ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Moelis & Company v. Sophia, Sophia Case No. D2024-2851 1. The Parties Complainant is Moelis & Company, United States of America, represented by Soteria LLC, United States of America. Respondent is Sophia, Sophia, United States of America. 2. The Domain Names and Registrar The disputed domain names , and are registered with Alibaba.com Singapore E-Commerce Private Limited (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2024. On July 12, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 15, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on July 17, 2024 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on July 17, 2024. 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 Respondent of the Complaint, and the proceedings commenced on July 25, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2024. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 10, 2024.
page 2 The Center appointed Bradley A. Slutsky as the sole panelist in this matter on September 18, 2024. 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 Complainant is an investment bank that provides financial advisory services to corporations, governments, and financial sponsors. Complainant holds the following trademark registration: Mark Services Jurisdiction Reg. No. Reg. Date Disclaimer MOELIS & COMPANY Financial services, etc. United States of America 4,904,062 February 23 2016 (date of first use: July 15, 2007) Disclaims “& COMPANY” Complainant also maintains a website at “www.moelis.com”. The domain name was registered on April 27, 2000. The disputed domain names were registered on July 9, 2024, and lead to a form where the user can enter their email address (or phone number) and password, and is asked to “Log in” or “Register”. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names. Specifically, Complainant contends that it is known mainly as “Moelis”, that the disputed domain names are “identical” to Complainant’s domain name, and that the disputed domain names “are misleading and provide false impressions of the ‘Moelis’ brand name”. Complainant also contends that Respondent is neither affiliated with nor authorized by Complainant to register or use Complainant’s trademark, that Respondent is known as “Sophia, Sophia” and not by the disputed domain names, that there is no proof of preparation for a bona fide offering of goods or services, and that the disputed domain names harm Complainant by creating the false impression that the websites at the disputed domain names are associated with Complainant. Complainant also contends that its trademark is a coined trademark, and that the similarity between the disputed domain names and Complainant’s trademark “strongly suggests that the registrant is aware of Moelis and their brand elements, and [thus it] is highly unlikely that the registration of the disputed domain names were coincidental and therefore, should be considered as evidence of bad faith registration according to the Policy. It is impossible to conceive the disputed domain names were randomly chosen with no knowledge of the Moelis.” Finally, Complainant contends that the login pages on the websites at the disputed domain names use Complainant’s brand and image and will mislead users into believing that the websites are operated or authorized by Complainant. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Pursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
page 3 Under paragraph 4(a) of the Policy, Complainant must prove the following: (i) the disputed domain name[s are] identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name[s]; and (iii) the disputed domain name[s] ha[ve] been registered and [are] being used in bad faith. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between Complainant’s trademark and the disputed domain names. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7. Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the mark is reproduced within the disputed domain names. The disputed domain names consist of Complainant’s MOELIS mark (without the disclaimed “& COMPANY”), with the numbers “1”, “2”, or “3” appended, and the “.com” generic Top-Level Domain. Accordingly, the disputed domain names are confusingly similar to Complainant’s mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7 (“in cases where […] a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”); WIPO Overview, section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.”); WIPO Overview 3.0, section 1.11.1 (“[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.”). Accordingly, the Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in disputed domain names. “Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the domain name[s] for purposes of paragraph 4(a)(ii): (i) before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name[s] or a name corresponding to the [disputed] domain name[s] in connection with a bona fide offering of goods or services; or (ii) [Respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name[s], even if [Respondent has] acquired no trademark or service mark rights; or (iii) [Respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name[s], without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”. Policy, paragraph 4(c).”
page 4 Although the overall burden of proof in UDRP proceedings is on Complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of Respondent. As such, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain names (although the burden of proof always remains on Complainant). If Respondent fails to come forward with such relevant evidence, Complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain names. As Complainant contends, there is no evidence of use or demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. Rather, the disputed domain names are being used for pages that contain Complainant’s “brand and image” and ask users to “Log in” – potentially revealing users’ login credentials to Respondent. As noted in WIPO Overview, section 2.13, “Panels have categorically held that the use of a domain name for … phishing … can never confer rights or legitimate interests on a respondent.” As Complainant also contends, according to the WhoIs records for the disputed domain names Respondent is known as “Sophia, Sophia” – not by the disputed domain names. Finally, the fact that Respondent is neither affiliated with Complainant nor authorized by Complainant to use Complainant’s mark in the disputed domain names also indicates that Respondent’s use is not bona fide or legitimate. Moelis & Company v. Danel Mark, WIPO Case No. D2023-3459. Respondent has not rebutted Complainant’s prima facie showing as set forth above and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise. Accordingly, the Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Specifically, “the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that [Respondent has] registered or [Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name; or (ii) [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 [Respondent has] engaged in a pattern of such conduct; or (iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location or of a product or service on [Respondent’s] website or location.” Policy, paragraph 4(b). “Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise
page 5 engage in behavior detrimental to Complainant’s trademark would also satisfy Complainant’s burden.” WIPO Overview 3.0, section 3.1. In the present case, the Panel notes that Complainant’s trademark is not a dictionary term, and appears to be a coined or fanciful trademark. As such, and in light of Respondent’s use of Complainant’s brand and image on Respondent’s websites, it appears that Respondent intends for the disputed domain names to refer to Complainant, and to convey to users that the websites at the disputed domain names are affiliated with or approved by Complainant in some manner. “[I]t is well-established in prior UDRP decisions that where the respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may be, in certain circumstances, evidence of bad faith registration.” Moelis & Company v. DNS Admin, Buntai LTD, WIPO Case No. D2023-2749. Respondent also is using the disputed domain names for websites that request login information – thus exposing users’ login credentials to Respondent. “[G]iven that the use of a domain name for per se illegitimate activity such as … phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith.” WIPO Overview section 3.1.4; see also Moelis & Company v. Danel Mark, WIPO Case No. D2023-3459 (“the Panel agrees with Complainant’s supported allegation that Respondent’s disputed domain name has been used to host a website passing itself off as Complainant’s website which at best, engages in fraudulent financial advisory or investment management services transactions with consumers, and at worst is used to steal consumers’ personal or company information through a fraudulent phishing scheme. Respondent’s copycat website, by commingling ‘official’ content copied from Complainant’s Official MOELIS Website with Respondent’s substituted contact data and solicitation tools, Respondent is impersonating Complainant to divert Internet traffic from Complainant to Respondent for Respondent’s commercial gain. Such activities fall squarely within the explicit example of bad faith registration and use found in the Policy at paragraph 4(b)(iv).”); Moelis & Company Group LP v. Sandra Stein, WIPO Case No. D2018-1261 (“The phishing scam undertaken by Respondent [using the disputed domain name ] is manifestly a use of the Domain Name in bad faith”). Accordingly, the Panel finds that Complainant has established the third element 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 disputed domain names , and be transferred to Complainant. /Bradley A. Slutsky/ Bradley A. Slutsky Sole Panelist Date: October 2, 2024
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