulivancromwellaw.com>; for this Domain Name the registrar lists “Sullivan & Cromwell” as the organization registrant. The first of these names, Whitney Chatterjee, bears no resemblance to the Domain Names. Neither does any of the four acronyms listed above. 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, and in cases where no Response has been filed 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 names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (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 neither Respondent Whitney Chatterjee nor any of the four organizations named by acronyms has been commonly known by the Domain Names.
The organization name associated with the <sulivancromwellaw.com> Domain Name, Sullivan & Cromwell, is almost identical to that Domain Name. This is not conclusive, however, because as discussed above Respondent is not authorized to use Complainant’s mark, or a typosquatted version of it, and the evidence before the Panel gives no indication that Respondent used the “Sullivan & Cromwell” name for any purpose other than to register that Domain Name. Registering a domain name in a name that is similar or identical to the domain name is not, by itself, sufficient to demonstrate that the respondent “has been commonly known by” it for the purposes of Policy ¶ 4(c)(ii). There must be some evidence, independent of the registration, that the respondent used the name in a business or some other undertaking, or that persons have by other means come to associate the respondent with that name. If a person could acquire rights or legitimate interests in a domain name under Policy ¶ 4(c)(ii) by the simple expedient of registering it in a similar or identical name, Policy ¶ 4(c)(ii) would be completely nullified. Augusta National, Inc. v. Ryan Carey, FA1758547 (Forum Dec. 21, 2017) (“If a respondent could acquire rights and legitimate interests in a domain name through Policy ¶ 4(c)(ii) by the simple expedient of incorporating the complainant’s mark into the name of his business entity, the intent and purpose of the Policy would be completely frustrated.”), Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). On the evidence before the Panel, it is clear that Respondent has not been commonly known by the <sulivancromwellaw.com> Domain Name for the purposes of Policy ¶ 4(c)(ii).
Complainant states that it has never authorized or permitted Respondent to use its mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. 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 names 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.”).
Finally, although Complainant does not assert the argument, by registering the Domain Names with subtle misspellings of Complainant’s mark, Respondent is guilty of typosquatting, which is the intentional misspelling of a protected trademark to take advantage of typing errors made by Internet users seeking the web sites of the owners of the mark. Registering a typosquatted domain name has been held to evidence a lack of rights or legitimate interests in the domain name for the purposes of Policy ¶ 4(a)(ii). Chegg Inc. v. yang qijin, FA1503001610050 (Forum Apr. 23, 2015) (“Users might mistakenly reach Respondent’s resolving website by misspelling Complainant’s mark. Taking advantage of Internet users’ typographical errors, known as typosquatting, demonstrates a respondent’s lack of rights or legitimate interests under Policy ¶ 4(a)(ii).”).
The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
Policy ¶ 4(b) sets forth a nonexclusive list of four circumstances, any one of which if proven would be evidence of bad faith use and registration of a domain name. They are as follows:
(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 which 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 the 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, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site 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 web site or location or of a product of service on the respondent‘s web site or location.
Complainant alleges that Respondent’s conduct fits within Policy ¶ 4(b(iv), but there is no evidence that Respondent is attempting for commercial gain to attract Internet traffic to a website or any other location by using these confusingly similar Domain Names. Indeed, only one of the Domain Names, <sulivancromwellaw.com>, is shown to resolve to any web site, and that is only a parking page. Respondent’s conduct does not fit within the circumstances described in Policy ¶ 4(b(iv).
That said, using a domain name to resolve to an inactive website (or no website at all) is evidence of bad faith registration and use, in and of itself. This does not fit within any of the circumstances described in Policy ¶ 4(b) but that paragraph recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and passively holding the <sulivancromwellaw.com> Domain Name is evidence of bad faith as to that name. Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”).
The most serious aspect of Respondent’s conduct, of course, is its use of the four other Domain Names for email accounts which are used to impersonate Complainant and to perpetrate fraud. This is patently unlawful and wrongfully disrupts Complainant’s business. It demonstrates bad faith in and of itself, independently of Policy ¶ 4(b). Red Wing Shoe Company, Inc. v. wei zhang / Magdalena Jennifer / Mu Yan / Carolina Rodrigues / Fundacion Comercio Electronico, FA1911001873163 (Forum Jan. 3, 2020).
Next, as discussed above, by registering the Domain Names with subtle misspellings of Complainant’s mark, Respondent is guilty of typosquatting. Again, this does not fit precisely within any of the circumstances listed in Policy ¶ 4(b) but that list is non-exclusive, allowing for consideration of additional factors in an analysis for bad faith, and registering a typosquatted domain name has been held to be bad faith for the purposes of Policy ¶ 4(a)(iii). Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (finding the respondent engaged in typosquatting—and thus registered and used the at-issue domain names in bad faith—where the names consisted of the complainant’s mark with small typographical errors introduced therein).
Finally, it is evident that Respondent had actual knowledge of Complainant and its mark when it registered the Domain Names in August 2022 (abstract of WHOIS reports submitted as Complaint Annex B shows the creation dates). Complainant had been using its SULLIVAN & CROMWELL mark for more than 140 years by then (USPTO registration certificates included in Complaint Annex C show first use in 1879). Respondent copied that mark with subtle misspellings into the Domain Names and impersonated Complainant in emails. In light of the non-exclusive nature of Policy, ¶ 4(b) registering a confusingly similar domain name with actual knowledge of a complainant’s rights in the incorporated mark has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name), Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”).
For the reasons first set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sullivamcromwell.com>, <sulivamcromwell.com>, <sullivancromweil.com>, <sullivancromwellaw.com>, and <sulivancromwellaw.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
September 29, 2022
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