The Complainant is Mojofiti Inc. of Denver, United States of America, represented by Simon Semenoff LLC of United States of America.
The Respondent is James, of Guangzhou, the People's Republic of China.
The disputed domain name <mojofti.com> (“the Domain Name”) is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2010. On January 28, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On January 29, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the Domain Name. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 2, 2010. The Center verified that the Complaint together with the amendment to 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 24, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 25, 2010.
The Center appointed Warwick Smith as the sole panelist in this matter on March 5, 2010. 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.
In the absence of a Response, the Panel has checked the record to ensure that the Center has discharged its responsibility to notify the Complaint to the Respondent. The Panel is satisfied that the Center has done so.
The Complainant was incorporated in the State of Colorado on June 9, 2009. It is an online provider of machine-based and customized translation services, which it provides through the website at “www.mojofiti.com” (“the Complainant's website”). The Complainant also provides at the Complainant's website a free global social network, using its online translation technology to facilitate multi-lingual chats and blogging between members.
According to the Complaint, the <mojofiti.com> domain name was acquired (presumably by those who incorporated the Complainant) on February 23, 2009.
The Complainant says that it began using the name “mojofiti” immediately following its incorporation in June of 2009. On November 24, 2009, the Complainant applied to the United States Patent and Trademark Office (“the USPTO”) to register “Mojofiti” as a word mark.
The Complainant says that “Mojofiti” is a made-up word, not known in English or in any other language of which the Complainant is aware.
The Domain Name was registered on October 22, 2009. It resolves to a website (“the Respondent's website”) which provides sponsored links and information about language translation (e.g. online translation tools, translation software, and a free English translator). The Complainant says that the date of registration of the Domain Name coincides with the public launch date of the Beta version of the Complainant's website, and that the launch was celebrated with a party that was widely publicized through global social network sites, as well as online and in various print media.
The Complainant contends:
1. The Complainant has common law trademark rights in the word “Mojofiti”. The Domain Name is confusingly similar to that word and the Complainant's domain name, <mojofiti.com>. The similarity between the Complainant's mark and the Domain Name is exacerbated by the fact that the Respondent has patterned the Respondent's website after the Complainant's website.
2. The Respondent has no rights or legitimate interests in the Domain Name. No business such as the Respondent's would have chosen the Domain Name without having seen or known about the Complainant and its online business operated at the Complainant's website. The fact that the Respondent operates the same type of business as that engaged in by the Complainant shows that the Respondent intends to take advantage of the similarity between the Domain Name and the Complainant's “Mojofiti” mark. The similarity of the content on the Complainant's and Respondent's respective websites, points to the same conclusion: the Respondent intends, for commercial gain, to create a website that is confusingly similar to the Complainant's website, and to mislead and divert customers from the Complainant's website. The fact that the registration of the Domain Name coincided with the well-publicized launch celebrations of the Complainant supports the inference that the Respondent's intention was to take advantage of the similarity between the Domain Name and the Complainant's mark.
3. The Domain Name was registered and has been used in bad faith. The Respondent selected the Domain Name based solely on its similarity to the Complainant's already established domain name. The Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by choosing a domain name (“the Domain Name”) and providing links to online services that are confusingly similar to the Complainant's. If the Respondent had legitimately established his business prior to learning about the Complainant's online domain, the Respondent would have selected a different name rather than choosing a name confusingly similar to a completely fictitious word like “mojofiti”.
The Respondent did not reply to the Complainant's contentions.
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent's failure to comply with the Rules (e.g. by failing to file a response), as the Panel considers appropriate.
The Complainant claims that it has common law service mark rights in the expression “Mojofiti”. It says that it has used that expression for a period of approximately seven months prior to the filing of the Complaint (from June 2009 to January 28, 2010). Its application to the USPTO gives a “First Use in Commerce Date” of October 22, 2009.
It is now well settled that a complainant may rely on an unregistered, or common law trademark or service mark, at least if the complainant is based in a jurisdiction where the law recognizes such (unregistered) marks. The United States is one such jurisdiction (refer to Dreamstar Cash S.L. v. Brad Klarkson, WIPO Case No. D2007-1943; citing ProCPR, LLC v. Name Administration Inc. (BVI), WIPO Case No. D2007-0823 and Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784). The question in this case is whether the Complainant has proved that it has such common law rights in a MOJOFITI mark.
The Panel understands that the fundamental requirement for a trademark under the Lanham Act in the United States (and in many other jurisdictions) is that the mark must be capable of distinguishing the applicant's goods or services from those of others. Marks in the United States are often classified in categories of generally increasing distinctiveness, from (1) generic, through (2) descriptive, (3) suggestive, (4) arbitrary, to (5) fanciful (see Abercrombie & Fitch Co v Hunting World, Inc 537F. 2d 4). The latter three categories of marks, because their intrinsic nature serves to identify a particular source of a product, are deemed inherently distinctive, and are entitled to protection without proof of use (see Two Pesos Inc v Taco Cabana Inc., 505 US 763, S.Ct. and, in the domain name context, usDocuments, Inc. v. Flexible Designs, Inc./ Craig Dinan, WIPO Case No. D2003-0583). Marks which are merely descriptive of a product are not inherently distinctive. Such marks may only be registered on proof of distinctiveness acquired through commercial use – generally referred to as “secondary meaning”.
