Cognizant Technology Solutions U.S. Corporation v. Kunal Arora
Claim Number: FA2102001932307
Complainant is Cognizant Technology Solutions U.S. Corporation (“Complainant”), represented by David M. Kramer of DLA Piper LLP (US), District of Columbia, USA. Respondent is Kunal Arora (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cognizantindiafoundation.org>, registered with NameCheap, Inc..
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.
David S. Safran, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 16, 2021; the Forum received payment on February 16, 2021.
On February 17, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <cognizantindiafoundation.org> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 17, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 9, 2021 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 postmaster@cognizantindiafoundation.org. Also on February 17, 2021, 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 8, 2021.
On March 12, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David S. Safran 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.
A. Complainant
Complainant provides business and technology consulting services via over 100 delivery centers worldwide and had approximately 260,000 employees as of July 31, 2018, being #195 in the 2018 Fortune 500, with net revenue over $14.8 billion.
The <cognizantindiafoundation.org> domain name is confusingly similar to Complainant’s registered trademarks because it incorporates Complainant’s marks and merely adds a tld and the wording “indiafoundation” which does not serve to distinguish that name from Complainant’s COGNIZANT Marks because <cognizantindiafoundation.org> is a logical location for Complainant to host a website relating to an India-based foundation that is equivalent to the US-based foundation with a website at <cognizantusfoundatioin.org>.
Respondent is a former employee of Complainant. Complainant has not licensed or otherwise permitted Respondent to use the COGNIZANT Marks or to apply for any domain name incorporating the COGNIZANT Marks.
Complainant owns exclusive rights in the COGNIZANT Marks which predate Respondent’s registration of the Domain Name, and has numerous United States federal and international registrations therefor, so that Respondent cannot establish legitimate rights in the Domain Name.
Respondent is using the domain name to attract and defraud third parties that may be interested in obtaining COGNIZANT-branded information technology or consulting services, or otherwise engaging in business with Complainant, and “to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of its website.
Given that the COGNIZANT Marks are “well-known” and that Complainant has no connection or affiliation with the Domain Name <cognizantindiafoundation.org>, the Respondent’s registration of the Domain Name demonstrates opportunistic bad faith.
As a former employee of Complainant, Respondent was clearly aware of Complainant’s registration and use of the <cognizantusfoundation.org> domain name and the COGNIZANT Marks and registered the Domain Name only a few months after his termination by Complainant so that the timing of the registration of the Domain Name supports a finding of opportunistic bad faith. Additionally, the Domain Name <cognizantindiafoundation.org> is used as part of a scheme whereby Respondent fraudulently represented himself as a Corporate Social Responsibility (CSR) Lead of Cognizant.
B. Respondent
Respondent hasn't made any commercial use for gain with the disputed registered domain <cognizantindiafoundation.org>.
Complainant has rights in the mark COGNIZANT which is well known worldwide. The <cognizantindiafoundation.org> domain name is confusingly similar to Complainant’s registered trademarks. The <cognizantindiafoundation.org> domain name was registered with knowledge of Complainant’s mark and without authorization to do so from Complainant.
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.
Preliminary Issue: Concurrent Court Proceedings
Respondent has requested that these proceeding be suspended pending the outcome of EEOC proceedings between the parties that are in progress in the U.S. and India. The ICANN Rules for Uniform Domain Name Dispute Resolution Policy, Rule 18(a) provides that, in event of any legal proceedings initiated during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision. In the present case, the Panel fails to see a nexus between EEOC proceedings and this dispute. Accordingly, the Panel has decided to deny the requested stay and to proceed to a decision.
Respondent asserts rights in the COGNIZANT mark through its registration of the mark with the USPTO (e.g. Reg. No. 2,484,075, registered Sep. 4, 2001; Reg. No. 2,498,530, registered October 16, 2001). See Compl. Exhibit C. Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel may find Complainant has demonstrated rights in the COGNIZANT mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <cognizantindiafoundation.org> domain name is identical or confusingly similar to Complainant’s COGNIZANT mark as it contains the mark in its entirety and merely adds the phrase “India foundation” and the “.org” gTLD. The addition of a geographic term, a generic term, and a gTLD may fail to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Dell Inc. v. SNAB Corporation, FA 1785051 (Forum May 30, 2018) (finding the inclusion of a geographic term did not distinguish the domain name and increased possible confusion, as “[t]he geographic term “hyderabad” is also suggestive of Complainant as Complainant has corporate offices in Hyderabad, India.”); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain as the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends Respondent lacks rights or legitimate interests in the <cognizantindiafoundation.org> domain name as Respondent is not and has not been commonly known by the disputed domain name nor has Complainant authorized Respondent to use the COGNIZANT mark. Relevant WHOIS information, among other evidence may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information, along with the response, for the disputed domain name lists the registrant as “Kunal Arora,” and there is no other evidence to suggest that Respondent was authorized to use the COGNIZANT mark. Therefore, the Panel may find Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant has had no business relationship whatsoever with Respondent. Complainant has not licensed or otherwise permitted Respondent to use the COGNIZANT Marks or to apply for any domain name incorporating the COGNIZANT Marks. See Bethesda Softworks LLC v. OOO McHost.Ru c/o McHost Ltd (Forum Case No. FA0903001250885) (finding that because Respondent is not a licensee of Complainant, and that Respondent is not authorized to register or use the disputed domain name or the FALLOUT Mark, under Policy ¶ 4(c)(ii)).
Furthermore, because Complainant owns exclusive rights in the COGNIZANT Marks which predate Respondent’s registration of the Domain Name, and has numerous United States federal and international registrations therefore, Respondent cannot establish legitimate rights in the Domain Name. See, e.g., Playboy Enterprises, Inc., Playboy Enterprises International, Inc. v. FS1 a/k/a Carlton Crider (WIPO Case No. D2012-0181) (“An infringing use of Complainant’s trademark cannot give rise to a legitimate right or interest on the part of Respondent.”).
Thus, the Panel finds that Respondent has no rights or legitimate interest in the Domain Name.
Complainant contends that Respondent registered the <cognizantindiafoundation.org> domain name in bad faith as Respondent had actual knowledge of Complainant’s rights to the COGNIZANT mark prior to registering the disputed domain name, evidenced by the famous nature of Complainant’s mark. Worldwide prominence of a mark, along with Respondent’s status as a former employee or contractor with Complainant, can demonstrate actual knowledge and show bad faith per Policy ¶¶ 4(a)(iii). See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that the respondent had actual and constructive knowledge of the complainant’s EXXON mark given the worldwide prominence of the mark and thus the respondent registered the domain name in bad faith); see also Vita-Mix Management Corporation v. OOO "WG-STAHL", FA 1725713 (Forum May 30, 2017) (“Respondent must have had actual knowledge of the VITAMIX mark because Complainant previously authorized Respondent to distribute its product until Complainant terminated the non-exclusive distribution agreement on January 16, 2015.”). Here, Complainant argues that Complainant’s COGNIZANT mark comprises a valuable and internationally recognized brand because 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. Complainant claims, and Respondent acknowledges, that Respondent was previously an employee of Complainant. The Panel therefore finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cognizantindiafoundation.org> domain name be TRANSFERRED from Respondent to Complainant.
David S. Safran, Panelist
Dated: March 29, 2021
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