WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Easy Online Solutions, Ltd. d/b/a MojoHost v. Ahmed Parvez Banatwala, Cloudmojo Tech LLP, and Ahmed Parvez Banatwala, Construma Consultancy Pvt. Ltd
Case No. D2021-3197
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 Respondents are Ahmed Parvez Banatwala, Cloudmojo Tech LLP, and Ahmed Parvez Banatwala, Construma Consultancy Pvt. Ltd, India.
2. The Domain Names and Registrar
The disputed domain names <cloud-mojo.com>, <cloudmojo.tech>, <cloudmojotech.com>, and <cloudmojotech.website> are 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 September 27, 2021. On September 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 29, 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 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 October 29, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 18, 2021. However, by email dated November 11, 2021, the Respondents requested a four day extension of the time within which to file the Response and, in accordance with paragraph 5(b) of the Rules, an extension of time to November 22, 2021 was granted. The Response was filed with the Center on November 22, 2021.
On December 10, 2021, the Respondents submitted an unsolicited supplemental filing.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on December 16, 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 is a corporation based, or headquartered, in the United States which provides web-hosting, content distribution and other “software as a service” (SaaS) services.
The Complainant’s primary domain name is <mojohost.com>, but it has also registered domain name <mojocloud.com>, which redirects to the website at “www.mojohost.com”.
It is not in dispute between the Parties that the Complainant has servers from which it provides its services in both the United States and Amsterdam in the Netherlands.
The Complainant is the owner of a number of registered trademarks in the United States including:
a) United States registered Trademark No. 4,177,472, MOJOHOST, in respect of website hosting services in International Class 42. The Complainant filed the application for this trademark in March 2010. It was registered on July 24, 2012 and claims first use in commerce in April 2004;
b) United States registered Trademark No. 5,786,802, THAT’S GOOD MOJO, in respect of website hosting services in International Class 42. The Complainant filed the application for this trademark in November 2018. It was registered on June 25, 2019 and claims first use in commerce in September 2017;
c) United States registered Trademark No. 5, 879,619, MOJOCDN, in respect of a range of SaaS services in International Class 42. The Complainant filed the application for this trademark in April 2019. It was registered on October 8, 2019 and claims first use in commerce in February 2018; and
d) United States registered Trademark No. 5,895,310, MOJOCLOUD, in respect of cloud hosting, application services provider and related services in International Class 42. The Complainant filed the application for this trademark in April 2019. It was registered on October 29, 2019 and claims first use in commerce in October 2018.
It is also not in dispute between the Parties that the disputed domain names were registered at varying dates between May 8, 2020 and February 12, 2021.
According to the Response, all four disputed domain names have been registered by, or for the use of, the Respondent CloudMojo Tech LLP, which is a limited liability partnership registered in Mumbai, India. It appears that this limited liability partnership was registered in or about June 2020.
According to the Response, the Respondent is a reseller and distributor of Microsoft products especially Microsoft 365 and Azure.
The second disputed domain name, <www.cloudmojo.tech>, resolves to a website which appears to offer those products for sale and support.
The Response also claims that the fourth disputed domain name, <cloudmojotech.website>, is used for website previews and File Transfer Protocol services.
The other two disputed domain names are not yet active.
According to the Response, the business is intended to be directed to small and medium enterprises in India. The website to which the first disputed domain name resolves is in English and the contact details are in India but it is not possible to tell from the website itself whether it is directed just to the Indian market.
When the Complaint was filed, the Respondent had a pending trademark application in India for CLOUDMOJO TECH in respect of computer programming, technology consulting and SaaS services in International Class 42. The application was filed on June 22, 2021. It was advertised accepted on November 12, 2021 and was entered on the Register, Registered Trademark No. 5,014,870, on December 9, 2021.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(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.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Consolidation of Complaints
It is not in dispute between the Parties that the four disputed domain names are under the common control of the Respondent. Accordingly, consolidation of the Complaints in respect of all disputed domain names is permissible and desirable. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.
