The Complainant is Easy Online Solutions, Ltd. d/b/a MojoHost, United States of America (“United States”), represented by Silverstein Legal, United States.
The Respondent is Maxx, India.
The disputed domain name <mojohost.tech> (the “Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2020. On December 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 4, 2020, 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 December 11, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2021.
The Center appointed Nick J. Gardner as the sole panelist in this matter on January 8, 2021. 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.
The Complainant is a United States business which has since 2004 traded under the name “Mojohost” providing computer hosting and related services.
The Complainant owns United States registered trademark no. 4,177,472 for the word MOJOHOST registered on July 24, 2012. This trademark is referred to as the “MOJOHOST trademark” in this decision.
The Complainant’s promotes its business through its website which is linked to the domain name <mojohost.com>.
The Disputed Domain Name was registered on October 31, 2020. The filed evidence shows it has been linked to a website that was advertising an email marketing system (see further the discussion below). At the time of this decision it does not resolve to an active website.
The Complainant’s contentions can be summarized as follows.
The Disputed Domain Name is identical or confusingly similar to the MOJOHOST Trademark.
The Respondent has no rights or legitimate interests in the term “mojohost”.
In consequence the Complainant alleges that the Disputed Domain Name was registered and is being used in bad faith. It says the Respondent is using an identical or confusingly similar domain name to redirect Internet users for commercial gain. The Complainant says: “Respondent is using the Disputed Domain Name to misdirect Internet users to its own website”.
The Respondent did not reply to the Complainant’s contentions.
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 UDRP 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).
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed 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 Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Complainant has rights in the MOJOHOST trademark. The Panel finds the Disputed Domain Name is identical to this trademark. It is well established that the generic Top-Level Domain (“gTLD”), in this case “.tech”, 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 and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.
Accordingly the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use MOJOHOST trademark. The Complainant has prior rights in the MOJOHOST trademark which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003‑0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the Disputed Domain Name (see below as to the use to which it has been put). Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(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 web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Complainant says that the “Respondent is using the Disputed Domain Name to misdirect Internet users to its own website”. The Panel is not sure that the evidence establishes that this is the case. The Respondent is (at least according to the available record) based in India – although the Panel notes the Respondent’s name appears materially incomplete and may well be a pseudonym, and the address provided for the Respondent apparently does not exist (according to the courier attempting delivery of a hard copy of the Complaint). Nevertheless it is not immediately obvious to the Panel why the Complainant says that the Respondent and the entity operating the website linked to <xtreempmta.co> (see below) are one and the same person.
As noted above the Disputed Domain Name does not currently resolve to an active website. The Complainant says that it previously resolved to a webpage advertising a product called “xtreemptma”. A copy of that webpage is placed in evidence. The Panel is unclear as to whether the Disputed Domain Name resolved directly to this webpage or whether some form of redirection occurred. The webpage in question bears a copyright notice referring to “www.xtreemptma.co”. The Panel has vised that website (in accordance with the approach noted at WIPO Overview 3.0, section 4.8) and notes that it appears to be a website operated by a California corporation called XtreemPMTA Tech Ltd which offers software which facilitates email marketing and which is called “xtreempmta”.
The Complainant says as follows: “The sole relevant content of the web page consists of an advertisement of the XtreemPMTA.co Email Marketing System 2020. This conduct serves the purpose of trying to profit off of the Complainant’s brand and to generate revenues from referring users to XTREEM PMTA (“www.xtreempmta.co”), which is owned and operated by XtreemPMTA Tech Ltd., a California corporation. For these reasons, it is very probable that an Internet user might be mislead into thinking that the web page is related to or even operated by Respondent [the Panel suspects this reference to “Respondent” may be a mistake and intended to refer to Complainant]. See printout of website accessible through the Disputed Domain Name attached as Annex 5”.
The Panel finds this rather difficult to follow. The Panel is unclear whether it is said that the Respondent is simply an alias for XtreemPMTA Tech Ltd or is acting on its behalf and, if so whether anything other than the way the Disputed Domain Name was used is relied upon. There is no other evidence the Panel can see which shows any connection between XtreemPMTA Tech Ltd and the Respondent. It is also not necessarily apparent to the Panel that the products and services offered under the “xtreempmta” name (email marketing software) are directly competing with the Complainant’s services (hosting services) or that customers seeking the Complainant’s website would necessarily have any interest in the” xtreempmta” products or services. Accordingly the Panel is not satisfied that the evidence establishes this is a straightforward case of the Respondent seeking to divert Internet users to a competing website.
However it seems to the Panel that the Respondent’s choice of the Disputed Domain Name was more likely than not because of its similarity to the Complainant’s MOJOHOST trademark. The term “mojohost” is a coined combination of two ordinary words, “mojo” and “host” but which in combined form is, in the Panel’s opinion, distinctive. There is no evidence before the Panel of anyone else using that term and it seems to the Panel more likely than not that the Respondent would have known of – and sought to target – the Complainant when it registered the Disputed Domain Name. Even assuming the Respondent independently coined the name (which seems unlikely) a simple Internet search would immediately have revealed the Complainant and its use of the term “mojohost”. It also seems to the Panel that the Disputed Domain Name has been used to redirect Internet users to a website which has no obvious connection to the term “mojohost”. The Panel cannot clearly determine which, if any, of the factors set out in paragraph 4(b) of the Policy may apply (except that (ii) is not relevant as there is no evidence of a pattern of conduct). It seems likely that factor (iv) may apply but it is not entirely clear to the Panel what if any commercial gain the Respondent is obtaining from its behaviour. However, the Panel notes that in any event this list is non exhaustive and takes the view that the acquisition of the Disputed Domain Name with knowledge of the Complainants’ trademark is prima facie evidence of bad faith – see The Channel Tunnel Group Ltd. v. John Powell, WIPO Case No. D2000-0038. This is particularly so given that the Respondent has not filed a Response and hence has not availed itself of the opportunity to present any case of good faith that he might have. The Panel infers that none exists. See e.g., Pixers Ltd. v. Whois Privacy Corp., WIPO Case No. D2015-1171, concerning cases involving a rebuttable inference of bad faith.
Accordingly, the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled
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 <mojohost.tech> be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Date: January 23, 2021