Shearman & Sterling LLP v Privacy service provided by Withheld for Privacy

WIPO Case No. D2022-1650

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Shearman & Sterling LLP v. Privacy service provided by Withheld for Privacy
ehf / Jean Latour

Case No. D2022-1650

1. The Parties

The Complainant is Shearman & Sterling LLP, United States of America (“United States”), self-represented.

The Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Jean Latour, Germany.

2. The Domain Name and Registrar

The disputed domain name <shearman-sterling.com> (the “Domain Name”) is registered with NameCheap,

Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2022. On
May 6, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection
with the Domain Name. On May 6, 2022, the Registrar transmitted by email to the Center its verification
response disclosing registrant and contact information for the Domain Name, which differed from the named
Respondent and contact information in the Complaint. The Center sent an email communication to the
Complainant on May 9, 2022 providing the registrant and contact information disclosed by the Registrar, and
inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended

Complaint on May 10, 2022.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for
Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 11, 2022. In accordance with the Rules, paragraph 5, the due date for Response was May 31, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2022.

page 2

The Center appointed Ian Lowe as the sole panelist in this matter on June 20, 2022. The Panel finds that it
was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of

Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a significant and well-known global law firm that has been using the SHEARMAN & STERLING name and trademark since it was founded in New York City, United States in 1873. It represents leading corporations and financial institutions, as well as governments, state-owned enterprises and other companies in connection with high-profile legal matters.

The Complainant is the proprietor of a number of registered trademarks for the mark SHEARMAN & STERLING including United States trademark number 2536860 registered on February 5, 2002 and International Trademark number 1042381 registered on May 21, 2010.

The Domain Name was registered on October 21, 2021. It does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its SHEARMAN & STERLING trademark (the “Mark”), that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions

6. Discussion and Findings

For this Complaint to succeed in relation to the Domain Name, the Complainant must prove that:

(i)        the Domain Name 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.

A. Identical or Confusingly Similar

The Complainant has uncontested rights in the Mark, both by virtue of its trademark registrations and as a result of the goodwill and reputation acquired through its use of the Mark for almost 150 years. Ignoring the generic Top-Level Domain (“gTLD”) “.com”, the Domain Name is identical to the Mark, save only for the use of a hyphen in place of the Complainant’s ampersand. This minor difference does not of course detract from the confusing similarity between the Domain Name and the Mark. Accordingly, the Panel finds that the Domain Name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests

page 3

in respect of the Domain Name. The Respondent has not used the Domain Name in connection with a bona fide offering of goods or services, but has made no active use of the Domain Name. There is no suggestion that the Respondent has ever been known by the Domain Name. The Domain Name is essentially identical to the Mark, comprising the surnames of the two founders of the Complainant in 1873. In the circumstances, the Panel considers that the Domain Name could only be taken to refer to the Complainant and it is

impossible to conceive of any legitimate use of the Domain Name by the Respondent. The Respondent has
chosen not to respond formally to the Complaint or to take any steps to counter the prima facie case
established by the Complainant. In the circumstances, the Panel finds that the Respondent does not have

any rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

In light of the nature of the Domain Name, essentially identical to the Mark, the Panel is in no doubt that the
Respondent had the Complainant and its rights in the Mark in mind when it registered the Domain Name.

To the extent that the Respondent’s use of the Domain Name may be said to amount to non-use, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) points out at section 3.3 that panelists have consistently found that this does not prevent a finding of bad faith. Factors that panelists take into account, whilst looking at all the circumstances, include “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”

The Domain Name comprises the entirety of the Complainant’s distinctive, well-known SHEARMAN & STERLING mark; there has been no response to the Complaint; the Respondent concealed its identity using the Privacy Service Provided by Withheld for Privacy ehf, and the address for the Respondent disclosed by the Registrar is apparently the address of a Deutsche Post office in Berlin, Germany; as indicated above, it is impossible to conceive of any good faith use to which the Domain Name could be put.

Accordingly, the Panel considers that this amounts to paradigm bad faith registration and use for the purposes of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <shearman-sterling.com> be transferred to the Complainant.

/Ian Lowe/
Ian Lowe
Sole Panelist
Date: July 3, 2022