WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Low Taek Jho, Jynwel Capital Limited v. Domain Admin, NameSilo, LLC / Edna Mannings
Case No. D2018-0200
1. The Parties
The Complainants are Low Taek Jho and Jynwel Capital Limited of Hong Kong, China, represented by Andrews Kurth Kenyon LLP, United States of America ("United States" or "US").
The Respondent is Domain Admin, NameSilo, LLC of Phoenix, Arizona, United States / Edna Mannings of Port Elizabeth, Eastern Cape, South Africa.
2. The Domain Name and Registrar
The disputed domain name <lowtaekjhoinvestment.com> (the "Disputed Domain Name") is registered with NameSilo, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 30, 2018. On January 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 8, 2018, 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 February 23, 2018, 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 February 28, 2018.
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 March 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 26, 2018.
The Center appointed Nick J. Gardner as the sole panelist in this matter on April 6, 2018. 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 Complainants are (i) Jynwel Capital Limited ("JCL" or the "First Complainant") which is an investment company based in Hong Kong and (ii) Mr. Low Taek Jho ("Mr. Low" or the "Second Complainant"). Mr. Low is a co-founder and the Chief Executive Officer of JCL. He, through JCL, has invested in a multitude of high-value mergers and acquisitions, restructurings and financings, cross-border transactions, leveraged buyouts, and other investment projects around the world and across a variety of sectors, including media and entertainment, luxury real estate, consumer and retail, energy and resources, and infrastructure. In addition, Mr. Low is a director of Jynwel Charitable Foundation Limited, a charitable institution committed to funding programs that promote advancements in public health, environmental and wildlife conservation, and education in many areas of the world. Further details as to the Complainants and their activities are discussed below.
The First Complainant owns various trademarks for the word "Jynwel" including for example US registration no 4,943,938 (word plus device) registered April 26, 2016. These are referred to collectively in this decision as the "Jynwel Trademark". Mr. Low does not own any registered trademarks.
The Disputed Domain Name is linked to a website which purports to be that of Mr. Low and which purports to offer loans and other financial services. It clearly represents itself as being a website operated by Mr. Low and uses his name, photographs of him, the Jynwel Trademark and other proprietary material to masquerade as being a website connected to the Complainants. It is on the filed evidence an entirely fraudulent and dishonest website.
5. Parties' Contentions
The Complainants' contentions can be summarized as follows.
The Disputed Domain Name is confusingly similar to what the Complainants refer to as the Jho Low Trademark. They say that common law rights exist in this trademark as result of Mr. Low's fame and reputation and his business activities. The Complainant's case on this issue is discussed in more detail below.
The Respondent has no rights or legitimate interests in the term "Jho Low".
In consequence the Complainants allege that the Disputed Domain Name was registered and is being used in bad faith. The Complainants say the use of the Disputed Domain Name for a fraudulent website is clear evidence of bad faith.
The Respondent did not reply to the Complainants' contentions.
6. Discussion and Findings
The Panel notes that no communication has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the Rules to "employ reasonably available means calculated to achieve actual notice". Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent's failure to file any Response. While the Respondent's failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent's default (see e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).
The Panel also notes this is a case where one of the named Respondents (Domain Admin, NameSilo, LLC) appears to be a privacy or proxy registration service. The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") at section 4.4.5, as follows:
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent."
In the present case the Panel finds the substantive Respondent to be Edna Mannings – and references to the Respondent should be understood as including that person.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of each of the Disputed Domain Names that:
(i) The Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.
It is convenient for the Panel to start by stating that it considers factors (ii) and (ii) are clearly satisfied. The Respondent's use of Mr. Low's name as part of the Disputed Domain Name is clearly not coincidental and is not authorised by the Complainants – the Panel finds that the Respondent lacks any rights to or legitimate interest in the Disputed Domain Name. The fraudulent nature of the website operated by the Respondent constitutes evidence of bad faith so far as factor (ii) is concerned under a host of Policy decisions. Accordingly the only serious question the Panel has to decide arises as to factor (i).
