Cognizant Technology Solutions U.S. Corporation v. Denzor Richberg
Claim Number: FA1902001828124
Complainant is Cognizant Technology Solutions U.S. Corporation (“Complainant”), represented by David M. Kramer of DLA Piper LLP (US), Washington DC, USA. Respondent is Denzor Richberg (“Respondent”), represented by Christopher B. Brown, Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cognizantconsultants.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 1, 2019; the Forum received payment on February 1, 2019.
On February 1, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cognizantconsultants.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 4, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 1, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org. Also on February 4, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on March 1, 2019.
On March 5, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant states that it is a global leader in business and technology consulting services. It combines a passion for client satisfaction, technology innovation, deep industry and business process expertise, and a global, collaborative workforce. With over 100 delivery centers worldwide and approximately 260,000 employees as of July 31, 2018, Complainant is a member of the NASDAQ-100, the S&P 500, the Forbes Global 2000, and the Fortune 500 and is ranked among the top performing and fastest growing companies in the world. In 2011, Fortune magazine named it as the world's third most admired IT services company in the world. Complainant has rights in the COGNIZANT mark based on registration in the United States in 2001; it uses the mark in connection with business and technology consulting services.
Complainant alleges that the disputed domain name is confusingly similar to its COGNIZANT mark, as it wholly incorporates the mark, merely adding the generic term “consultants” and the “.com” generic top-level domain (“gTLD”).
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain name. Complainant has no business relationship with Respondent, nor has Complainant authorized Respondent to use the COGNIZANT mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to offer services closely related or identical to Complainant’s goods and services for commercial gain.
Further, says Complainant, Respondent registered and is using the disputed domain name in bad faith. Respondent intentionally seeks to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s competing website. Respondent’s created confusion disrupts Complainant’s business by misdirecting users seeking Complainant’s services to Respondent’s offering of competing services. Further, Respondent’s inclusion of a well-known mark in its domain name indicates opportunistic bad faith.
Respondent alleges that the disputed domain name is not confusingly similar to Complainant’s COGNIZANT mark. Complainant’s COGNIZANT mark is unrecognizable within the domain name and Internet users are not likely to believe that there is a connection between the domain and the Complainant's services. The COGNIZANT mark is not distinctive, lacks a secondary meaning, and is not well-known. Rather, in Complainant’s submissions, Complainant appears to be known as “Cognizant Technology Solutions” and not simply the generic term “Cognizant.”
According to Respondent, it has rights and legitimate interests in the disputed domain name as its use of the domain corresponds with its business entity, Cognizant Consulting, LLC, which was first established as a business under the laws of the Commonwealth of Virginia on September 19, 2014. Respondent chose the domain name because it is the most similar to Respondent’s legal business name, “Cognizant Consulting, LLC.” The only matching portion of the mark and the domain name is the generic/descriptive term “Cognizant,” which Respondent uses in its ordinary dictionary meaning. The domain is used to promote the sales of the bona fide services of Respondent’s business of professionally developing professional personnel by teaching, coaching, and inspiring others for the common goal of growing an organization through personal growth and group training of people. This use it in no way competitive with Complainant’s use of its COGNIZANT mark.
Further, says Respondent, there is no evidence to support Complainant’s bad faith contentions against Respondent. Respondent and Complainant do not participate in the selling of the same or similar goods and services. Respondent registered and uses the disputed domain name in connection with coaching services with the common goal of growing an organization. Respondent does not seek to disrupt Complainant’s business by attracting Complainant’s potential customers for commercial gain.
Complainant owns the mark COGNIZANT, with rights dating back to at least 2001. Complainant uses the mark to promote its business and technology consulting services.
The disputed domain name was registered on September 27, 2014.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent registered a business name of “Cognizant Consulting LLC,” on September 19, 2014 and has been doing business under that name since that time. The resolving website promotes Respondent’s consulting services.
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."
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.
Complainant contends that the disputed domain name is confusingly similar to the COGNIZANT mark as it wholly incorporates the mark and merely adds the generic term “consultants” and the “.com” gTLD.
Respondent contends that the disputed domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark.
Under Policy ¶ 4(a)(i) panels considers only whether Complainant has rights in the mark and whether the disputed domain name is prima facie confusingly similar to Complainant’s mark. Paragraph to 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition well explains the matter:
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. …
While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
Here, the disputed domain name incorporates Complainant’s mark in its entirety and merely adds a generic term and a gTLD. Addition of a generic term and/or a gTLD is generally not sufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).).
For the reasons set forth above, the Panel finds that the <cognizantconsultants.com> domain name is confusingly similar to Complainant’s COGNIZANT mark per Policy ¶ 4(a)(i).
As noted above, Complainant must prove all three elements of the Policy, including that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Pursuant to Policy ¶ 4(c)(i) and (ii), Respondent can demonstrate rights and legitimate interests in a disputed domain name if before any notice of the dispute it used the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or if it has been commonly known by the domain name.
Complainant alleges that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services because it infringes Complainant’s trademark. Respondent denies infringing Complainant’s trademark.
The Panel finds that the question of whether nor not Respondent’s use of Complainant’s mark is legitimate falls outside of the scope of the present proceedings, and is best resolved in national courts. See Happy State Bank d/b/a GoldStar Trust Company v. Ronny Yakov / CrowdPay.us, Inc. FA 1802648 (Forum Sept. 27, 2018); see also Abbott Labs. v. Patel, FA 740337 (Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else); see also Stevenson Indus., Inc. v. CPAP-PRO Online, FA 105778 (Forum Apr. 25, 2002) (“If the existence of [rights or legitimate interests] turns on resolution of a legitimate trademark dispute, then Respondent must prevail, because such disputes are beyond the scope of this proceeding.”).
Furthermore, for the reasons set forth below, the Panel finds that the above question is not dispositive for the present proceedings.
Complainant does not allege that Respondent has not been commonly known by the disputed domain name.
Respondent alleges that it has rights and legitimate interests in the disputed domain name as its use of the domain corresponds with its business and is similar to its legal business name. Specifically, Respondent provides a copy of the Articles of Cancellation of a Virginia Limited Liability Company showing the name of “Cognizant Consulting LLC,” dated September 19, 2014, signed by Denzor Richberg. Respondent also provides a business entities search of the South Carolina Secretary of State, which shows that “Cognizant Consulting LLC” is registered in the State to agent “Denzor Richberg,” registration date November 9, 2016. Using a domain name which corresponds with a business entity can provide evidence of having rights and legitimate interests under Policy ¶ 4(c)(ii). See Modern Props, Inc. v. Wallis, FA 152458 (Forum June 2, 2003) (finding that as the respondent had registered its domain name as its business identity with the New York County Clerk a month after registering the domain name and then conducted his prop rental business under that name, it had demonstrated rights and legitimate interests in the domain name).
The Panel finds that Complainant has failed to satisfy its burden of proving that Respondent has not been commonly known by the disputed domain name per Policy ¶ 4(c)(ii). Consequently, the Panel finds that Complainant has failed to satisfy its burden of proving that Respondent has no rights or legitimate interests in the disputed domain name.
As noted above, the Panel finds that Complainant has failed to satisfy its burden of proving that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Consequently, the issue of bad faith registration and use is moot. See Record Connect, Inc. v. Chung Kit Lam / La-Fame Corporation, FA 1693876 (Forum Nov. 3, 2016) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name). Therefore, the Panel will not rule on this issue.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <cognizantconsultants.com> domain name REMAIN WITH Respondent.
Richard Hill, Panelist
Dated: March 6, 2019
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