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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Cognos Incorporated v. Yu Liang

Case No. D2006-1554

 

1. The Parties

The Complainant is Cognos Incorporated, Ottawa, Ontario, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.

The Respondent is Yu Liang, Hubei, China.

 

2. The Domain Name and Registrar

The disputed domain name <cognosgo.com> is registered with HiChina Web Solutions Limited.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2006. On December 10, 2006, the Center transmitted by email to HiChina Web Solutions Limited a request for registrar verification in connection with the domain name at issue. On January 11, 2007, HiChina Web Solutions Limited transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed a submission on the language of proceeding on January 26, 2007, arguing that the language of proceeding ought to be English. On January 30, 2007, the Center acknowledged receipt of the Complainant’s submission and decided to (a) accept the Complaint in English and commence the administrative proceeding; (b) accept a Response either in Chinese or English; (c) appoint a Panel familiar with both languages; if available. The Center in that email also noted that it would be a matter for the appointed Panel to deciding on the appropriate language of the proceeding. Given all the circumstances of this case, the Panel decides that English shall be the language of the present proceeding. The Panel presents the reasons of its decision below in Part 6 ’Discussions and Findings’.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 proceeding commenced on January 30, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 19, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2007.

The Center appointed Susanna H.S. Leong, Tony Willoughby and Hong Xue as panelists in this matter on March 19, 2007. The Panel finds that it was properly constituted. Each member of 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 was founded in 1969 and it is in the business of corporate performance management software solutions and business intelligence. The Complainant employs over 3,600 people and it serves more than 23,000 customers in over 135 countries throughout the world. The Complainant has achieved tremendous success in the Asia Pacific region and has generated revenue of over $200 million since 2002. The Complainant is the owner of over 115 trademark registrations worldwide containing, or comprised of, the element “cognos” in relation to its goods or services.

On or around March 27, 2006, the Complainant announced the launch of its COGNOS GO! search service. On April 19, 2006, the Respondent registered the disputed domain name <cognosgo.com>. The disputed domain name was hyperlinked to a website which promoted the web design services of the Respondent’s business – PurpleSea Design. The Respondent’s website also includes links to commercial websites such as PayPal’s website and a DomainSponsor.com hosted website located at “www.showshow.cn” which allows users to access links to competitors of the Complainant. On June 7, 2006, the Complainant, through its legal counsel, issued a cease and desist letter to the Respondent requesting the transfer of the disputed domain name. The Respondent did not respond to the Complainant’s letter. The Complainant attempted to contact the Respondent once again on July 5, 2006 but once again, the Respondent did not respond.

 

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant asserts that it is the registered owner of the COGNOS trademarks and by virtue of these registrations, it has rights in the COGNOS marks and continues to have such rights.

The Complainant contends that the disputed domain name <cognosgo.com> incorporates the whole of the Complainant’s COGNOS trademarks which is the distinctive element of the Complainant’s marks. Thus, the Complainant contends that the disputed domain name is confusingly similar to the Complainant’s marks as the Respondent has incorporated the whole of the Complainant’s COGNOS marks. The likelihood of confusion between the disputed domain name and the Complainant’s marks is in the opinion of the Complainant further enhanced by the strength of the Complainant’s COGNOS marks. The Complainant further contends that given the timing of the Respondents’ registration of the disputed domain name – only weeks after the announcement of the launch of COGNOS GO! search service – there can be no doubt that the domain name was registered with the deliberate intention of confusing potential customers.

Accordingly, the Complainant submits that the disputed domain name <cognosgo.com> is confusingly similar with the COGNOS marks in which the Complainant has rights and continues to have such rights.

Rights or Legitimate Interests

The Complainant asserts that there has never been any relationship between the Complainant and the Respondent and the Respondent has never been licensed, or otherwise authorized to register or use, the COGNOS marks in any manner whatsoever, including in, or as part of, a domain name.

