The Complainant is Moelis & Company Group LP of New York City, New York, United States of America (“United States” or “US”), represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
The Respondent is Domain Manager, Moelis Australia Holdings Pty. Ltd. of Grandville, Michigan, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2017. On July 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 25, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 July 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 17, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2017.
The Center appointed Ellen B Shankman as the sole panelist in this matter on August 25, 2017. 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 date of the Domain Name registration was confirmed by the Registrar to be October 27, 2016.
The Panel also conducted an independent search to determine that the Domain Name resolves to a page with a “404” error message, and the website currently appears to be inactive.
The Complainant provided evidence of multiple registrations of its trademark MOELIS & COMPANY, including inter alia, European Union Trademark Registration. No.007459911, registered August 22, 2009, and United States Trademark Registration No. 4904063, registered February 23, 2016, in Classes 35 and 36 in association with banking and financial services.
The Complainant also provided evidence of sending a cease-and-desist letter before commencing the proceeding, to which the Respondent did not respond. The Respondent did not respond to this Complaint.
Since the Respondent did not respond to this Complaint, the facts regarding the use and fame of the Complainant’s mark, as well as the correspondence with and lack of response from the Respondent, are taken from the Complaint and are generally accepted as true in the circumstances of this case. 5. Parties’ Contentions A. Complainant
The Complainant alleges that is the owner and controller of all Intellectual Property rights in relation to the brand “Moelis & Company”, including but not limited to trademark protection. Founded in 2007 by Ken Moelis, the Complainant is a leading global independent investment bank that provides innovative strategic advice and solutions to a diverse client base, including corporations, governments and financial sponsors, providing advice their on critical decisions, including but not limited to mergers and acquisitions, recapitalizations and restructurings and other corporate finance matters. The Complainant employs over 650 employees who are based in 17 offices in North and South America, Europe, the Middle East, Asia and Australia. The Complainant also provided evidence of the incorporation of its subsidiary company in Australia – which the Complainant affirms is unconnected to the Respondent.
The Complainant uses its trademark, MOELIS & COMPANY as part of its company logo and has used the name to distinguish its services from other competing services for many years. The Complainant alleges that it has spent a substantial amount of time, money and effort in promoting, marketing, and using the Moelis & Company brand to identify and distinguish its services. Consequently, the trademark MOELIS & COMPANY is considered an extremely valuable asset to the Complainant. In addition to trademarks, the Complainant has developed a strong portfolio of domain names, many of which feature the MOELIS & COMPANY trademark. A non-exhaustive list of the Complainant’s domain names include, , , , , , , , and . Domain names, such as have been registered since the company’s incorporation and revert to the Complainant’s home website, which provides detailed information about the Complainant, its services and company news. Due to the reputation of this brand, the Complainant alleges that is listed as one of the first hits on many Google search engines when the term “moelis” is entered into the search field.
The Complainant alleges that the Respondent appropriated the Complainant’s MOELIS trademark in the Domain Name adding the geographic term “Australia”, which does not avoid confusing similarity, and which does not detract from the immediate association with the Complainant aroused in the public mind by the trademark in question. Indeed, since the legitimate authorized subsidiary company of the Complainant usually refers to the trademark together with the geographic location of the branches of the company, the Complainant contends that the Respondent’s use of the Domain Name first by directing to the Complainant’s own site without cooperation, and then later to an error page is not a legitimate use and is evidence of bad faith.
The Complainant also provided evidence of sending a cease-and-desist letter to which the Respondent did not respond. The Complainant argues that if the Respondent had any legitimate interest in the Domain Name he would have responded – and thus the ‘silence’ is further evidence of bad faith.
The Complainant also alleges that when it ran a “reverse WhoIs” search, the Complainant discovered the other domain names containing other financial brand domain names also registered to the Respondent, thus showing a pattern of bad faith. The Complainant argues that the Respondent in registering other financial brand domain names is evidence that the Respondent is aware of the brand strength in the Complainant’s trademark and is attempting to benefit from that association by registering the Domain Name.
