WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kyowa Hakko Bio Co. Ltd. v. Legacy Labs, LLC
Case No. D2014-1286
1. The Parties
The Complainant is Kyowa Hakko Bio Co. Ltd., of Japan, represented by Edwards Wildman Palmer LLP, United States of America ("US").
The Respondent is Legacy Labs, LLC of US, represented by Spiegel Sohmer, Canada.
2. The Domain Names and Registrar
The disputed domain names <cognitine.com> and <cognizine.com> are registered with eNom (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 26, 2014. On July 28, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 28, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 proceedings commenced on July 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 19, 2014. The Response was filed with the Center on August 18, 2014.
The Center appointed Andrew D.S. Lothian as the sole panelist in this matter on August 27, 2014. The Panel finds that it was properly constituted. 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 is a corporation organized and existing under the laws of Japan and describes itself as an international health ingredients manufacturer and a leader in the development, manufacture, and marketing of nutraceuticals, pharmaceuticals, and food products. The Complainant has offices throughout the world, including in the US where the Respondent is based.
The Complainant is the owner, inter alia, of two US registered trademarks for the word mark COGNIZIN, namely registration no. 3308129 for citicoline in international class 1, registered on October 9, 2007, claiming a first use in commerce of October 1, 2003; and registration no. 4223690 for dietary supplements whose main ingredients are citicoline or minerals, vitamins et cetera, in international class 5, registered on October 16, 2012 and claiming a priority date of September 2, 2010.
Citicoline is a chemical or raw ingredient related to brain function, which can also be manufactured into dietary supplements for memory function and cognition support. The Complainant claims to have used its COGNIZIN mark in connection with the raw ingredient citicoline since 2003. The Complainant offers its dietary supplement products to consumers via its authorized licensees. The Complainant registered its <cognizin.com> domain name on December 1, 2003.
On August 16, 2004, the Complainant responded to a US Patent and Trademark Office Examiner's report with regard to the application for the first COGNIZIN mark, which ultimately proceeded to grant as US trademark registration no. 3308129. The response indicates that registration of the Complainant's mark had initially been refused on the basis of an earlier US trademark registration for the mark COGNICINE in respect of dietary herbal supplements. In the response, the Complainant requests that all goods in its application with the exception of citicoline be deleted and submits that the COGNIZIN mark, when used in connection with citicoline, will not be confusingly similar to the COGNICINE mark. The Complainant's arguments in this respect are detailed but may be summarized as, first, the overall impressions of the marks are different in appearance, sound, connotation and commercial impression, with the marks not being capable of pronunciation in the same way; secondly, the goods identified by the respective marks are different on the basis that citicoline is a raw ingredient while the dietary herbal supplement is a finished consumer product, suggesting that channels and prospective purchasers will be different and that there is no viable relationship between the goods which supports a likelihood of confusion; and thirdly, the COGNICINE mark has limited rights based on the number of other "cogni" prefixed marks in existence, demonstrating that such prefix is not strong, that the term is attractive and popular such that no party may claim a right to exclusive use extending beyond a specific mark for specific goods, and that it is in common use by many other sellers in the market.
The Respondent is a limited liability company based in Nevada, US and describes itself as a nutriceutical company that sells dietary supplements directly to consumers only over the Internet and only in the US. According to the WhoIs records, the disputed domain name <cognizine.com> ("the first disputed domain name") was created on April 27, 2006 and the disputed domain name <cognitine.com> ("the second disputed domain name") was created on November 11, 2012. Until approximately February 28, 2014, the Respondent used the first disputed domain name for a website which offered a "brain health supplement" using huperzine as a key ingredient, under the brand name "Cognizine", the first sales of which took place in April 2013. After March 4, 2014, the first disputed domain name was used to forward traffic to the website at the second disputed domain name, at which the Respondent offers the said brain supplement under the rebranded name of "Cognitine".
The Parties have been in extensive correspondence prior to the filing of the Complaint in this matter. The relevant history is as follows: The Respondent filed an application for a US trademark in respect of the word mark COGNIZINE on August 22, 2013, in international class 5 in respect of dietary and nutritional supplements, claiming a first use in commerce of April 27, 2006. The application has since been abandoned. The Complainant's representative wrote to the Respondent on November 19, 2013 referring to the Respondent's use of the "Cognizine" term and its application for the corresponding trademark, and alleging infringement thereby of the Complainant's COGNIZIN registered trademark. The Complainant's representative went on to request that the Respondent immediately cease the use of "Cognizine", withdraw the trademark application and advise the Complainant as to how much product had been sold and how much was on hand in order that an orderly removal from the market could be effected.
