The Complainant is Cognizant Technology Solutions US Corporation of Teaneck, New Jersey, United States of America, represented by DePenning & DePenning, India.
The Respondents are Piotr Oleksa of London, United Kingdom of Great Britain and Northern Ireland and Identify Protect Limited of Godalming, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with D, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 14, 2012. On May 16, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 16, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. On May 21, 2012, the Center sent an email communication to the Complainant, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 23, 2012.
The Center verified that the Complaint together with the amended 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 May 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2012. The Respondent Piotr Oleksa submitted his Response with the Center on June 14, 2012. The Respondent Identify Protect Limited did not submit a Response.
The Center appointed Assen Alexiev as the sole panelist in this matter on June 25, 2012. 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 specializes in providing information technology, consulting, and business process outsourcing services. It operates over 50 delivery centers and had 104,000 employees worldwide as of December 2010. The Complainant is listed in Forbes Global 2000, NASDAQ 100, S&P 500 and Fortune 1000.
The Complainant has registered the trademark ‘COGNIZANT’ in several countries around the world including the following:
- European Community word mark COGNIZANT with registration number 4714655, registered on August 2, 2007 for goods and services in international classes 09, 16, 35 and 42;
- United States word mark COGNIZANT with registration number 2498530, registered in the United States of America on October 16, 2001 for goods and services in international classes 16, 35, 36 and 42; and
- United States word mark COGNIZANT with registration number 2484075, registered in the United States of America on September 4, 2001 for services in international class 42.
The Complainant is also the owner of the domain name .
The Domain Name was registered on September 21, 2011. 5. Parties’ Contentions A. Complainant
The Complainant submits that the Domain Name is identical to its COGNIZANT trademark. As a result of the constant usage of the brand COGNIZANT, it has become representative of the Complainant and its services.
The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent has not been authorized to use the trademark nor has the Complainant consented to its incorporation in any domain name by the Respondent. The Respondent has not made any use of the Domain Name since its registration, and its only interest is in creating a false impression of being affiliated with the Complainant.
The Complainant also alleges that the Domain Name has been registered and is being used in bad faith. The Respondents are aware of the Complainant’s popularity and aim to benefit from the latter’s well-established brand name. The intention behind the registration and use of the Domain Name is to give the wrong impression of being connected to the easily recognizable and highly respected trademark of the Complainant. By using the misleading Domain Name the Respondent is aiming at creating confusion amongst the public who are likely to associate the Domain Name with the Complainant’s prominent mark. For these reasons, the Respondents’ intentions are allegedly to make profit by selling the Domain Name. In this regard, the Complainant also refers to the passive holding of the Domain Name, which purportedly displays the absence of any legitimate intention of genuine active use by the Respondent. The Complainant concludes that the Respondents’ only motive is to benefit illegally from the Domain Name and not to pursue any legitimate activity. Finally, the Complainant claims that by holding the Domain Name, the Respondents are obstructing the Complainant from effectively pursuing its business plans online and are putting the Complainant at a financial risk in addition to potentially endangering the brand value attached to the COGNIZANT trademark.
On the basis of the above, the Complainant requests the transfer of the Domain Name. B. Respondent
The Respondent Piotr Oleksa denies the allegations of the Complainant. He states that the website of the Complainant and the website at the Domain Name are fundamentally different, which makes any confusion of Internet users impossible. The website at the Domain Name is a religious website written in a different language, and offers services which are entirely different from those of the Complainant. It is not plausible that the public may be confused in any way about the affiliation of the website at the Domain Name.
The Respondent Piotr Oleksa asserts that he is using the word “cognizant” entirely in its ordinary, everyday dictionary meaning, to which the trademark rights of the Complainant do not extend. This word is used widely enough and in different contexts, and is recognized outside the Complainant’s line of business. There are various examples of the use of this word in book titles and other texts, and this is easily revealed by a simple Google search of the key word “cognizant”. The Respondent further points out that there exist a number of domain names containing this word with various extensions registered by different entities, which allegedly proves that the Complainant’s rights do not cover the generic use of the dictionary word “cognizant”.
The Respondent Piotr Oleksa also alleges that he has genuine intentions for the active use of the Domain Name. He has changed the domain name server from the Registrar to the hosting company “H”, and uses the email account associated with the Domain Name. The Domain Name is not passively held; a website associated to the Domain Name is under construction, and the Respondent is collecting further materials to be added to the content of this website. The Complainant has never tried to contact the Respondent, and is aware of the Domain Name being under development and not for sale. The Respondent’s choice of the Domain Name is related only to the religious nature of his website and his intent is not to profit by the sale of the Domain Name.