B. Respondent’s supplemental filing
Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.
In the present case, the Respondent’s unsolicited supplemental filing reports the successful registration of the Respondent’s trademark, which occurred on December 9, 2021.
The Panel notes that both the Complaint and the Response did disclose the existence of the pending trademark application.
As registration occurred after the time for filing the Response and could not have been disclosed until registration occurred, therefore, the Panel considers it appropriate for the supplemental filing to be admitted into the record on the basis that the registration could not have been disclosed when the Response was due and filed.
C. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark at the date the Complaint was filed and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks identified in section 4 above. For present purposes, the most relevant of these is the registration for MOJOCLOUD.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. This test is narrower than and thus different to the question of “likelihood of confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g., WIPO Overview 3.0 , section 1.7.
In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top Level Domain (gTLD) component as a functional aspect of the domain name system. WIPO Overview 3.0, section 1.11.
On that basis, the first two disputed domain names consist of the Complainant’s MOJOCLOUD trademark with the two word elements reversed. (For the purposes of the comparison the inclusion of a hyphen separating the two elements in the first disputed domain name may also be disregarded, as is conventional. See e.g., Telstra Corporation Limited v. Ozurls WIPO Case No. D2001-0046.)
The Respondent contends that the reversal of the two word elements means that there is no possibility of deception or confusion. It does appear that a Google search on “Cloud Mojo” does not result in a listing for the Complainant (at least on the first three pages of results). As the Complainant points out, however, a number of prior decisions have found that such a word order reversal does not avoid a finding of confusing similarity. See e.g., Nokian Tyres plc v. Yansheng Zhang, gname.com Pte. Ltd., WIPO Case No. D2020-3032 (<tyresnokian.com>) and Philipp Plein v. Privacy Protection Service Inc. d/b/a PrivacyProtect.org / Apinya Khamket, WIPO Case No. D2015-0072 (<plein-philipp.com>).
The third and fourth disputed domain names consist of the Complainant’s MOJOCLOUD trademark, once again in reverse order, plus the term “tech”. As this requirement under the Policy is essentially a standing requirement, the addition of such descriptive term does not preclude a finding of confusing similarity. See e.g., WIPO Overview 3.0, section 1.8.
Accordingly, the Panel finds that the Complainant has established that the disputed domain names are confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied. Given this and the matters addressed below including that “mojo” is a word in ordinary usage referring to a characteristic or attribute, it is unnecessary to decide whether the disputed domain names are confusingly similar to the Complainant’s other registered trademarks.
D. 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 names.
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.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. The ultimate burden of proof, however, remains with the Complainant. See e.g., WIPO Overview 3.0, section 2.1.
It is not in dispute between the Parties that the Complainant has not authorised the Respondent to use the disputed domain names. Nor is the Respondent affiliated with it.
From Annex F to the Response, it appears that the Respondent is carrying on business in the provision of services of the kinds described above, possibly on a modest scale. That would not qualify as an offering of goods or services in good faith, however, if the conduct were in infringement of the Complainant’s rights or otherwise targeting or passing off the Complainant’s trademark and reputation.
The disputed domain names are very close to the Respondent Limited Liability Partnership’s name.
The Respondent was, however, registered under that name after the first three disputed domain names – albeit in the space of a few weeks only. The registration of the disputed domain names therefore does not fall strictly within the terms of paragraph 4(c)(iii) of the Policy.
The Respondent denies knowledge of the Complainant or its trademarks when registering (at least the first three) disputed domain names.
In the context of the present case, that denial is not inherently implausible. First, as the Respondent points out, both “cloud” and “mojo” are ordinary words. While not directly descriptive of the services provided by the Complainant or the Respondent, their use in combination for cloud-based services of the kind in question is not so fanciful or surprising that knowledge or awareness of the Complainant’s trademark can be readily presumed.
The Complainant asserts that it has made extensive use of its trademarks so that they are well-known, with a substantial and widespread reputation throughout the world. As a result, the Complainant contends that the considerable value and goodwill of the Complainant’s trademarks “could not have been unknown” to the Respondent.
