Cognizant Technology Solutions U.S. Corporation v. peter b / Cognizant Consulting Limited
Claim Number: FA1808001803724
Complainant is Cognizant Technology Solutions U.S. Corporation (“Complainant”), represented by David M. Kramer of DLA Piper LLP, Washington DC. Respondent is peter b / Cognizant Consulting Limited (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cognizant-consulting.net>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol Stoner, Esq., Arbitrator as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 28, 2018; the Forum received payment on August 28, 2018.
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On Aug 29, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cognizant-consulting.net> 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 August 31, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 20, 2018 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@cognizant-consulting.net. Also on August 31, 2018, 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 September 19, 2018.
On September 19, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Carol Stoner, Esq., 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 <cognizant-consulting.net>, be transferred from Respondent to Complainant.
A. Complainant’s Contentions
Complainant, Cognizant Technology Solutions U.S. Corporation, is a global leader in business and technology consulting services. Complainant has rights in the COGNIZANT mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,484,075, registered Sep. 4, 2001). See Compl. Annex B. Respondent’s <cognizant-consulting.net> domain name is confusingly similar to Complainant’s COGNIZANT mark, as the domain name wholly incorporates the mark, and Respondent has merely added the descriptive term “consulting,” and the “.net” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <cognizant-consulting.net> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed 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 domain name
in connection with a purported offering of services closely related to Complainant’s services.
Respondent registered and is using the <cognizant-consulting.net> domain name in bad faith. Respondent uses the name to disrupt Complainant’s business and attract Internet users for commercial gain. Further, because Complainant’s mark is so well known, it is clear Respondent had actual knowledge of the mark and Complainant’s rights therein at the time it registered and subsequently used the domain name.
B. Respondent’s Contentions
Respondent does have rights and legitimate interests in the <cognizant-consulting.net> domain name. Respondent uses the domain name to operate a recruitment company without engaging in any other type of business. Respondent provides recruitment services for many companies throughout the Asia-Pacific region in the financial industry. Further, Respondent does not use the domain name to divert consumers away from Complainant, and doesn’t offer any services which would compete with those offered by Complainant. Additionally, the term “cognizant” is a dictionary term with many meanings, and Complainant does not hold exclusive rights in the term on the Internet.
Respondent did not register and use the domain name in bad faith. Respondent uses the domain name to offer recruitment services, and does not use the domain name to divert consumers away from Complainant, and doesn’t offer any services which would compete with those offered by Complainant. Additionally, the term “cognizant” is a common term to which Complainant does not hold exclusive rights. Further, Respondent was not aware of Complainant’s business, as Complainant almost exclusively operates in the North American/European market, while Respondent conducts business in Asia.
The Panel notes that Respondent registered the <cognizant-consulting.net> domain name on November 23, 2010, per GoDaddy WHOIS records.
Panel has made the following findings:
(1) The domain name, <cognizant-consulting.net>, 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 <cognizant-consulting.net>; and
(3) the domain name, <cognizant-consulting.net>, has been registered and is being used in bad faith.
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:
(4) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(5) Respondent has no rights or legitimate interests in respect of the domain name; and
(6) the domain name has been registered and is being used in bad faith.
Complainant claims rights in the COGNIZANT mark based upon its registration of the mark with the USPTO (e.g. Reg. No. 2,484,075, registered Sep. 4, 2001). See Compl. Annex B. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the COGNIZANT mark for the purposes of Policy ¶ 4(a)(i).
Panel rules that Respondent’s <cognizant-consulting.net> domain name is identical or confusingly similar to Complainant’s mark because the domain name wholly incorporates the mark, and Respondent has merely added the descriptive term “consulting,” and the “.net” gTLD. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Moreover, Panel finds that the addition of the term “consulting” to Respondent’s mark, not only does not distinguish the mark from Complainant’s mark, but serves to further identify the mark with the core consulting services of Complainant.
The Panel therefore finds, that the <cognizant-consulting.net> domain name is confusingly similar to the COGNIZANT mark under Policy ¶4 (a)(i).
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 that Respondent has no rights or legitimate interests in the <cognizant-consulting.net> domain name. Relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the
disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “peter b / Cognizant Consulting Limited” as the registrant. See
Compl. Annex F. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the COGNIZANT mark. Panel rules that this absence of asserted evidence constitutes a lack of rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant convincingly asserts that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel rules that Respondent is not commonly known by the <cognizant-consulting.net> domain name under Policy ¶ 4(c)(ii).
