WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Moelis & Company Group LP v. Vietnam Domain Privacy Services / Pham Dinh Nhut

Case No. D2016-2554

1. The Parties

The Complainant is Moelis & Company Group LP of New York City, New York, United States of America ("United States"), represented by SafeNames Ltd, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").

The Respondent is Vietnam Domain Privacy Services / Pham Dinh Nhut of Ho Chi Minh City, Viet Nam, self-represented.

2. The Domain Name and Registrar

The disputed domain name <moelisib.com> is registered with April Sea Information Technology Corporation (the "Registrar").

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the "Center") on December 16, 2016. On December 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 2016, 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 January 5, 2017 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 January 9, 2017.

Pursuant to the Complaint submitted in English and the registrar verification dated December 21, 2016 stating that Vietnamese is the language of the registration agreement of the disputed domain name, on January 5, 2017, the Center sent a request in English and Vietnamese that the Parties submit their comments on the language of the proceeding. On January 6, 2017, the Complainant submitted its request for English to be the language of the proceeding. On January 9, 2017, the Respondent submitted its request in English for Vietnamese to be the language of the proceeding.

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 January 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 7, 2017. The Respondent did not submit any formal response. Accordingly, the Center informed the Parties that it would proceed to appoint the Administrative Panel on February 8, 2017.

The Center appointed Alexandre Nappey as the sole panelist in this matter on February 10, 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 Complainant is Moelis & Company Group LP which is a leading global independent investment bank. It was founded in 2007 by Mr. Ken Moelis, who is an established "veteran" banker with 30 years of investment banking experience and prior experience as President of UBS Investment Bank.

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 is the owner of following trademark registrations including or incorporating the word "Moelis":

- Swiss national trademark registration no. 585055 for MOELIS & COMPANY, registered since April 2, 2009 for services in classes 35 and 36;

- Norwegian national trademark registration no. 250545 for MOELIS & COMPANY, registered since April 14, 2009 for services in classes 35 and 36;

- United Kingdom national trademark registration no. UK00002503105 for MOELIS & COMPANY, registered since May 8, 2009 for services in classes 35 and 36;

- United Kingdom national trademark registration no. UK00002503118 for MOELIS & COMPANY, registered since May 15, 2009 for services in classes 35 and 36.

The disputed domain name <moelisib.com> was registered by the Respondent on May 21, 2009.

It resolves to a parking page displaying sponsored links in connection with the Complainant's business.

5. Parties' Contentions

A. Complainant

(1) The Complainant first alleges that the disputed domain name <moelisib.com> is similar to its earlier trademark MOELIS & COMPANY, to the point of creating confusion.

The disputed domain name incorporates the distinctive "Moelis" word from the Complainant's trademark, together with the letters "ib".

Although the disputed domain name is not identical to the trademark MOELIS & COMPANY, the Complainant argues that it is confusingly similar as the addition of the letters "ib" is likely to correspond to "investment banking".

(2) Secondly, the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Complainant maintains its legal right to <moelisib.com>, based on the statutory protection in and to the "Moelis" element of the Complainant's trademark.

The Complainant also relies on the goodwill that has been associated with the Moelis brand for several years.

To date, MOELIS is solely associated with the Complainant's services on search engines, such as Google.

The Complainant alleges that the Respondent chose not to respond to either of its notices: the fact that the Respondent was given the chance to defend its case and chose not to, is an indication that it lacks any rights or legitimate interest in the disputed domain name <moelisib.com>.

The Respondent has not put forward any evidence to suggest that it is or has been known as "Moelis" at any point in time.

The Complainant submits that the disputed domain name is not being used for a legitimate noncommercial or fair use purpose: indeed, the disputed domain name resolves to a pay-per-click ("PPC") landing page that offers links to competing banking and/or investment services, which the Respondent is likely to unfairly benefit from by way of referral fees.

(3) Finally, the Complainant claims that the disputed domain name was registered and is being used in bad faith.

The Complainant submits that it is the sole operator of the Moelis brand and was established before the Respondent registered the disputed domain name <moelisib.com>.

The Complainant has successfully promoted its brand online and has been the first result on many popular search engines for many years: a simple Google search would have revealed the Complainant's Moelis brand at the time of the disputed domain name's registration.

The Complainant further alleges that the use of the letters "ib" at the end of the word "moelis" in the disputed domain name is also evidence of bad faith registration, as the Respondent has clearly chosen to combine the distinctive element "moelis" of the Complainant's earlier trademark with one of the Complainant's services: "investment banking" (which is commonly abbreviated as "ib").

The Complainant submits that many of the PPC links used on the "www.moelisib.com" website link to other websites, which offer competing services to the Complainant.

As the word "moelis" is widely recognized within the financial services industry and is not a generic or commonly used word, it is clear that the PPC links have been set up in order to take unfair advantage of the established Moelis brand, by directing users to other competing services.

In addition to the above, the Complainant requests that the Panel takes into account the Respondent's previous cybersquatting activity. Indeed, the Respondent has been involved in a total of 46 other UDRP disputes, the majority of which have resulted in the domain name being transferred over to the respective Complainant.

