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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Easy Online Solutions, Ltd. d/b/a MojoHost v. Maxx

Case No. D2021-2156

1. The Parties

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.

2. The Domain Name and Registrar

The disputed domain name <mojohostonline.tech> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 5, 2021. On July 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 7, 2021, 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 sent an email with additional registrant information to the Parties on July 7, 2021.

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 July 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 28, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 29, 2021.

The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on August 2, 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.

4. Factual Background

The Complainant has been in the business of offering website hosting services since April 1, 2004. The Complainant conducts business under the following registered trademark:

MOJOHOST, in standard characters, service mark, United States Patent and Trademark Office, Principal Register, registered July 24, 2012, registration number 4177472, in class 42. First use in commerce recorded as April 1, 2004.

The Complainant also owns the domain name <mojohost.com> which resolves to a website through which it conducts its business.

No background information has been provided by the Respondent, except for the contact details given to the Registrar at the time of registration of the disputed domain name, which was registered on May 18, 2021. The disputed domain name has not resolved to any website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it holds all relevant rights in the trademark MOJOHOST and that the disputed domain name is identical or confusingly similar to that trademark. The disputed domain name consists of the Complainant’s trademark and the term “online”, which is generic and does not prevent a finding of confusing similarity to the Complainant's trademark. The generic Top-Level Domain (“gTLD”) “.tech” does not prevent a finding of confusing similarity.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name and it is for the Respondent to prove otherwise. The Respondent is not a licensee of the Complainant and is not authorised to use the Complainant’s trademark for any purpose.

The Complainant says the Respondent registered the disputed domain name recently and about two months after another domain name, <themojohost.tech>, was transferred from the same Respondent to the Complainant following a complaint before WIPO under the Policy. This followed a 2020 case in which the domain name <mojohost.tech> was transferred from the same Respondent to the Complainant.

The Complainant says the disputed domain name does not resolve to any website and does not appear to be in use or preparation for use in connection with a bona fide offering of goods or services. There does not appear to be any legitimate noncommercial or fair use. There is no reason to believe the Respondent is commonly known by the disputed domain name.

The Complainant says it appears the Respondent registered the disputed domain name because the Complainant had filed the aforementioned previous complainants under the Policy.

The Complainant contends that the disputed domain name was registered and is being used in bad faith.

The Complainant submits that the provisions of paragraph 4(b) of the Policy are specifically non-exhaustive. For instance, in previous cases under the Policy it has been held that registration and use in bad faith may be established where a respondent knew or should have known of the registration and use of a trademark prior to registering the respective domain name, and that infringement of a trademark is sufficient to support a finding of bad faith. The Complainant’s trademark is unique and arbitrary and the Respondent is unlikely to have devised it originally. The Respondent could not have been unaware of the Complainant’s trademark since it is well known throughout the world and because the Respondent had been ordered to transfer the domain name <themojohost.tech> two months before registration of the disputed domain name, and before that had been ordered to transfer the domain name <mojohost.tech>. The Complainant says these allegations mean the Respondent could not plausibly have registered the disputed domain name legitimately and that it was registered and is being used in bad faith.

The Complainant has cited a number of previous decisions under the Policy that it considers supportive of its position.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:

“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

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

The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.

A. Identical or Confusingly Similar

The Panel is satisfied by the evidence that the Complainant is the registrant of and has rights in the trademark MOJOHOST.

The disputed domain name <mojohostonline.tech> is found to comprise the entirety of the Complainant’s trademark, followed by the word “online”, which does not prevent a finding of confusing similarity. It is not necessary to consider the gTLD “.tech” in the determination of confusing similarity as it is a technical requirement. The presence of the Complainant’s trademark is sufficient to make a finding that the disputed domain name is confusingly similar to the Complainant’s trademark for the purposes of paragraph 4(a)(i) of the Policy, and the Panel so finds.

B. Rights or Legitimate Interests

The Complainant states that the Respondent has not been authorised to use the Complainant’s trademark for any purpose. The Complainant has set out a prima facie case to the effect that the Respondent does not have rights or legitimate interests in respect of the disputed domain name.

Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:

“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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”.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has not responded formally and has not asserted rights or legitimate interests in the disputed domain name with reference to paragraphs 4(c)(i), (ii) or (iii) of the Policy or otherwise. On the evidence, including the lack of evidence of any bona fide use or preparations for use of the disputed domain name by the Respondent, or any evidence or likelihood that the Respondent is commonly known by the disputed domain name, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name in the terms of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four illustrative examples of circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(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 website or location or of a product or service on your website or location”.

The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel.

The Panel has considered the circumstances surrounding the registration and usage of the disputed domain name. There is no evidence the disputed domain name has resolved to any substantive website, and checking for one has yielded the response, “This site can’t be reached”. There is no evidence of any other online presence such as use of the disputed domain name for a genuine email address. Whilst the concept of constructive knowledge of a trademark tends to be applied sparingly under the Policy, the Respondent's recent loss of two previous complaints brought by the same Complainant, which would have incorporated evidence of the Complainant’s trademark (Easy Online Solutions, Ltd. d/b/a MojoHost v. Maxx, WIPO Case No. D2020-3267 (<mojohost.tech>) and Easy Online Solutions, Ltd. d/b/a MojoHost v. Maxx, WIPO Case No. D2021-0303 (<themojohost.tech>) leaves the Panel in no doubt that the Respondent must have been aware of the Complainant’s trademark at the time of registration of the disputed domain name.

Taking into account the Respondent’s previous encounters with the Complainant, it would appear that the Respondent cannot reasonably have expected otherwise than that the registration of the disputed domain name would precipitate the present Complaint. It would appear therefore that the Respondent’s purpose in making the registration, on the balance of probabilities, was primarily to act disruptively towards the Complainant, causing the trouble, diversion of resources and costs of proceeding. The fact that the disputed domain name has not been put to any substantive use does not preclude a finding of use in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). The Panel finds the disputed domain name to have been registered and used in bad faith within the meaning of paragraph 4(b)(iii) of the Policy.

The Panel finds that the Respondent’s two previous encounters with the Complainant fulfil the requirement that the Respondent has engaged in a pattern of the registration of domain names in order to prevent the owner of the trademark from reflecting their trademark in a corresponding domain name, and registration in bad faith is found additionally, on the balance of probabilities, under paragraph 4(b)(ii) of the Policy.

Furthermore, on the evidence, the Respondent registered and passively held the disputed domain name featuring a trademark that it had twice previously been formally notified as being the Complainant’s registered trademark, without any realistic prospect of use by the Respondent for any plausible or bona fide purpose without conflict with the Complainant’s registered trademark rights. The Panel further finds, on the balance of probabilities, registration and use of the disputed domain name in bad faith in general terms and without reliance upon the provisions of paragraph 4(b) of the Policy.

On the evidence, and on the balance of probabilities, the Panel finds the disputed domain name to have been registered and used in bad faith under paragraph 4(a)(iii) 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 <mojohostonline.tech> be transferred to the Complainant.

Dr. Clive N.A. Trotman
Sole Panelist
Date: August 9, 2021

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