In the two pesos case, the Supreme Court of the United States held that an identifying mark is distinctive and capable of being protected if either (i) it is inherently distinctive or (ii) it has acquired distinctiveness through secondary meaning.
In this case, the questions are whether the Complainant's claimed MOJOFITI mark is inherently distinctive (so that it would be registrable without proof of distinctiveness acquired through use), or if not, whether use in commerce for approximately three months prior to the filing of the Complaint is sufficient to prove acquired distinctiveness.
The Complainant's claimed MOJOFITI mark will qualify as “inherently distinctive” if it is a made-up word as the Complainant contends. How does a complainant prove that it's claimed mark is a made-up word? There would seem to be little point in it producing numerous dictionaries, reference books, etc, to show that the claimed mark is not included in any of them. Nor should the onus be on the Panel to spend time investigating the claim, to see if it can locate some prior use of the expression “Mojofiti”. In a summary, administrative proceeding such as this, where the standard of proof is only “on the balance of probabilities”, the Panel is of the view that the combination of the clearly unusual nature of the expression “mojofiti” and the absence of any challenge to the “made-up word” claim is sufficient. Accordingly, the Panel finds, on the limited evidence which is available, that the Complainant's claimed MOJOFITI mark is a made-up word, and as such, is inherently distinctive. Proof of acquired distinctiveness through use is unnecessary in those circumstances.
The Domain Name is clearly confusingly similar to that mark. Visually, the Domain Name is difficult to distinguish form the Complainant's mark – the only difference is that an “i” has been removed from the Domain Name. Aurally, there is little, if any, difference between the Domain Name and the Complainant's mark. The generic “.com” suffix is not taken into account in the comparison.
For the foregoing reasons, the Panel finds that the Complainant has made out its case under paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] 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) Where [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 trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center's online document WIPO Overview of WIPO Panel Views on Selected UDRP Questions, as follows:
“A Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4 (a)(ii) of the UDRP”.
In this case, the Complainant has established that it has common law rights in a MOJOFITI mark, and that the Domain Name is confusingly similar to that mark. Clearly, the Complainant has not authorized the Respondent to use its mark (or any expression confusingly similar thereto), and there is nothing in the evidence to suggest that the Respondent (or any business or organization operated by him) might be commonly known by the Domain Name (and thus provide the Respondent with a right or legitimate interest under paragraph 4(c)(ii) of the Policy). The content of the Respondent's website is clearly very similar in nature to the content of the Complainant's website, and the Respondent's choice of the Domain Name has the obvious appearance of an attempt at “typosquatting”. The Complainant's mark consists of a made-up word, and it is difficult (at least in the absence of any compelling explanation from the Respondent) to avoid the conclusion that the Respondent has deliberately taken advantage of the similarity between the Domain Name and the Complainant's mark, in order to confuse Internet users looking for the Complainant's website and divert them to the revenue-generating sponsored links available at the Respondent's website.
The foregoing circumstances provide strong prima facie proof that the Respondent has no rights or legitimate interests in respect of the Domain Name, so the evidentiary onus on this part of the Complaint passes to the Respondent. The Respondent having failed to file any Response, that onus has not been discharged, and the Complainant's prima facie proof is sufficient to make its case under paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include:
(i) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website 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 [the respondent's] website or location or of a product or service on [the respondent's] website or location.
The Panel is satisfied that the Respondent's registration and use of the Domain Name falls within that subparagraph. Although the Respondent appears to be based in a different country to the Complainant, the near-identity between the Domain Name and the Complainant's mark, and the similarity of subject matter on the parties' respective websites, makes it clear that the Respondent was aware of the Complainant and its online activities when he registered the Domain Name. The case appears to be a simple one of “typosquatting”, where the Respondent has registered the Domain Name (which is virtually identical to the Complainant's mark) with a view to attracting to the Respondent's website Internet users who have been looking for the Complainant's website and mistakenly typed in the Complainant's mark without the first of the two “i”s. The sponsored links on the Respondent's website make it clear that the Respondent has registered and been using the Domain Name for commercial gain.
Those circumstances fall squarely within the example of bad faith registration and use set out at paragraph 4(b)(iv) above.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules and in accordance with the Complainant's request made in the Complaint, the Panel orders that the Domain Name, <mojofti.com>, be cancelled.
Warwick Smith
Sole Panelist
Dated: March 19, 2010