The Respondent Piotr Oleksa asserts that he never had the aim of preventing the Complainant from reflecting its mark in a domain name. There was a significant period of time before the Respondent registered the Domain Name during which the Complainant could have also done so. The Respondent denies having had any previous knowledge of the Complainant’s business. 6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the Domain Name:
(i) that the 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 Domain Name; and
(iii) that the Respondent has registered and are using the Domain Name in bad faith.
By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondents, in compliance with Rules, paragraph 2(a), and the Respondents were given a fair opportunity to present their case.
In this administrative proceeding, the Respondent Piotr Oleksa has submitted a Response, in which he has made clear that he has himself registered and is using the Domain Name. The other Respondent – Identify Protect Limited, has chosen not to submit a formal Response and has not denied any of the statements of Mr. Oleksa. Therefore, the Panel finds it reasonable to accept that either Identify Protect Limited does not disagree with these statements or more likely is merely a proxy registrant for Mr. Oleksa. A. Identical or Confusingly Similar
The Complainant has provided evidence and has thus established its rights in the COGNIZANT trademark, registered for the territories of the European Union and the United States of America.
It is a common practice under the Policy to disregard the TLDs such as the “.co” section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the Domain Name is its “cognizant” element.
The Respondent Piotr Oleksa has contended that in view of the content of the website at the Domain Name, no confusing similarity exists.
As discussed in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.2 the test for identity or confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name. The content of a website (whether it is similar to or different from the business of a trademark holder) would usually be disregarded in the threshold assessment of risk of confusing similarity under the first element of the UDRP, although such content may be regarded as highly relevant to assessment of intent to create confusion (e.g., within a relevant market or language group) under subsequent UDRP elements (i.e., rights or legitimate interests and bad faith).
Applying the above test, the Panel finds that the relevant part of the Domain Name is identical to the COGNIZANT trademark in which the Complainant has rights, and rejects the argument of the Respondent for the lack of confusing similarity as inapplicable for the purposes of the test under paragraph 4(a)(i) of the Policy.
Therefore, the Panel decides that the Domain Name is identical to a trademark, in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant claims that the Respondents have no rights or legitimate interests in the Domain Name, and alleges that no legitimate use of the Domain Name by the Respondents is conceivable, and that the Domain Name was registered and used with the intent to give the wrong impression of being connected to the Complainant and to make an illegal profit by selling the Domain Name, and not to pursue any legitimate activity. However, the Complainant does not submit any evidence in support of its allegations about the intent of the Respondents.
The Respondent Piotr Oleksa asserts that it is using the word “cognizant” in its ordinary, everyday dictionary meaning for a religious website written in a different language, and in order to offer services which are entirely different from those of the Complainant. He also presents a number of examples for the use of the word “cognizant” in different contexts unrelated to the Complainant or to its business.
The Panel accepts the arguments of the Respondent Piotr Oleksa that the word “cognizant” has an ordinary dictionary meaning. The Concise Oxford Dictionary, Seventh edition, 1982, defines the word as meaning “having knowledge, being aware, of” and as having its origin in the Latin language. This shows that the word has long had in the English language an ordinary meaning of a descriptive character. One of the basic principles of trademark law and practice is that trademarks cannot be registered in relation to goods or services for which they are merely descriptive at least without some showing of consumer recognition, i.e., acquired distinctiveness. For this reason, on the evidence before the Panel the Complainant’s trademark rights to the word “cognizant” cannot extend to the ordinary meaning of this word - third persons would normally be free to use it in its ordinary meaning, and such use cannot be regarded as illegitimate under trademark law.
The Respondent has contended that he has made preparations for, and has started using the Domain Name for a religious website entitled “Cognizant of God and Love”, which is entirely different from the Complainant’s website, and which does not refer to the Complainant or to its services in any way. In the Panel’s view, such use of the Domain Name appears to be within the ordinary meaning of the word “cognizant”. In the lack of any evidence to the contrary, the Panel is prepared to accept that this conduct amounts to a legitimate noncommercial or fair use of the Domain Name, made without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.
For these reasons, the Panel finds that the Respondent Piotr Oleksa has rights and legitimate interests in the Domain Name, and the Complainant fails on this issue.
Since the Policy requires that all three elements under Paragraphs 4(a) of the Policy be proven, the Panel does not need to specifically examine whether the Respondents have registered and used the Domain Name in bad faith, in any event, according to the above it is clear to the Panel that the Respondent has not done so. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Assen Alexiev
Sole Panelist
Dated: July 11, 2012
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