As noted above, it is not in dispute between the Parties that the Complainant has servers in the United States and the Netherlands. Nor does it appear to be in dispute that the Complainant has been using its MOJOHOST trademark, at least in the United States, for many years. It also appears that “MojoCloud” is the brand name the Complainant uses for a scalable object storage service which the Complainant offers from its website at ”www.mojohost.com”.
Apart from that, the Complainant has not provided any evidence to support its claim to reputation and goodwill so extensive that the Respondent must have been aware of the Complainant’s trademarks.
There is no evidence of sales revenues. There is no evidence of advertising expenditure. Bearing in mind that the Complainant says it uses the domain name, <mojocloud.com>, only to redirect to the Complainant’s main website at ”www.mojohost.com”, there is no evidence of the volume of traffic either to the “www.mojohost.com” website or being redirected from the <mojocloud.com> domain name.
Furthermore, the Respondent has registered CLOUDMOJO TECH as a trademark in India.
As noted above, the Respondent’s trademark was registered only recently. However, typically it would not be an infringement of another person’s registered trademark to use a registered trademark within the scope of the goods or services specified in the registration in jurisdictions deriving their trademark laws from the British tradition. This appears to be the effect of section 28 of the Indian Trade Marks Act 1999 which provides:
“Rights conferred by registration.
(1) Subject to the other provisions of this Act, the registration of a trade mark shall, if valid, give to the registered proprietor of the trade mark the exclusive right to the use of the trade mark in relation to the goods or services in respect of which the trade mark is registered and to obtain relief in respect of infringement of the trade mark in the manner provided by this Act.
(2) The exclusive right to the use of a trade mark given under sub-section (1) shall be subject to any conditions and limitations to which the registration is subject.
(3) Where two or more persons are registered proprietors of trade marks, which are identical with or nearly resemble each other, the exclusive right to the use of any of those trade marks shall not (except so far as their respective rights are subject to any conditions or limitations entered on the register) be deemed to have been acquired by any one of those persons as against any other of those persons merely by registration of the trade marks but each of those persons has otherwise the same rights as against other persons (not being registered users using by way of permitted use) as he would have if he were the sole registered proprietor.”
The Respondent’s trademark is not registered subject to limitations or conditions.
By its terms, section 28 of the Indian Trade Marks Act 1999 confers rights only if the registration is valid.
Plainly, the Respondent did not commence using its trademark in India until after the Complainant began using or registered its trademarks, at least in the United States.
Whether the earlier adoption and use of any of its trademarks by the Complainant provides a basis to invalidate the Respondent’s registered trademark is not something that the Complainant has sought to argue.
While the Respondent’s trademark was registered after the Complaint was filed, however, the Complainant was aware that the Respondent’s trademark application was pending the when it filed the Complaint. The Complainant does not appear to have taken any steps to oppose the registration of the trademark by the Respondent.
Nor has the Complainant provided any evidence to indicate use of its trademarks, especially the MOJOCLOUD trademark, in India although, of course, the Panel accepts that the Complainant’s website was accessible from India when the Respondent registered the disputed domain names and adopted the trademark CLOUDMOJO TECH.
In circumstances where the Respondent has a subsisting registered trademark in India for the CLOUDMOJO TECH trademark and appears to be using that trademark in connection with the services for which it is registered, therefore, the Panel finds that the Complainant has not established that the Respondent does not have rights or legitimate interests in the disputed domain names.
Accordingly, the Complainant has not established the second requirement under the Policy. Therefore, the Complaint must fail and no good purpose would be served by considering the third requirement under the Policy.
For the foregoing reasons, the Complaint is denied.
Warwick A. Rothnie
Date: January 3, 2022
1 Mr Parvez Banatwala is one of the two directors of this limited liability partnership. Unless it becomes necessary to distinguish between them, the Panel will simply refer to “the Respondent”.