On December 13, 2013, the Respondent's representative replied to the Complainant's representative's letter, advising that while the Respondent did not see any material likelihood of confusion between the Parties' marks, it agreed that an amicable resolution would be in the interests of both parties and noted that it was prepared to withdraw its trademark application, discontinue the use of the name "Cognizine" and consider alternative names and branding for its product, requesting until February 14, 2014 to comply with the request for a removal from the market of the "Cognizine" branded product.
On December 18, 2013, the Complainant's representative replied to the Respondent's representative's letter, indicating that it accepted the Respondent's offers contained therein. The Complainant's representative enclosed an "express abandonment" form for completion by the Respondent in respect of the trademark application and asked for formal confirmation on or after February 14, 2014 that the "Cognizine" name was discontinued and no longer in use on product packaging, and that the Respondent would not resume such use in the future. The Complainant's representative advised that the completion of these steps would be accepted by the Complainant in full settlement of the matter.
On March 4, 2014, the Respondent's representative replied to the Complainant's representative's letter confirming that the Respondent had ceased to use the "Cognizine" brand name by February 28, 2014 and noting that a copy of the duly filed express abandonment form had been returned on January 8, 2014. The Respondent's representative requested written confirmation that these measures had been accepted by the Complainant in full and final settlement of the matter.
On March 14, 2014, the Complainant's representative replied to the Respondent's representative's letter stating that the confirmation received was not a satisfactory and complete resolution because the Respondent continued to use the first disputed domain name and that this was now pointing to the second disputed domain name. The Complainant's representative noted that the term "Cognitine" was visually and phonetically nearly identical to the Complainant's COGNIZIN mark and cited legal principle and precedent in respect of its proposition that the term was confusingly similar to such mark. The letter concluded with a request that the Respondent cease use of both of the disputed domain names and the "Cognitine" term and adopt a dissimilar and distinguishable mark.
On March 24, 2014, the Respondent's representative replied to the Complainant's representative's letter seeking to make a case for the distinctions between the Complainant's mark and the Respondent's new brand. The Respondent's representative specifically drew attention to the Complainant's response to the Office Action of the US Patent and Trademark Office dated March 4, 2004, in which the Complainant had asserted for multiple reasons that the marks COGNIZIN and COGNICINE were not confusingly similar, and which the Respondent's representative considered was equally applicable to the Respondent's new brand "Cognitine". The Respondent's representative indicated that it would recommend to the Respondent that it abandon use of the first disputed domain name if the Complainant signed a waiver acknowledging first that in taking such action the Respondent made no admission or assumed any liability, and secondly, that such abandonment be delayed by a period of 90 days to provide the Respondent and its customers with a reasonable transitional period.
On August 11, 2014, the Respondent's representative wrote again to the Complainant's representative reiterating the terms which the Respondent proposed and noting that the present Complaint had been filed. The Respondent's representative indicated that the Respondent remained open to settlement on the basis proposed in its letter of March 24, 2014.
5. Parties' Contentions
The Complainant contends that the disputed domain names are confusingly similar to a trademark in which the Complainant owns rights; that the Respondent has no rights or legitimate interests in the disputed domain names; and that the disputed domain names have been registered and are being used in bad faith.
The Complainant claims use of the COGNIZIN trademark in the US since 2003 and notes that UDRP panels may properly consider a complainant's unregistered or common law rights in a trademark. The Complainant notes that its COGNIZIN mark has been featured in various print and online articles including in major publications. The Complainant produces relative articles from "Psychology Today" (undated), "Natural Solutions" (April 2011); Total Health Magazine (April 2009); Alternative Medicine (undated but post-dating June 2012 due to study reference); WholeFoods Magazine (June 2014); and Wall Street Journal (January 24, 2012).
The Complainant notes that the Respondent registered the first disputed domain name after the Complainant had applied to register its COGNIZIN mark for "citicoline". The Complainant also notes that the Respondent registered the second disputed domain name after the Complainant had secured registration of its COGNIZIN mark for goods in international classes 1 and 5.