In this regard the Panel considers that this case turns upon whether Mr. Low's name is a trademark. This is because the Panel does not consider the Disputed Domain Name to be confusingly similar to the Jynwel Trademark. There is no correspondence at all whether in written or aural form between the Disputed Domain Name and the Jynwel Trademark and hence no basis for a finding of similarity (whether confusing or not)
The Disputed Domain Name is however manifestly confusingly similar to Mr. Low's name. It combines that name in full with the descriptive word "investment". If Mr. Low's name is a trademark the position is entirely straightforward – this Panel and numerous previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy, "when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name" (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is also well established that the generic Top-Level Domain ("gTLD"), in this case ".com", does not affect the disputed domain name for the purpose of determining whether it is identical or confusingly similar – see for example Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.
Accordingly this case gives the Panel only one serious question to address. Is Mr. Low's name "a trademark or service mark in which the complainant has rights," as required by paragraph 4(a)(i) of the Policy? As appears below this question raises a difficult issue of principle which previous Panels have had to grapple with on a number of occasions.
"Can a complainant show UDRP-relevant rights in a personal name?
1.5.1 Personal names that have been registered as trademarks would provide standing for a complainant to file a UDRP case.
1.5.2 The UDRP does not explicitly provide standing for personal names which are not registered or otherwise protected as trademarks. In situations however where a personal name is being used as a trademark-like identifier in trade or commerce, the complainant may be able to establish unregistered or common law rights in that name for purposes of standing to file a UDRP case where the name in question is used in commerce as a distinctive identifier of the complainant's goods or services.
Merely having a famous name (such as a businessperson or cultural leader who has not demonstrated use of their personal name in a trademark/source-identifying sense), or making broad unsupported assertions regarding the use of such name in trade or commerce, would not likely demonstrate unregistered or common law rights for purposes of standing to file a UDRP complaint."
There are no registered trademarks corresponding to Mr. Low's name. The question therefore is whether Mr. Low, as a businessman, has demonstrated that his name is used in a trademark/source identifying sense in a manner which establishes common law trademark rights exist in his name. Cases concerning business men asserting rights in their own name pose particular difficulties and are to be contrasted with cases concerning sportsmen, actors, musicians and authors where the position is rather more straightforward. A sports star, actor, performer, author or other person whose livelihood turns on personal recognition meets this criterion almost by definition. So for example Julia Roberts as a famous actress can readily establish common law rights in her name (see Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210) whilst Philippe Pierre Dauman, a well-known business man who was president of Viacom Inc., failed to do so (see Philippe Pierre Dauman v. Dinner Business, WIPO Case No. D2013-1255). That is the rationale for the distinction drawn in the WIPO Overview 3.0 regarding these and other cases.
The Complainants in a carefully reasoned section of the Complaint explain their case in this regard as follows:
"Complainants have established rights in the JHO LOW Mark, which although unregistered, has become a distinctive identifier associated with Mr. Low for the purposes of the Policy. See Kotak Mahindra Bank Limited v. Richard Brown, WIPO Case No. D2008-0243 (Complainant had developed trademark rights in his name where evidence demonstrated that he was vice-chairman and managing director of a bank, was ranked among India's richest people by Forbes magazine, and had been interviewed on national and international television); Steven Rattner v. BuyThisDomainName (John Pepin), WIPO Case No. D2000-0402 (Complainant had developed trademark rights in his name where evidence demonstrated that he is a high profile investment banker and financial advisor as well as a fundraiser for politicians that has garnered significant media attention); Soin International LLC v. Michael W. Solley, PrivateRegContact Admin/TECH, WIPO Case No. D2007-0094 (Complainant had developed trademark rights in his name where evidence demonstrated that he is the chairman, president, and CEO of a private multinational investment company that had multimillion dollar, multinational subsidiaries and affiliates operating under its umbrella); Kotak Mahindra Bank Limited v. Richard Brown, WIPO Case No. D2008-0243 ('Complainant's evidence is corroborated by Respondent's web page [...] [this] text clearly identifies the Complainant with the bank and vice versa'); Roland Mouret v. Domains by Proxy, Inc. and Sonia Long, WIPO Case No. D2009-1435 (Complainant had trademark rights in his personal name, which he used in connection with his fashion design business, evidenced by his brand's numerous appearances in fashion magazines)."