Specifically, the Complainant submits that the Respondent has a “propensity to register domain names that correspond to other Australian company names in the financial services industry, including but not limited to Navstar Financial (), Frith Financial () and AR Financial Solutions Pty Ltd (). As such, the Respondent is targeting these companies using the generic Top-Level Domain “.com” extension in order to intercept unsuspecting Internet users, who bypass these infringing domain names and risk revealing personal information, which can be collated by the Respondent and used for further fraudulent activity, i.e., for the purpose of phishing. Such use constitutes a violation of the Policy under paragraph 4(b)(ii) and the Complainant reiterates that there is no plausible reason for the Respondent’s registration and use of other than to withhold the Domain Name from the rights holder, i.e., the Complainant.”
In addition to the make-up of the second level domain, the Complainant alleges that the Respondent is a “faux registrant”, i.e., a registrant who mimics a complainants’ name both in the second level domains as well as on the Whois database. From looking at the publically available WhoIs, the Respondent listed the registered owner of the domain name as the Complainant’s related company, Moelis Australia Holdings Pty. Ltd, which until recently, resolved to the Complainant’s website, ”www..au”. As such, the Respondent has taken deliberate steps to ensure that their identity cannot be determined.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the well-known trademark MOELIS & COMPANY in respect of a wide range of financial services. The Domain Name is confusingly similar to the trademark owned by the Complainant. The addition of the geographic term to the trademark does not prevent a finding of confusing similarity. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name that the Domain Name was registered and is being used in bad faith. Thus, the Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for MOELIS & COMPANY, and that the Domain Name is confusingly similar to the Complainant’s trademark MOELIS & COMPANY. Further, the Panel finds that the mere addition of the geographic term to the Domain Name does not change the overall impression of the designation as being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Yahoo! Inc. v. Y, Y, Y, Y and Benjamin Benhamou,WIPO Case No. D2001-1188. See also Dell Inc. v. Horoshiy, Inc.,WIPO Case No. D2004-0721 (accepting the complainant’s general submission that a domain name incorporating a mark in its entirety is confusingly similar to that mark despite the addition of other words).
The Panel finds that the addition of the geographic terms in the respective Domain Name does not prevent a finding of confusing similarity. This finding is consistent with numerous UDRP panels that have found that the addition of other descriptive and/or geographic terms does not prevent the finding of confusing similarity. See, e.g., Toyota Motor Sales, U.S.A. Inc., Gulf States Toyota, Inc. and Price Leblanc, Inc. d/b/a Price Leblanc Toyota v. Gulf South Limited,WIPO Case No. D2001-0698 (ordering transfer of and ). See also Pfizer Inc. v. Asia Ventures, Inc.,WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.”
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name. The Panel accepts the Complainant’s argument in this case that the Respondent was on actual notice of the Complainant’s claims, and chose not to respond to the Complaint. The Complainant’s prima facie case has not been rebutted.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Given the distinctiveness of the Complainant’s trademark and reputation, and given the evidence that the Respondent first diverted the Domain Name to the Complainant and now has an error message after removing the content, together with the evidence of the Respondent’s registration of other financial institution related domain names, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark together with the geographic term “Australia”for the purpose of misleading and diverting Internet traffic.
The Panel agrees with the Complainant that the Respondent was acting in bad faith as a ‘faux registrant’. Such deception has been found as a contributing factor of bad faith see e.g. Quixtar Investments, Inc. v. Scott A. Smithberger and QUIXTAR-IBO,WIPO Case No. D2000-0138.
The Panel also agrees with the Complainant’s argument that even though the Domain Name currently resolves to an inactive page, this not preclude a finding of registration and use in bad faith where: “…it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate” (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). On these facts, the Respondent has not expressed any reason for owning a Domain Name confusingly similar to the trademark MOELIS & COMPANY and registering the Domain Name as if it was one of the Complainant’s related companies. The fact that there was a prior intentional redirection of the Domain Name and where the content is now removed suggests that the Respondent is aware of the infringing nature of the Domain Name.
The Panel agrees with the Complainant’s argument that the prior intentional redirection of the Domain Name to the Complainant’s website is evidence of bad faith registration and use. Specifically, the Complainant is unable to control the domain name’s activity, which at any time, could re-direct Internet traffic to a website that is not that associated with the Complainant. See e.g., Myspace, Inc. v. Mari Gomez, WIPO Case. No. D2007-1231.
Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant’s mark, the prior redirection to the Complainant’s website, and the Domain Name resolving to an error page the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) 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 be transferred to the Complainant.
Ellen B Shankman
Sole Panelist
Date: August 28, 2017
Full & Egal Universal Law Academy