The Complainant asserts that both the first and second disputed domain names are nearly identical or confusingly similar to the Complainant's COGNIZIN mark as they encompass this in its entirety and/or differ by only one or two letters. The Complainant indicates that the addition of a single letter to a distinctive trademark may constitute typosquatting, defined as the practice of misspelling an element of such trademark, and that this in itself establishes confusing similarity. The Complainant asserts that the fact that the first disputed domain name merely forwards traffic does not obviate the likelihood of confusion.
With regard to the second disputed domain name, the Complainant argues that the substitution of the letter "t" for "z", which it submits are both hard consonants pronounced through similar means, together with the addition of the letter "e", creates a domain name that is both visually and phonetically confusingly similar to the Complainant's mark. The Complainant notes that both disputed domain names fully incorporate the prefix "cogni", which it states that consumers will focus on and which it notes is present in the Complainant's trademark. The Complainant argues that this prefix creates a likelihood of confusion when coupled in each case with a nearly identical suffix to the Complainant's mark.
The Complainant asserts that it has used its mark in connection with dietary supplements since long before the disputed domain names were registered in 2006 and 2012 respectively. The Complainant notes that the Respondent has not been authorized by the Complainant to use its COGNIZIN mark as part of a domain name and asserts that this gives rise to a presumption that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant adds that even where the Respondent uses the disputed domain names to provide goods or services to consumers such use is not legitimate and that the sale of a competing product does not constitute a bona fide commercial use. With regard to the first disputed domain name, the Complainant argues that the use of this to forward to the second disputed domain name does not constitute a bona fide commercial use. With regard to the second disputed domain name, the Complainant notes that the Respondent knew of the COGNIZIN mark when it began use of such domain name because the Respondent used this to rebrand its product from "Cognizine" to "Cognitine" after receiving a cease-and-desist letter from the Complainant.
The Complainant asserts that the Respondent has not been commonly known by the disputed domain names because there is no such evidence at the Respondent's website and its name does not include the relative strings. The Complainant argues that the Respondent must have been commonly known by the disputed domain names prior to the time of registration in order to come within the safe harbor of paragraph 4(c)(ii) of the Policy. The Complainant submits that the second disputed domain name offers the Respondent's "Cognitine" product for sale and thereby misdirects potential visitors seeking the Complainant's website. The Complainant argues that such use does not constitute a legitimate noncommerical or fair use of the disputed domain names.
The Complainant asserts that the Complainant's two registrations for its COGNIZIN trademark and its extensive common law rights in such mark provided the Respondent with actual or constructive notice prior to the registration of the disputed domain names. The Complainant notes that at the time of the Respondent's registration of the first disputed domain name the Complainant had already filed an application with the US Patent and Trademark Office to register the COGNIZIN mark for "citicoline", thereby providing the Respondent with notice thereof in addition to the Complainant's extensive common law rights in the said mark. The Complainant adds that it had used such mark not only worldwide but also extensively in the Respondent's jurisdiction before the disputed domain names were registered, such that it is inconceivable that the latter were registered in good faith.
The Complainant states that there is no conceivable way that the Respondent could use the disputed domain names in good faith and that the Respondent's subsequent domain name registration constitutes "opportunistic bad faith" in violation of the Policy. The Complainant notes that in trademark law it is a well‑accepted principle that a junior user of a mark has "an obligation to avoid confusion with established marks in the same market" and that it is appropriate that any doubts as to likelihood of confusion are resolved against the newcomer.
The Complainant states that according to actual consumer reviews of the disputed domain names, the Respondent uses these to "spam" customers and that this also constitutes use in bad faith.
The Respondent requests the Panel to make a finding of Reverse Domain Name Hijacking on the basis that the claims in the Complaint are false and meant to mislead the Panel and that the Complainant is in breach of its certification of the completeness and accuracy of the information therein contained.
The Respondent contends that the evidence shows the manner in which the Respondent chose the "Cognizine" brand and the search and verifications carried out prior to choosing the "Cognitine" name and argues that this demonstrates that the Respondent is not engaged in typosquatting.
The Respondent submits that long before it received any notice of the dispute there was evidence of demonstrable preparations to use both of the disputed domain names in connection with the bona fide offering of goods and describes such alleged preparations as follows: The Respondent explains that the first disputed domain name originated from an idea in early 2006 to produce a brain health supplement including huperzine as a key ingredient and that combining "cognitive" with "huperzine" resulted in "cognizine", the development and product formulation of which began in 2006. The Respondent adds that the first disputed domain name was registered on April 27, 2006, that product labels were created in February 2013, that the first inventory was received at the end of March 2013 and that the first sale took place in April 2013. The Respondent notes that it filed the trademark application for the registration of "Cognizine" in order to protect its rights.