The Complainant also asserts that there is no evidence to suggest that the Respondent has ever used, or demonstrated preparations to use <cognosgo.com>, or a name corresponding to the same in connection with a bona fide offering of goods or services. Although the <cognosgo.com> domain name hyperlinks to the Respondent’s website which promotes the Respondent’s web design services, the Complainant argues that the purpose behind the registration was to ‘piggyback’ on the goodwill associated with the COGNOS trademarks in an attempt to reap a commercial advantage. Thus, the Complainant asserts that this certainly does not constitute bona fide or good faith use of the domain name.

The Complainant further contends that there is no evidence to suggest that the Respondent has been commonly known by <cognosgo.com> or that the Respondent is making, or intends to make a legitimate non-commercial or fair use of <cognosgo.com>.

Finally, the Complainant submits that a number of factors such as the knowledge of the Complainant’s trademarks rights on the part of the Respondent; the incorporation of the whole of the COGNOS marks; and the timing of the Respondent’s registration, further support the Complainant’s contention that the Respondent has no rights or legitimate interest in the disputed domain name <cognosgo.com>.

Registered and Used in Bad Faith

The Complainant contends that the Respondent has registered and used the disputed domain name <cognosgo.com> in bad faith and the reasons are as follows:

(a) By hyperlinking the domain name <cognosgo.com> to a website promoting its web design services, as well as including links to such commercial sites as PayPal and DomainSponsor.com, the Respondent has used <cognosgo.com> to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the COGNOS trademarks as to source, sponsorship, affiliation or endorsement.

(b) By hyperlinking the domain name <cognosgo.com> to the Respondent’s website promoting its web design services, the Respondent has registered the domain name primarily for the purpose of disrupting the Complainant’s business as the Complainant’s competitor.

(c) Given the timing of the registration, it is reasonable to conclude that the Respondent acquired the domain name for the purpose of selling it to the Complainant for an amount which exceeds its out-of-pocket expenses.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

6.1 Language of the Proceeding

The language of the registration agreement for the disputed domain name is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complainant has filed its Complaint in English. On January 16, 2007, the Center notified the Complainant that since the language of the registration agreement for the disputed domain name is in Chinese, paragraph 11 of the UDRP Rules stipulates that the language of the administrative proceeding shall accordingly be Chinese. The Complainant has made an email submission to the Center on January 26, 2007, requesting for English to be the language of the administrative proceeding and has provided the following reasons in support of its request:

(a) Upon being served the Complaint written in English, the Respondent contacted the Complainant in English. The Respondent’s email correspondence demonstrated that he was more than sufficiently capable of communicating in English and that he understood the Complaint filed against him.

(b) Based on the Respondent’s proficiency in English as demonstrated by his email correspondence, there would be no prejudice to the Respondent if English is the language of the proceeding.

(c) The Complainant however is not able to communicate in Chinese and therefore, if the Complainant were to submit all documents in Chinese, the proceeding will be unduly delayed and the Complainant would also have to incur substantial expenses for translation.

(i) The Panel’s discretion under the Policy

Paragraph 11 of the Rules provides:

Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.

(ii) The Circumstances of this Case

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties.

In particular, the Panel notes that the material facts of this proceeding are generated in the English language: the disputed domain name and the language of the Respondent’s email correspondence with the Complainant. On record, the Respondent appears to be Chinese and is thus presumably not a native English speaker but the Panel finds that persuasive evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. The Respondent has also been notified of the administrative proceeding in both English and Chinese. However, the Respondent has failed to respond to the Complainant’s contentions. The choice of English as the language of the present proceeding is on balance fair to both parties and is not prejudicial to either one of the parties in his or her ability to articulate the arguments for this case.

After considering the circumstances of the present case, the Panel decides that the proceeding should be English and the decision of the Administrative Panel will be delivered in English.

6.2 Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

1. the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

2. the 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.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has produced substantial evidence to demonstrate that it has registered trademark rights and continue to have such rights in the COGNOS marks in many countries throughout the world.

