Cogent, Inc. v. Vishnu Kotimreddy a/k/a Cogent Systems a/k/a Vishnu K. Kotimreddy
Claim Number: FA0807001216169
Complainant is Cogent,
Inc. (“Complainant”), represented by Anne
F. Bradley, of Christie, Parker & Hale, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <cogentsystems.net>, registered with Tucows Inc. and <kogentsystems.com>, registered with Melbourne It, Ltd. d/b/a Internet Nam,.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 17, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 18, 2008.
On July 18, 2008 Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <cogentsystems.net> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 21, 2008, Melbourne It, Ltd. d/b/a Internet Nam confirmed by e-mail to the National Arbitration Forum that the <kogentsystems.com> domain name is registered with and Melbourne It, Ltd. d/b/a Internet Nam and that Respondent is the current registrant of the names. Melbourne It, Ltd. d/b/a Internet Nam has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Nam registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 31, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 20, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@cogentsystems.net and postmaster@kogentsystems.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 26, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <cogentsystems.net> and <kogentsystems.com> domain names are identical and confusingly similar to Complainant’s COGENT SYSTEMS mark, respectively.
2. Respondent does not have any rights or legitimate interests in the <cogentsystems.net> and <kogentsystems.com> domain names.
3. Respondent registered and used the <cogentsystems.net> and <kogentsystems.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Cogent, Inc., produces high-quality biometric identification systems and products. Complainant has operated under the COGENT (Reg. No. 3,227,211 issued April 10, 2007) and COGENT SYSTEMS (Reg. No. 2,966,725 issued July 12, 2005) marks, both of which were registered with the United States Patent and Trademark Office (“USPTO”). Complainant has operated in this industry for 14 years, and has owned and operated the <cogentsystems.com> domain name since 1996. Complainant has expended significant resources in using the COGENT SYSTEMS mark throughout the world, and in 2007, obtained approximately $80 million in sales.
Respondent registered the <cogentsystems.net> domain name on April 5, 2004, and the <kogentsystems.com> domain name on December 17, 2007. The <cogentsystems.net> domain name resolves to a website that appears to offer software services, while the <kogentsystems.com> domain name resolves to an “under construction” web page.
Paragraph 15(a) of the Rules instructs this 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant need not demonstrate rights
in a mark through registration of the mark with the USPTO in order to achieve
UDRP standing, so long as Complainant can achieve the requisite secondary
meaning for common law rights under Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA
721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant
need not own a valid trademark registration for the ZEE CINEMA mark in order to
demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat.
Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a
trademark registration if a complainant can establish common law rights in its
mark).
Complainant alleges
that it has used the COGENT SYSTEMS mark since at least 2000 in connection with
its operations worldwide, and that it has achieved significant goodwill and
reputation. Complainant also alleges
that its customers include various police departments and federal
agencies. The Panel finds that this
evidence demonstrates the requisite secondary meaning for Complainant to
achieve common law rights in the mark under Policy ¶ 4(a)(i). See
Respondent’s <cogentsystems.net> domain name contains Complainant’s entire
and unaltered COGENT SYSTEMS mark, and adds the generic top-level domain
“.com.” The Panel finds that this
disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i). See
Abt Elecs., Inc. v. Ricks, FA 904239
(Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s
<abt.com> domain name is
identical to Complainant’s ABT mark since addition of a generic top-level
domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Snow Fun, Inc. v. O'Connor, FA
96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name
<termquote.com> is identical to the complainant’s TERMQUOTE mark).
Respondent’s <kogentsystems.com>
domain name contains Complainant’s COGENT SYSTEMS mark, however it replaces the
first “c” with “k” in “cogent.” The
Panel finds the introduction of a phonetically insignificant letter
substitution does not distinguish the disputed domain name from Complainant’s
COGNET SYSTEMS mark. Also, the addition
of the generic top-level domain “.com,” is irrelevant because a top-level
domain is a required element of every domain name. Thus, the Panel finds Respondent’s disputed
domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶
4(a)(i). See Pfizer Inc. v. Phizer's Antiques, D2002-0410
(WIPO July 3, 2002) (finding the <phizer.com> domain
name phonetically equivalent and confusingly similar to the PFIZER
mark); see also Vivendi Universal
Games, Inc. v. Cupcake Patrol, FA 196245 (Nat. Arb. Forum Oct. 31, 2003)
(“Respondent's <blizzerd.com> domain name is confusingly similar to
Complainant's BLIZZARD mark. The replacement of the letter 'a' in Complainant's
BLIZZARD mark with the letter 'e' creates a domain name that is phonetically
identical and confusingly similar to Complainant's mark.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges Respondent lacks rights and legitimate interests in the disputed domain names. Complainant must establish a prima facie case, then the burden shifts to Respondent to establish it has rights or legitimate interests in the disputed domain names. Complainant has produced a sufficient prima facie case, and Respondent has failed to respond to the allegations. Therefore, the Panel may presume Respondent lacks rights and legitimate interests in the disputed domain names; however, the Panel will examine the record in an attempt to deduce otherwise. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint).
Although the WHOIS information lists Respondent as “Cogent Systems,” the Panel finds that without further evidence to support that Respondent is commonly known by “Cogent Systems,” the assertion must be rejected. There is no evidence in the record to support that Respondent is commonly known by the disputed domain names or that Complainant has authorized Respondent to use its COGENT SYSTEMS mark. Thus, the Panel finds Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
Respondent uses the <cogentsystems.net> domain name to operate a website which displays links to competing software products. The Panel finds Respondent’s use of the disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
Respondent’s <kogentsystems.net> domain name resolves to a website which merely states it is under construction. The Panel finds Respondent’s failure to make an active use of the disputed domain name is evidence Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when the respondent fails to use disputed domain names in any way).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <cogentsystems.net> domain name to display links to competing software products. The Panel finds Respondent’s actions are evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Respondent is using the identical <cogentsystems.net> domain name to profit by displaying links to software products that compete with Complainant’s business. The Panel finds Respondent is attempting to profit from the goodwill Complainant has established in its COGENT SYSTEMS mark. Also, Respondent is attempting to confuse Internet users as to the affiliation of Complainant with the <cogentsystems.net> domain name. Thus, the Panel finds Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Respondent’s <kogentsystems.net> domain name resolves to a website which merely states it is under construction. The Panel finds Respondent’s failure to develop the <kogentsystems.net> domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s failure to make an active use of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that failure to make an active use of a domain name permits an inference of registration and use in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cogentsystems.net> and <kogentsystems.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: September 8, 2008
National
Arbitration Forum
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