The legitimate interest of the respondent justified by the use of his trademark in connection with the services for which it is registered.
A respondent’s legitimate interest in UDRP proceedings is likely to be acknowledged when its registered domain names reproduce its trademark and said trademark is used for the services it covers, even though the trademark was registered subsequently to the domain name registrations. It is therefore essential for the complainant to prove in great detail that the defendant has sought to infringe its IP rights.
On 27 September 2021, Easy Online Solutions filed a UDRP complaint seeking the transfer of the domain names <cloud-mojo.com>, <cloudmojo.tech>, <cloudmojotech.com> and <cloudmojotech.website>, which were registered on varying dates between 8 May 2020 and 12 February 2021 by Cloudmojo Tech LLP.
The applicant is a US-based company specializing in the provision of web hosting, content distribution and other “software as a service (SaaS)” services. It owns four word trademarks registered in the United States between the years of 2012 and 2019 for services in class 42 relating to the signs ‘MOJOHOST’, ‘THAT’S GOOD MOJO’, ‘MOJOCDN’ and ‘MOJOCLOUD’. In addition, it has been using the domain name <mojohost.com> since 2002, and has also reserved the domain name <mojocloud.com> which redirects to the website www.mojohost.com.
Cloudmojo Tech LLP, established in June 2020 in Mumbai, India, specializes in the resale and distribution of Microsoft products and has reserved the disputed domain names in the course of its business. Furthermore, prior to the start of the proceedings in June 2022, the defendant filed the word trademark “CLOUDMOJO TECH” in India for services in Class 42, and notably for “computer programming”, “technology consulting” and “SaaS services”. Said trademark was registered on 9 December 2021.
The Panel acknowledges that there is a likelihood of confusion between the disputed domain names and the trademark “MOJOCLOUD” insofar as they consist of the same verbal elements, “MOJO” and “CLOUD”, although the terms are reversed.
In terms of the respondent’s rights or his legitimate interest, the Panel raised several points.
Firstly, the respondent is active in the IT industry, although on a relatively average scale.
Secondly, the domain names are very similar to the respondent’s corporate name. However, the respondent assumed the name only after the first three domain name registrations, i.e. a few weeks later.
The respondent argues that he was not aware of the complainant’s company, nor of its trademarks, at the time of the reservation of the disputed domain names (or at least of the first three domain names).
In fact, it must be noted that the term “cloud” is rather descriptive of the services concerned. In addition, although the term “mojo” is not descriptive of the services concerned, it is still a generic term. Thus, it is plausible that the respondent chose the term “mojo” without having been aware of the complainant’s trademarks.
This hypothesis is supported by the fact that the applicant’s marks do not seem to be known throughout the world. The Panel notes that the applicant has servers in the USA and the Netherlands. He has also been using the trademark “MOJOHOST” in the United States for numerous years. “MojoCloud” is the name used for a service offered on its website www.mojohost.com. Therefore, the claim that its trademarks have a substantial international reputation is not proven. The claimant provides no evidence of sales revenue, advertising expenditure, or of the volume of traffic generated by the www.mojohost.com website and by the redirection of www.mojocloud.com to www.mojohost.com.
In addition, the respondent has registered the trademark ‘CLOUDMOJO TECH’ in India, which is used for the relevant services. The applicant was aware of this registration application . However, no action was taken to oppose it. From this inaction it can be inferred that the applicant has no business in India. The Panel notes that although the applicant’s website is accessible from India, it has not demonstrated any activity in that territory.
In view of these elements, the complaint is rejected.
The decision is not surprising in that it is customary for a company to reflect its corporate name in a domain name, especially since the use of the respondent’s trademark is correlated with the services for which it is registered.
As such, it was essential for the complainant to prove the use of its marks in India but also to provide further evidence of its alleged international reputation. In view of the defendant’s corporate name, which was only revealed after the complaint was filed, a strong India-centered case was essential to have a chance of obtaining the transfer of the names.
(WIPO, Arbitration and Mediation Center, Case No. D2021-3197, 3 January 2022, Easy Online Solutions, Ltd. d/b/a MojoHost v. Ahmed Parvez Banatwala, Cloudmojo Tech LLP, and Ahmed Parvez Banatwala, Construma Consultancy Pvt. Ltd)