The Panel has reviewed the cited cases carefully and notes as follows.
In the Kotak Mahindra Bank case (supra) the panel was influenced by the fact that the complainant's surname, Kotak, was a part of the bank's trading name and was a registered trademark.
In the Steven Rattner case (supra) the complainant provided investment services under his own name and did not, at the date of the complaint, operate through a corporate vehicle.
In the Soin International case (supra) the panel helpfully reviewed many of the previous cases and described the relevant principles in the following manner:
"…..cases involving business people who are the leaders of companies that do not carry their own names are much more difficult for complainants to prove. Thus, in the leading case cited in the Overview, Israel Harold Asper v. Communication X Inc., WIPO Case No.D2001-0540, the prominent Canadian business person and philanthropist Mr.Israel Asper was held not to have acquired trademark rights in his name because '… (he had) not shown on a preponderance of the evidence that he uses his personal name for the purpose of the merchandising or other commercial promotion of goods or services, or that he intended to do so'.
However, as the panelist in the Asper case observed, 'The cases involving claims by or on behalf of business people do not demonstrate a pattern.' Thus, although the complainant in Asper failed, the complainant in Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No.D2000-0300, succeeded, for it, the Complainant company, was able to show a clear commercial attachment to the use of the name of its founder and, in the case of Steven Rattner, the complainant showed that he provided investment banking and corporate advisory services under his own name and that he would therefore have an obvious interest in protecting his name for commercial use.
Eventually, such cases come down to whether the evidence establishes sufficient of a nexus between the name itself and its use and association in trade and commerce. In undertaking that exercise, it is useful to consider a number of guides, for they can be no more than that, that will tend to suggest one way or the other, whether such a nexus has been established and might over time help to establish the 'pattern' of consistent authority that the panelist in the Asper case lamented is presently absent. Those factors would include the extent to which the commercial community identifies the individual with the company, the extent to which the individual is seen by relevant media and sections of the public as the alter ego and driving force behind the company, the extent of the personal ownership of the company by the individual, the degree of personal control that the individual exercises over the enterprise, the extent to which the individual is identified with any major achievements of the enterprise and whether, as was the case in Rattner, it can be said that the individual and/or the company has a demonstrable interest in protecting the individual's name for commercial use."
In the Soin International case (supra) the panel concluded that:
"the evidence supports a determination that Complainant had trademark rights in the name 'RajSoin'. The evidence, including the Declaration of Rajesh K. Soin, indicates, for example, that Raj Soin is the founder, chairman, and chief executive officer of Soin International, that his name has become known through its use in high profile trade and commercial ventures and has become inextricably linked to his enterprises, and that a Google search of 'Raj Soin' includes over 10,000 'hits' that relate to him, the College of Business that bears his name and/or his business. Thus, the evidence establishes a sufficient nexus between the name itself and its use and association in trade and commerce."
The Panel agrees with this approach. It is accordingly necessary to consider what the evidence in the present case establishes as to Mr. Low and how his name has been used. This can be summarized as follows.
Mr. Low is a wealthy and successful businessman. The evidence establishes that his commercial activities are carried out through the First Complainant which promotes itself under its own name. It carries out investment activities on a substantial scale and on an international basis.
Mr. Low's name is used where appropriate by the First Complainant to describe him as a co-founder and Chief Executive Officer - for example a biography of Mr. Low is found on the "our team" page of the First Complainant's website. The First Complainant does not however so far as the Panel has been able to observe, itself use Mr. Low's name in a separate trademark sense – a hypothetical example of the sort of use the Panel could imagine in this regard would be the promotion of the "Jho Low Investment Fund". No such usage occurs.
Mr. Low is also a member of various other boards of companies and investment funds – he is for example non-executive Chairman, Asia, for EMI Music Publishing, also serving as a member of its advisory board. Again however the Panel has not been able to see any use in this context by any of these organizations of Mr. Low's name as a trademark.