In assessing the degree of similarity between the Complainant’s trademark and the disputed domain name, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s COGNOS marks and the disputed domain name is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download information about the Complainant’s products and services.

The disputed domain name comprises (a) an exact reproduction of the Complainant’s trademark COGNOS and (b) the English word ‘GO’. The element “COGNOS” is the dominant and the distinctive element of the Complainant’s marks and it has been reproduced in its entirety in the disputed domain name. The Panel accepts the Complainant’s contention that the addition of the English word ‘GO’ does not prevent the disputed domain name from being identical or confusingly similar and is not sufficient to render the disputed domain name distinctive from the trademarks of the Complainant. This argument is further substantiated by the fact that the Complainant has on or around March 27, 2006, announced the launch of its COGNOS GO! search service and the Respondent has registered the disputed domain name <cognosgo.com> only weeks after the Complainant’s announcement.

Bearing in mind the following factors, in particular (a) the widespread reputation of the Complainant’s trademark; (b) the distinctive character of the Complainant’s COGNOS marks; (c) the dominant component of the disputed domain name; and (d) the visual, aural and similarities between them, the Panel therefore finds that the disputed domain name <cognosgo.com> is confusingly similar to a trademark or service mark in which the Complainant has rights.

The Panel finds for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:

1. The Respondent has not provided evidence of a legitimate use of the domain name or reasons to justify the choice of the word “cognosgo” in its business operations;

2. There was no evidence on the record to show that the Complainant has licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the trademark;

3. There is no indication whatsoever on the record that the Respondent is commonly known by the disputed domain name and/or is using the domain name in connection with a bona fide offering of goods or services;

4. The Complainant and its COGNOS marks enjoy a worldwide reputation with regard to business intelligence and corporate performance management software solutions. Consequently, in the absence of contrary evidence from the Respondent, the COGNOS marks are not those that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent has chosen not to respond and the Panel does not have before it any evidence of the circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances which might reasonably be said to give to the Respondent a right to or legitimate interest in the domain name.

The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product.

The Panel concludes based on the case file that the circumstances referred to in Paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that the Respondent has registered and used the disputed domain name in bad faith.

Firstly, the Panel finds that the Complainant enjoys a worldwide reputation in its COGNOS trademarks with regard to business intelligence and corporate performance management software solutions since 1969. In this day and age of the Internet and advancement in information technology, the reputation of brands and trademarks transcend national borders. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the domain name. In fact, the Respondent did not deny that he had knowledge of the Complainant’s trademark at the time of the registration of the disputed domain name. This is evident from the content of the email correspondence between the parties after the Respondent has been served with the Complaint. This finding coupled with the fact that the Respondent has chosen not to respond to the Complainant’s allegations in the complaint leads the Panel to conclude that the Respondent may have registered the disputed domain name for less than honorable intentions. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name, failing which the Panel draws the conclusion that the disputed domain name was registered in bad faith with intent to create an impression of an association with the Complainant and its products.

The Complainant has also adduced evidence to prove that by using confusingly similar disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website offering web design services. Given the fame of the Complainant’s COGNOS marks, the compelling conclusion is that the Respondent, by choosing to register and use a domain name which is confusingly similar to the Complainant’s famous marks, intended to ride on the goodwill of the Complainant’s marks in an attempt to exploit, for commercial gain, Internet traffic destined for the Complainant. Consequently, the Respondent has through the use of a confusingly similar domain name created a likelihood of confusion with the Complainant’s COGNOS trademarks and this constitutes a misrepresentation to the public that his website is in one way or the other associated or connected with the Complainant’s. In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain name and the conduct of the Respondent as far as the website on to which the domain name resolves are indicative of registration and usage of the disputed domain name in bad faith.

The Panel finds for the Complainant on the third part of the test.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <cognosgo.com> be transferred to the Complainant.

Susanna H.S. Leong Presiding Panelist
Tony Willoughby Panelist	Hong Xue Panelist

Dated: April 2, 2007