B. Respondent

With the exception of a request from the Respondent that Vietnamese be the language of the proceeding, the Respondent did not reply to the Complainant's contentions or otherwise communicate with the Center.

6. Discussion and Findings

6.1. Language of the Proceeding

The Panel notes that the registration agreement for the disputed domain name is in Vietnamese. Ordinarily, in accordance with the Rules, the language of the proceeding is the language of the registration agreement. Under paragraph 11(a) of the Rules, however, the Panel has the discretion to determine otherwise, having regard to the circumstances of the administrative proceeding. Despite having received notice of the Complaint in both English and Vietnamese, the Respondent has not filed any substantive response to the contentions of the Complainant. In light of the Respondent's default, the Panel considers that any order that the Complaint be translated into Vietnamese would only have the effect of unduly delaying the present proceedings. Accordingly, the Panel accepts the Complaint as filed in English and has rendered its decision in English.

6.2. Substantive Issues

Notwithstanding the lack of a formal response from the Respondent, it remains up to the Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

However, under paragraph 14(b) of the Rules, where a Party does not comply with any provision of the Rules, the Panel "shall draw such inferences therefrom as it considers appropriate".

Having consideration to the Parties' contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel's findings on each of the above mentioned elements are the following:

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant owns exclusive trademark rights in the trademark MOELIS & COMPANY, which predates the registration of the disputed domain name <moelisib.com>.

The Panel considers that the name "Moelis" is the distinctive part of the MOELIS & COMPANY trademark as it is not a commonly used word, but the last name of Mr. Moelis, the founder partner of the Complainant.

The Panel finds that the disputed domain name is confusingly similar to the registered MOELIS & COMPANY trademark owned by the Complainant.

Indeed, the disputed domain name incorporates the word "Moelis" in its entirety, which is the distinctive part of the Complainant's earlier MOELIS & COMPANY trademark, with the mere addition of the two letters "ib", which may be considered as referring to "investment banking" which directly refers to the Complainant's activity.

The dominant part of the disputed domain name is the word "Moelis", and the addition of the letters "ib" does not avoid confusing similarity.

See for instance Autodesk, Inc. v. Bayram Fatih Aksoy, WIPO Case No. D2016-2000 (<autocadmep.com>):

"The "autocad" element is identical to the Complainant's distinctive AUTOCAD trademark, while the "mep" element, as contended by the Complainant, represents an industry acronym that refers to "mechanical, engineering, and plumbing". The combination of these two elements is likely to appear to Internet users as representing an online location related to the Complainant's AutoCAD MEP software product."

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant's mark under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Considering the difficulty to demonstrate a negative, UDRP panels generally find that if the complainant raises a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy and then the burden of production shifts to the respondent to demonstrate its rights or legitimate interests.

Here, the Complainant has stated that it has not authorized, licensed or consented to the Respondent any use of its MOELIS & COMPANY trademark. The Panel finds that the Respondent's use of the disputed domain name in connection with a parking page does not fall within the language of paragraph 4(c)(i) or paragraph 4(c)(iii) of the Policy.

It results from the circumstances that the Respondent does not own any right on the trademark MOELIS & COMPANY nor is the Respondent commonly known by the disputed domain name <moelisib.com>.

In the light of what is stated above, the Panel finds that the Complainant has made an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

As the Respondent has not provided otherwise, the Panel finds from the available record that the second element of paragraph 4(a) of the Policy is fulfilled.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name.

It provides that:

"For the purposes of paragraph 4(a)(iii), 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 you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."

The Complainant submitted printouts showing articles published on the Internet and from newspapers about its activity under the trademark MOELIS & COMPANY.

As the Respondent chose to add, after the word "moelis", the two letters "ib" which as the Complainant contends is an acronym for "investment banking", the Complainant's main activities, and as the disputed domain name resolves to a parking page displaying sponsored links in connection with the Complainant's business, it may be assumed that the Respondent was aware of the Complainant's trademark at the time it registered the disputed domain name <moelisib.com>.

It appears therefore that the Respondent, by making reference to the name "Moelis" which is the distinctive part of the earlier trademark MOELIS & COMPANY, is trying to create a likelihood of confusion in order to attract, for commercial gain, Internet users to websites on which third parties, including the Complainant's competitors are promoting their own competitive products.

The Panel finds that the Respondent's use of the disputed domain name cannot therefore constitute use of the disputed domain name in connection with a bona fide offering of goods or services.

Conversely, the Panel finds that the Respondent registered the disputed domain name with the Complainant in mind and with the intention of capitalizing on the reputation of the Complainant within the meaning of paragraph 4(b)(iv) of the Policy.

Finally, the Panel also notes that the Respondent in this case, Pham Dinh Nhut, was previously found in bad faith in previous UDRP decisions. See for instance in a recent case: Herald & Weekly Times Pty Limited v. Vietnam Domain Privacy Services / Pham Dinh Nhut, WIPO Case No. D2016-1162.

The Panel finds that the above constitutes registration and use in bad faith pursuant to the third requirement of paragraph 4(a) 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 name <moelisib.com> be transferred to the Complainant.

Alexandre Nappey
Sole Panelist
Date: February 24, 2017