The Respondent asserts that the rebranding of its product did not take place simply after receipt of the Complainant's cease and desist letter but was made as a good faith effort on the Respondent's part to reach an amicable settlement with the Complainant following various communications between the Parties and after the Respondent had reviewed existing products and trademarks in the marketplace. The Respondent explains that in its rebranding exercise, it carried out a search for all US trademark registrations in class 5 with the prefix "cogni". The search is produced with the Response. The Respondent notes that it found some ten marks, such as COGNITOL, COGNIVIN, and COGNIPRIME, all of which are dietary or nutritional supplements containing brain health or boosting ingredients, are in use and available to purchase online. The Respondent notes that one of the Complainant's licensees is also a licensee for the third party COGNITEX product. The Respondent says that in light of this search and the apparent dilution of the prefix "cogni" for dietary or nutritional supplements containing brain health or boosting ingredients, it decided to rebrand under the "Cognitine" mark and registered the second disputed domain name accordingly. The Respondent says that it redirected traffic from the first to the second disputed domain name solely to transition its existing customer base.
The Respondent notes that although the Complainant alleges confusion between the Complainant's mark and the disputed domain names it did not oppose any of the trademarks identified by the Respondent in its search. The Respondent notes that the Complainant itself has publicly alleged no confusion with COGNICINE, COGNIZONE and 14 others and did not oppose the application for COGNIVIN, which it says are marks as close in sound and appearance to the Complainant's mark as that in the disputed domain names.
With regard to rights and legitimate interests, the Respondent points out that the circumstances set out in paragraph 4(c) of the Policy are expressed to be without limitation and argues that it has such rights based on its making a legitimate fair use of the disputed domain names.
The Respondent contends that the disputed domain names are not confusingly similar to the Complainant's trademarks, citing the Complainant's response to the Examiner's report in respect of the Complainant's COGNIZIN trademark application in support of this submission and noting that in respect of the prefix "cogni" this directly contradicts the arguments in the Complaint. The Respondent asserts that the letter "c" in COGNICINE is aurally more similar to the letter "z" than it is the letter "t", yet the Complainant argued that COGNIZIN was not confusingly similar to COGNICINE. The Respondent asserts that contrary to the Complainant's submissions, the letter "t" is a hard consonant but the letter "z" is not pronounced in the same way. The Respondent points out that the goods in respect of which the third party COGNIVIN mark was registered are dietary supplements, the same products supplied by the Respondent under the name "Cognitine" yet the Complainant did not oppose such mark.
The Respondent notes with regard to the Complainant's first COGNIZIN registered mark that the goods concerned are a raw ingredient not sold directly to consumers and that it was only on February 24, 2011 that the Complainant filed an application for the COGNIZIN mark based on intent-to-use in association with dietary supplements and others in class 5. The Respondent asserts that the Complainant's unregistered or common law rights dating back to 2003 would apply to a raw ingredient that is a business-to-business product. The Respondent contends that the Complainant has failed to provide any evidence to substantiate the use of its claimed unregistered or common law mark in association with dietary supplements since 2003.
The Respondent submits that the disputed domain names were registered and used in good faith and not primarily to disrupt the Complainant's business or to attract Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's marks. The Respondent contends that the vast majority of Internet users are able to differentiate sites and notes that when a search is carried out with the "Google" search engine for the Complainant's COGNIZIN mark the resulting returns are for sites presenting the Complainant's goods only. The Respondent concludes that the disputed domain names do not misdirect visitors seeking the Complainant's website to that of the Respondent.
The Respondent notes that when it applied for the mark COGNIZINE, no Office Action was issued by the US Patent and Trademark Office on the basis of confusion with the trademark registrations of the Complainant and contends that this coupled with the Complainant's response to the Office Action in respect of its COGNIZIN mark led the Respondent to believe there was no likelihood of confusion with any mark on the register.
