Same Respondent. Two different UDRP outcomes. — Same Complainant
On the surface, these cases appear identical. Were they?
A pair of recent UDRP decisions on nearly identical cases had two very different results.
The law firm Sullivan & Cromwell has filed eight cases with FORUM (aka National Arbitration Forum) this year to protect a shortened version of its domain, SullCrom. The firm uses sullcrom.com for its website.
Two cases decided this month show either a blunder in its filings or inconsistent application of the policy.
The firm filed cases against sullcrom-uk .com and sullcrom-ny .com. The same person owns both domains. You’d think that Sullivan & Cromwell filed nearly identical cases for both domains, neither of which is in use.
Yet two UDRP panelists returned different results, turning on one issue.
In the Sullcrom-UK decision, panelist Charles A. Kuechenmeister characterized Sullivan & Cromwell’s argument as the Respondent hadn’t made preparations or used the domain for a bona fide offering of goods or services. He determined that this wasn’t enough to determine that the registrant lacked rights or legitimate interests in the domain name:
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).
The transfer was denied.
In the Sullcrom-NY case, panelist Dawn Osborne stated that the Complaint stated the domain was not used for an active website. This resulted in a different outcome:
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.
The transfer was granted.
Both domains were registered on the same day. It would surprise me if one was in use and the other wasn’t just a few days later when the cases were filed.
FORUM doesn’t publish the full pleadings. All you can see are the panelists’ summation of the arguments. So it’s impossible to tell from public records if the firm made identical pleadings or tweaked the language.
Of the eight cases Sullivan & Cromwell filed this year, it has lost only one other. That case was against sullcromslawoffices .com, which is registered to someone in Colorado.
In that case, the domain wasn’t being used. On the issue of Rights or Legitimate Interests, panelist Debrett G. Lyons had no issue finding in the law firm’s favor. Still, non-use was an issue for Lyons when considering Registration and Use in Bad Faith. Lyons denied the transfer.
Compare this to the Sullcom-NY case, where Osborn wrote:
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.
That stated, in the sullcromlawoffices .com case, Lyons seemed to take issue with Sullivan & Cromwell’s allegation that it has used sullcrom as a trademark.