Mr. Low is also a philanthropist and his activities in this regard are on the evidence conducted primarily through another corporate entity, the Jynwel Charitable Foundation Limited. These activities involve donating very substantial sums of money to a number of charitable or environmental concerns, again on an international basis. His activities in this regard do not however establish his name as being used in a trademark sense given this activity is firstly conducted through another corporate vehicle and secondly are in any event by definition noncommercial.
The Complaint also identifies two awards that Mr. Low has received. In 2014, Mr. Low received the International Entrepreneur of the Year Award from the Houston Asian Chamber of Commerce for his approach to sustainable investing and disruptive philanthropy. He was also presented with the Angel Gabrielle Award from Gabrielle's Angel Foundation in recognition of his dedication and contribution to eradicating cancer at the 2014 Angel Ball. Both of these awards seem to the Panel to recognise Mr. Low as a businessman and philanthropist, but do not add further evidence that his name is itself a trademark.
Mr. Low has attracted some publicity in his own right. The evidence includes a 2014 article from the Wall Street Journal, which commences as follows:
"Jho Low, the scion of a wealthy Asian family, used to generate headlines for his lavish partying with the likes of Paris Hilton. Now, he is more likely to draw attention for his deal making.
Jynwel Capital, the Low family's investment vehicle, on Monday emailed a letter to Adidas AG's board offering to buy fitness brand Reebok, according to people familiar with the matter. The bid, made together with funds affiliated with the government of Abu Dhabi, values Reebok at about 1.7 billion euros, or roughly $2.2 billion, the people said.
The move underscores Mr. Low's evolution from tabloid fodder to someone with ambitions to be a serious player in global mergers and acquisitions.
The 32-year-old grandson of a Chinese-born mining and liquor entrepreneur who was raised in Malaysia, Mr. Low has cultivated relationships with some of the world's largest funds, including Abu Dhabi's Mubadala Development Co. and the Kuwait Investment Authority, as well as with billionaires like commodities-investing tycoon Tom Kaplan.
Those relationships have helped Jynwel Capital, which invests the Low family's roughly $1.75 billion fortune, land roles in deals including the acquisition of New York's Park Lane Hotel for $660 million in 2013; the takeover of Coastal Energy, an oil-and-gas exploration company with projects in Southeast Asia, for $2.2 billion in 2014; and the buyout of EMI's music-publishing business for $2.2 billion in 2012.
But the bid for Reebok is Mr. Low's brashest and highest-profile effort yet. That is in part because unlike in those deals, he and Jynwel are leading it, people close to the matter said."
Mr. Low also operates a personal website at the address "www.jho-low.com". The Complaint describes this as a location where Mr. Low "conducts Internet activities under his JHO LOW Mark". In substance this website does not carry out any commercial activities but simply records and makes available the biographical and business and philanthropic information about Mr. Low as recorded above. Thus for example the landing page bears the message "Welcome to the personal website of Jho Low, a global philanthropist, investor and entrepreneur".
Mr. Low also publishes a blog which contains articles with titles such as "Jho Low's views on global luxury market tends" which is some evidence of his name being used as an indication of origin and at least arguably is use in a trademark sense.
The Panel has not found it easy to come to a conclusion on this issue. There is little direct evidence of the use of Mr. Low's name as a trademark in the conventional sense. It is however clear on the evidence that many of the factors the panel in the Soin International case (supra) considered important are present – it would seem that Mr. Low is readily identified with the investment company he founded and runs, he is recognised as such by the media, he has received awards recognizing his role and it can be said that both Mr. Low and JCL have a demonstrable interest in protecting the use of his name for commercial use.
On balance the Panel is persuaded by the Respondent's own actions that Mr. Low's name is recognized as a trademark. See WIPO Overview 3.0, sections 1.7 and 1.15. That is exactly the sense in which the Respondent is using the name - by combining it with an entirely descriptive term and clearly hoping to lure into some sort of fraudulent scheme would be borrowers who are attracted or reassured by the cachet and reputation associated with Mr. Low's name. Taking all of this evidence together the Panel concludes that it establishes usage of Mr. Low's name as a trademark. That being so the Panel concludes that all necessary elements under the Policy are established.
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 <lowtaekjhoinvestment.com> be transferred to Mr. Low.
Nick J. Gardner
Date: April 16, 2018