With regard to the assertion that the Respondent uses the disputed domain names to "spam" customers, the Respondent asserts that the documents provided in support of such assertion do not make such statement and cannot be corroborated. The Respondent adds that its website has received a "Doctor Trusted Certificate" and provides a copy of the notice concerned.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Respondent's Identity
The Panel must first deal with the motion of the Respondent for dismissal of the Complaint on the grounds that it has been filed against the wrong party. The Respondent notes that the Complaint has been filed against a named employee of Legacy Labs, LLC who it says was not involved in any communications between the latter and the Complainant. The Panel has examined the WhoIs of the disputed domain names and notes that both the said employee and Legacy Labs, LLC are listed therein in different fields, the former being found in the "Registrant Name" field and the latter in the "Organization" field.
Paragraph 1 of the Rules defines the respondent as "the holder of a domain-name registration against which a complaint is initiated." There is no field in the relative WhoIs records for a "holder" per se. In the absence of such, it appears to the Panel that in this case the holder of the disputed domain names should be treated as the entity appearing in the "Organization" field of the WhoIs record. The Panel considers that the employee, who is listed in a "Registrant Name" field, should be treated in this case as a personal contact for the disputed domain names, rather than the holder itself. In these circumstances, the Panel is of the view that the correct respondent in the present matter should be Legacy Labs, LLC notwithstanding the fact that the Complaint has been brought against the Respondent's employee. Should the Panel therefore dismiss the Complaint on this ground?
Paragraph 10 of the Rules provides inter alia that the Panel shall conduct the administrative proceeding in such manner as it considers appropriate, with due expedition, ensuring that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. Applying all these principles to the Respondent's motion, the Panel declines to dismiss the Complaint on the basis sought. On a fair reading of both the Complaint and the Response, the matter in controversy is clearly between the Complainant and Legacy Labs, LLC and not the latter's employee. The Panel notes that the Respondent has produced a full and complete Response on the merits of the Complaint rather than rely solely on its motion to dismiss, which at best is based on a very technical ground. The Respondent thus has been given, and has taken to the maximum extent, a full opportunity to present its case. It is a straightforward matter for the Panel to treat the very few references to the Respondent's employee in the Complaint as though these were references to the Respondent itself and the Panel will therefore proceed on this basis.
There does not appear to the Panel to be any reason to name the employee of Legacy Labs, LLC in these proceedings given that he appears to be listed on the WhoIs for reasons of administrative convenience alone. In these circumstances, the Panel directs that all references to the name of the Respondent's employee be deleted from this Decision.
B. Identical or Confusingly Similar
There are two parts to the inquiry under the first element of the Policy. The Complainant must first demonstrate that it has rights in one or more trademarks and secondly that each of the disputed domain name is identical or confusingly similar to such trademark or trademarks. For the purposes of this element of the Policy it is not necessary for the registration date of the trademarks relied upon by the Complainant to pre-date the creation date of the disputed domain name, although this may be relevant to the question of registration and use in bad faith (see paragraph 1.4 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")).
Notwithstanding the Respondent's extensive submissions on this topic, the Panel reminds itself and the Parties that the test of identity or confusing similarity under the Policy is not necessarily the same test as might be applied under the trademark law of any particular jurisdiction. As the panel noted in Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011:
"The Policy is not based on proof of trademark infringement. Rather, this "standing" element of the Policy concerns only the identity or confusing similarity of the Domain Name and a mark in which the Complainant currently has rights. UDRP panels typically apply a "low threshold" test for confusing similarity under the first element of a Policy complaint, proceeding to the merits of the case under the other elements of the Policy if there is "sufficient similarity" between the disputed domain name and the relevant trademark. See, e.g., Research in Motion Limited v. One Star Global LLC, WIPO Case No. D2009-0227; Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647. This is commonly tested by comparing the mark and the disputed domain name in appearance, sound, meaning, and overall impression."
Likewise, the panel in the case of Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743 noted:
"UDRP panels deciding proceedings under the Policy need not engage in an evidentiary analysis of the likelihood of confusion between a contested domain name and a registered mark, as is common in many legal actions under national trademark laws. The nature of Policy proceedings — providing a swift administrative remedy with no hearings, no evidentiary discovery, and a limited factual and legal record — militates against such analysis. Rather, Panels have routinely held that the question under paragraph 4(a)(i) of the Policy is simply whether the alphanumeric string comprising the challenged domain name is identical to the Complainant's mark or sufficiently approximates it, visually or phonetically, so that the domain name on its face is "confusingly similar" to the mark."