Complainant convincingly argues that Respondent uses the domain name in connection with a purported offering of services closely related to Complainant’s services. Using a confusingly similar domain name that resolves in a webpage that directly competes with a complainant generally fails to indicate a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent
services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Complainant provides a screenshot of the resolving webpage associated with the domain name, which contains the title “Cognizant Consulting” and purports to offer IT consulting services. See Compl. Annex G. As such, the Panel rules that Respondent offers services in competition with those offered by Complainant, failing to confer rights and legitimate interests in the domain name.
Panel is also persuaded by Complainant’s Exhibit B which is a chart of Select Cognizant Trademark Registrations, including trademarks filed both in the United States and in Hong Kong, that Complainant owns exclusive rights in Cognizant Marks, which predate Respondent’s registration of the Domain Name by more than 14 years. Thus, Respondent cannot establish legitimate rights in the Domain Name. See, e.g., Playboy Enterprises, Inc., Playboy Enterprises International, Inc. v. FSI a/k/a/ Carlton Crider (WIPO Case No. D2012-0181) which Complainant attached as Annex L. (“An infringing use of Complainant’s trademark cannot give rise to a legitimate right or interest on the part of Respondent.”)
Complainant has thus established its prima facie case, and Respondent has subsequently failed to satisfy its burden to show that it does have rights or legitimate interests in the disputed domain name.
The Panel therefore concludes therefore, that Respondent lacks rights and legitimate interests, pursuant to UDRP Policy ¶ 4(a)(ii).
Panel rules that Respondent engaged in “opportunistic bad faith” registration of the disputed mark. See Koninklijke Philips Electronics N.V. v. Philip Vlasov (WIPO Case No. D2011-2274) (“opportunistic bad faith is shown when a domain name incorporating a well-known mark is registered “by someone with no connection with the product…”).
Here, the mark Cognizant has been trademarked as early as 1996, some 14 years before Respondent first registered its Domain Name in 2010. In these ensuing 14 years, Cognizant had the stature of being a member of the NASDAQ-100, the S&P 500 and the Fortune 500. The Panel concludes that the Cognizant marks were well known, particularly to those in the IT industry, regardless of geographic location. And it can be inferred at time of registration, that Respondent had some knowledge of the names of major IT corporations, as he purportedly offered a personnel recruitment and selection service, tailored and targeted to the IT market. As it is undisputed by both Complainant and Respondent, that Respondent has no connection with the Defendant, Panel concludes that Respondent engaged in “opportunistic bad faith” registration of disputed domain name, pursuant to Policy ¶4 (b) (iv).
Panel has viewed a screenshot of Respondent’s resolving webpage, at Compl. Annex G. Panel notes that Respondent’s webpage is enshrouded in the wardrobe of consulting, which is the mainstay business of Complaint and the disavowed business of Respondent, who repeatedly maintains that Respondent is only involved in the IT recruitment and staffing business. Yet, Respondent produced a convincing website impersonation of Cognizant’s consulting business, includes the title of Cognizant.
Consulting and the ending tagline of “Consult our team of experienced consultants for further details on the consulting services available.” Included in the body of the web page is the boast that “Within the IT Market, Cognizant specializes within such areas as software and hardware sales, project management, computer forensics…… and IT consulting services.” So Panel is convinced that consulting services serve as the predominant calling card of Respondent’s corporation in an effort to lure in those customers looking for Cognizant Technology Solutions. This Panel therefore rules, that Respondent’s website creates a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of its website, pursuant to Policy ¶4 (b) (iv).
Confusion as the source of the disputed Domain Name is further exacerbated by Respondent’s depiction on his web page of city skyscrapers and mention of a partnership with international companies. These “look and feel factors” of a large international corporation, such as Cognizant, certainly belie Respondent’s assertions that Respondent is only a small family business. Respondent’s webpage thus appears to be created for the sole purpose of creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering competing goods or services. Policy ¶4 (b) (iv) establishes this type of behavior as “bad faith” use of a domain name. TM Acquisition Corp. v. Gary Lam (NAF Case No. FA0405000280499) (“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, pursuant to Policy ¶4 (b) (iv).
Respondent registered and uses the <cognizant-consulting.net> domain name in bad faith by disrupting Complainant’s business and creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering competing goods or services. In this case, the competing goods or services, are purportedly consulting services, as discussed above. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain evinces bad faith under Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Accordingly, the Panel agrees that Respondent has disrupted Complainant’s business and attempted to commercially benefit from Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cognizant-consulting.net> domain name be TRANSFERRED from Respondent to Complainant.
Carol Stoner, Esq., Panelist
Dated: October 03, 2018
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