Shearman & Sterling LLP v Redacted for Privacy, Privacy Service Provided

WIPO Case No. D2022-1647

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Shearman & Sterling LLP v. Redacted for Privacy, Privacy Service Provided
by Withheld for Privacy ehf / marc abruty

Case No. D2022-1647

1. The Parties

The Complainant is Shearman & Sterling LLP, United States of America, internally represented.

The Respondent is Redacted for Privacy, Privacy Service Provided by Withheld for Privacy ehf, Iceland / marc abruty, France.

2. The Domain Name and Registrar

The disputed domain name<shaerman-sterling.com> 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 disputed domain name. On May 6, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed 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 16, 2022. In accordance with the Rules, paragraph 5, the due date for Response was June 5, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2022.

The Center appointed Nayiri Boghossian as the sole panelist in this matter on June 13, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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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 leading law firm operating under the name SHEARMAN & STERLING, which
represents the names of its founders. The Complainant owns trademark registrations for SHEARMAN &

STERLING such as:

- United States registration No. 2536860 registered on February 5, 2002, first used in commerce in 1873.

The Complainant has registered in 1995 the domain name <shearman.com>, which is its official website for offering its services.

The disputed domain name was registered on November 21, 2021 and directs to a website containing

Pay-Per-Click (“PPC”) links.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to a trademark or service
mark in which the Complainant has rights. The disputed domain incorporates a dominant feature of the
Complainant’s trademark “Sterling” and a misspelling of the name “Shearman” and replaced “&” with “-“.
Thus, the disputed domain name looks and sounds nearly identical to the Complainant’s trademark.
This is an act of typosquatting.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. There is no evidence of demonstrated use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services as it directs to a blank webpage. There is no evidence of conceivable legitimate commercial use.

The Complainant contends that the disputed domain name is registered and is being used in bad faith. The name has been made in order to attract Internet users who are looking for the Complainant’s domain name. As the domain name resolves to a blank page, there’s a potential for it to be used for fraudulent and harmful purposes. A further evidence on bad faith under the circumstances is the use of privacy services.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns trademark registrations for SHEARMAN & STERLING. The Panel is satisfied that the Complainant has established its ownership of the trademark SHEARMAN & STERLING.

The disputed domain name incorporates the two words forming the Complainant’s trademark by incorporating “SHEARMAN” with a typo through reversing the positions of the letters “e” and “a” and by incorporating the word “STERLING” in its entirety. The sign “&” is replaced with the sign “-”. This is a typical

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(Redbox Automated Retail, LLC d/b/a Redbox v. Milen Radumilo

case of typosquatting , WIPO Case No. similarity as it is viewed as a standard registration requirement.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the

Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of production shifts to the respondent. In the instant case, the Complainant

contends that the Respondent has no rights or legitimate interests in the disputed domain name and that
there is no evidence of demonstrated use or demonstrable preparations to use the disputed domain name in
connection with a bona fide offering of gods or services. The Complainant has established a prima facie
case and the burden of production shifts to the Respondent to show that it has rights or legitimate interests.

The Respondent has not provided any evidence to show that it has any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Typosquatting may be an indication of bad faith (ESPN, Inc v. XC2, WIPO Case No. D2005-0444). In the present case, it indicates that the Respondent was aware of the Complainant’s trademark and has only reversed the positioning of two letters and replaced “&” with “-” in order to confuse Internet users and to benefit from typos. Furthermore, the disputed domain name resolves to a PPC page and such use in the circumstances of this case constitutes bad faith. In Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258 the panel found that “While the intention to earn click-through-revenue is not in itself illegitimate, the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use.” The use of a privacy shield service is under the circumstances a further indication affirming the Panel’s finding of bad faith.

Such conduct of using a domain name, to attract Internet users for commercial gain, would fall squarely of the Policy.

within the meaning of paragraph 4(b)(iv) of the Policy. Given the above, the Panel believes that the
Respondent has registered the disputed domain name in order to trade off the reputation of the
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 disputed domain name <shaerman-sterling.com> be transferred to the Complainant.

/Nayiri Boghossian/
Nayiri Boghossian
Sole Panelist
Date: June 16, 2022