In these circumstances, the Panel does not consider it necessary to address the Respondent's submissions as to the lack of confusing similarity by comparison of goods offered, existence of other marks and so on and will proceed to an alphanumeric comparison of the respective strings in the second part of the inquiry under this element. Having first identified that the Complainant is the owner of the COGNIZIN registered trademark described in the factual background section above, the Panel notes that this mark is identical to the second level of the first disputed domain name, with the addition of a letter "e" at the end. Comparing the mark with the second level of the second disputed domain name, the Panel notes that this is also the same as the Complainant's mark with a substitution of the letter "t" for "z" and again with the additional letter "e" at the end.
On the basis of the above objective comparison between the alphanumeric strings in the disputed domain names and the mark relied upon, and the relatively low threshold nature of the test under the Policy, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights and thus that the first element of paragraph 4(a) of the Policy has been established.
C. Rights or Legitimate Interests
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy, including that the disputed domain names have been registered and are being used in bad faith, will result in failure of the complaint in its entirety. Accordingly, in light of the Panel's finding under the next head, it is unnecessary for the Panel to address the issue of the Respondent's rights or legitimate interests in the disputed domain names.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
"(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location."
The essence of the Complainant's case is that the Respondent is targeting the Complainant's marks via bad faith registration and use of both of the disputed domain names. It is well established in cases under the Policy that, for registration in bad faith to be made out, a complainant must demonstrate first that a respondent had knowledge of the complainant's mark when it registered the domain name concerned, or in certain cases was "willfully blind" to the existence of such a mark, and secondly that the respondent had bad faith intent at the point of registration of the domain name to target the complainant's rights in that mark.
As paragraph 1.4 of the WIPO Overview 2.0 notes, showing knowledge of a complainant's mark can be difficult where, as here in the case of the first disputed domain name, the registration date of the complainant's mark post dates the creation date of the domain name concerned. The Complainant attempts to deal with this issue by claiming that it has used its COGNIZIN mark since 2003 and noting that it is competent for the Panel to consider unregistered or common law rights in a trademark. The problem for the Complainant's case, however, is that it has provided no evidence as to the extent of its use of the COGNIZIN mark between 2003 and the date of creation of the first disputed domain name on August 27, 2006 such that the knowledge of the Respondent could be established on the balance of probabilities. Furthermore, the Complainant does not specify the date on which it began to use the mark on a business-to-consumer basis in association with health supplements, namely a similar line of business to that of the Respondent, rather than for the business to business supplied raw ingredient citicoline. In these circumstances, there is nothing on the present record which indicates that the Respondent knew or ought to have known of the Complainant's COGNIZIN mark when it created the first disputed domain name.
The Complainant makes an additional case regarding the Respondent's constructive (deemed) notice of the Complainant's mark, based upon the fact that the application for such mark had been filed on January 21, 2004, that is, some two years before the date of creation of the disputed domain name. As paragraph 3.4 of the WIPO Overview 2.0 notes, panels have mostly declined to introduce the concept of constructive notice into the UDRP, though some have been prepared to do so where, first, the respondent was located in the US; secondly, the complainant had a federal US trademark registered before the disputed domain name was obtained by the respondent; and thirdly, there are indicia of cybersquatting. In the present case, the Complainant's US trademark was not yet registered at the time when the first disputed domain name was created. As regards indicia of cybersquatting concerning the first disputed domain name, the Panel has not identified such from the present record.
Had the Respondent been unable to explain its selection of the "Cognizine" brand name or had the given explanation appeared flawed or unconvincing in any significant respect, the Panel would have been altogether more suspicious of the apparent closeness between the Complainant's mark and the first disputed domain name and would most probably have considered this to be an indicium of cybersquatting. However, the Respondent's submission that the name "Cognizine", was selected as a contraction of "cognitive" and "huperzine" seems to the Panel to be entirely plausible, particularly in light of the extensive evidence produced (including even an argument made by the Complainant with regard to its original COGNIZIN trademark application) showing that the "cogni-" prefix is in widespread usage by providers of applicable kinds of health food supplement. In all of these circumstances, the Panel finds that the first disputed domain name has not been registered and used in bad faith.
With regard to the second disputed domain name, it must be noted that this was brought into use by the Respondent, after it had entered into correspondence with the Complainant, in circumstances where it cannot argue that it was unaware of the Complainant's mark. That said, the essential components of registration in bad faith are not just knowledge but also intent, and the Panel finds nothing on the present record indicating that the Respondent selected the second disputed domain name with a deliberate bad faith intent to take advantage in some fashion of the Complainant's mark. On the contrary, the Respondent has been able to show the steps which it took to rebrand to a different name in an apparent attempt to reach an amicable settlement with the Complainant. The Respondent has also shown that the new name shares the "cogni-" prefix and has demonstrated that this is employed by many similar products and is by no means unique to the Complainant's mark. Finally, the Respondent has shown that the name features in many respects the same differences and distinctions from COGNIZIN that the Complainant itself identified as differentiators between the COGNIZIN and COGNICINE trademarks.
In terms of the broad thrust of the Policy, the Respondent's actions regarding the second disputed domain name strike the Panel, on the whole, as an apparently good faith effort to accommodate the Complainant's concerns about the potential for confusion in the Parties' marketplace rather than any form of cybersquatting that the Policy was designed to address. The one matter in the Respondent's otherwise fulsome explanation which is not entirely consistent is the question of how the second disputed domain name came to be registered a year before the Complainant's cease-and-desist notice, but, given that it was not brought into use until after the Respondent decided to rebrand, the Panel does not consider that this discrepancy is enough to cast doubt on the Respondent's case as a whole. In all of these circumstances, the Panel finds that the second disputed domain name has not been registered and used in bad faith.
Bearing in mind the nature of many of the Parties submissions, pertaining as they do to trademark law, it remains for the Panel to add in this section that questions of the Respondent's alleged good faith or bad faith intent are concepts of the Policy and that the Panel is not adjudicating on whether or not the Respondent's registration or use of either of the disputed domain names constitutes trademark infringement. As the Panel in 3903150 Canada Inc. d/b/a Moroccanoil, Moroccanoil Canada Inc., Moroccanoil Inc. and Moroccanoil Israel Ltd. v. Jacob Miller, WIPO Case No. D2012-1847 put it:
"It is not the task of the Panel but of a court of competent jurisdiction to establish whether the products marketed by Respondent do in fact infringe or not on Complainants' marks. See Photodex Corporation v. Clickguide.com and Michael Bannen, WIPO Case No. D2001-0952 ("In this regard, the Panel reminds the parties that the instant administrative proceeding is not equivalent to a trademark infringement suit. The Panel's decision is not a determination of any kind on the issue of trademark infringement. Unlike the instant UDRP proceeding, the issue of trademark infringement is decided based, at least in part, on a comparison of the parties' marks and the goods and/or services on or in connection with which the marks are used"). See also AXA China Region Limited v. KANNET Limited, WIPO Case No. D2000-1377 ("It is beyond doubt, however, that the elements for "bad faith" or "legitimate interests" requirement under the Policy are not necessarily the same as the elements required for trademark infringement under a domestic law. This administrative proceeding and its consequent decision are not allowed to make a substantive decision on the legal issue of trademark infringement or unfair competition but only designed to solve a dispute concerning domain name registration in accordance with the Policy which is incorporated by reference into the Registration Agreement between the Respondent and the Registrar of the domain name at issue. See Avnet, Inc. v. Aviation Network, Inc., WIPO Case No. D2000-0046".)"
Should the Complainant wish to pursue alternative remedies which may be available to it relative to alleged trademark infringement it remains free do so, and with that in mind, the Panel notes that it does not address the present Decision to the attention of any alternative forum that may ultimately be seized of the matter.
E. Reverse Domain Name Hijacking
The Panel notes the Respondent's submission that the Panel should make a finding of Reverse Domain Name Hijacking in this case. The Respondent alleges that various claims in the Complaint are false and designed to mislead the Panel. The Respondent focuses specifically on the Complainant's allegation of typosquatting together with the Complainant's approach to the issue of confusing similarity in the Complaint in the face of its contrary arguments made during the application process for the original COGNIZIN trademark.
While the Panel is itself somewhat troubled by the Complainant's failure to identify, discuss and distinguish the arguments that it brought to bear when applying for its original COGNIZIN trademark, the Panel does not consider that this is sufficient, in itself, for a finding of Reverse Domain Name Hijacking. As outlined above, confusing similarity under the Policy and under trademark law are different animals entirely. The Panel has found that the Complainant has UDRP-relevant rights in a trademark and considers that it was entitled to test its belief that the Respondent was engaging in typosquatting. Furthermore, mere lack of success of the Complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking (see paragraph 4.17 of the WIPO Overview 2.0).
In these circumstances, the Panel declines to enter a finding of Reverse Domain Name Hijacking.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Date: September 10, 2014