Mithral Communications & Design, Inc. v. LogMeIn, Inc.
Claim Number: FA1206001449777
Complainant is Mithral Communications & Design, Inc. (“Complainant”), represented by Holly Pranger of Pranger Law Group, San Francisco, California, USA. Respondent is LogMeIn, Inc. (“Respondent”), represented by Michael J. Bevilacqua of Wilmer Cutler Pickering Hale and Dorr LLP, Boston, Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cosm.com>, registered with GoDaddy.com, LLC , and <cosm.net>, registered with Network Solutions, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Richard DiSalle as Chair and Bruce E. O’Connor and G. Gervaise Davis as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 20, 2012; the National Arbitration Forum received payment on June 20, 2012.
On June 21, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <cosm.com> domain name was 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 agreements 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 June 21, 2012, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <cosm.net> domain name was registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC registration agreements 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 June 21, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org and email@example.com. Also on June 21, 2012, 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 July 18, 2012.
An Additional Submission from Complainant was received on July 24, which the Forum had determined to be deficient because it was received without the required fee. Respondent submitted an additional statement on July 27, 2012. The Panel decided to consider both submissions.
On August 1, 2012, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Richard DiSalle as Chair and Bruce E. O’Connor and G. Gervaise Davis as Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 names be transferred from Respondent to Complainant.
Complainant bases its rights in the COSM mark on its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,734,759 registered July 8, 2003). Complainant uses the COSM mark in its business for computer software development tools, data compression software, encryption and secure communications tools, tools to operate system abstraction, computer hardware, and other similar products. Complainant has used the COSM mark since as early as June 13, 1995. Complainant uses the <mithral.com/projects/cosm/> website to promote its goods and services under the COSM mark.
Respondent registered the <cosm.com> and <cosm.net> domain names and uses the domain names to host a website that offers goods and services in competition with Complainant’s business. The <cosm.com> and <cosm.net> domain names are identical or confusingly similar to Complainant’s COSM mark, as are the goods and services offered by Respondent at the resolving website. Respondent filed an “intent to use” trademark application for the COSM mark with the USPTO on January 25, 2012 and was refused registration because Respondent’s mark was confusingly similar to Complainant’s. Respondent had constructive and actual knowledge of Complainant’s rights in the mark at the time it registered the disputed domain names. Respondent did not launch the website corresponding to the <cosm.com> domain name until May 9, 2012. Respondent does not have any rights or legitimate interests in either of the disputed domain names and is not a licensee of Complainant or affiliated with Complainant. Respondent does not use the <cosm.com> and <cosm.net> domain names to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent registered the disputed domain names in bad faith, with the intent to deceive and confuse Internet users in order to sell its products. Respondent’s passive holding of the <cosm.net> domain name is in bad faith.
Respondent, LogMeIn, Inc., was founded in 2003 and provides solutions pertaining to remote control, file sharing, system management, data backup, business collaboration, and on-demand customer support for computers and other electronic devices. Respondent claims that 125 million devices internationally have connected to a service provided by Respondent, which has headquarters in the United States, the United Kingdom, and Australia and development centers in Hungary. Respondent chose the COSM mark because it is a derivative of the term “cosmos,” which relates to the ability of its goods and services to “connect everything in the cosmos.” Respondent does not believe there is or will be confusion as to the source of the COSM mark with respect to Complainant’s goods and services as compared with Respondent’s goods and services. The <cosm.com> domain name was registered by a third party on March 9, 1996 and the <cosm.net> domain name was registered by a third party on February 16, 2010. Respondent purchased the disputed domain names from the third parties for a sum of over $55,000. Respondent began formulating plans immediately after purchasing the <cosm.com> domain name to use the corresponding website in connection with a bona fide offering of goods and services. Respondent’s <cosm.net> domain name is not in currently in use but Respondent plans to use it in connection with products and services in the future. Respondent has spent more than $100,000 for marketing activities in connection with its COSM brand. Respondent has filed an “intent to use” trademark application for the COSM trademark for “computer programs for use in collecting, managing, monitoring, storing, and processing data from devices connected to the Internet,” and other similar and related uses. Respondent’s application is under examination by the USPTO, and Respondent has not yet responded to an Office Action” citing Complainant’s current COSM registration. Respondent believes it will overcome the rejection of its application based on the difference between its goods and services compared to the goods Complainant lists in its trademark registration.
Respondent acknowledges that Complainant owns a trademark registration for the COSM mark in connection with computer software development tools, computer software and tools for constructing distributed computing systems, data compression software, and other similar and related goods and services. Complainant does not use the mark on many of the goods listed in its registration and Respondent challenges the registration on those grounds. Respondent does not accept Complainant’s statement that the COSM mark has been used since 1995. Respondent admits that the <cosm.com> and <cosm.net> domain names are confusingly similar to Complainant’s mark, but states that other entities also own trademark registration for domain names that include the term “cosm.” Complainant does not own, and has never in its 15 years of existence, owned any domain name that includes the term “cosm.” Respondent’s goods and services offered at the <cosm.com> domain name are not “virtually identical” to Complainant’s products. There is no risk of confusion between Complainant’s products and Respondent’s products. Respondent does not use the disputed domain names with the intent of misleading or confusing Internet users. The investment Respondent made to develop the <cosm.com> domain name disproves any perception that Respondent registered the domain name in order to sell, rent, or transfer it to Complainant in exchange for compensation. Respondent did not register and use the disputed domain names in bad faith. Complainant does not provide sufficient evidence to demonstrate Respondent’s bad faith registration or use. Respondent has plans to offer goods and services at the website resolving from the <cosm.net> domain name that are the same or similar to those offered at the website resolving from the <cosm.com> domain name. No inference can be drawn from Respondent’s current passive holding of the <cosm.net> domain name. Complainant’s reputation in the mark is not strong, and the goods and services Complainant offers are not similar to those offered by Respondent, therefore it cannot be assumed that Respondent attempts to “capture” Complainant’s potential customers. Respondent does not have a history or pattern in registering infringing domain names.
C. Additional Submissions
Complainant alleges the following in its Additional Submission:
Respondent adopted domain names identical to Complainant’s registered COSM mark, in connection with a business that is in competition with Complainant. Respondent was aware of Complainant’s business and trademark before it adopted the disputed domain names. Respondent’s argument that it is entitled to the COSM mark and domain names is based on the fact that it believes Complainant’s company is more insignificant than its own, which would require the Panel to disregard UDRP case law and ignore the USPTO’s conclusion that Respondent’s mark is confusingly similar to Complainant’s. Respondent insists that, because it could not locate evidence that Complainant has used the mark on the goods listed in its registration, the trademark registration of the COSM mark should be disregarded. Respondent argues that Complainant’s argument that the distinction between Complainant’s business and Respondent’s business is not similar enough to cause confusion is incorrect and uses complicated terms to describe the intricacies that are not supported by a computer scientist or engineer. Respondent “fails to recognize its own business in the list of products and services” contained in Complainant’s trademark registration, such as computer software development tools, computer software and tools for constructing distributed computing systems, computer peripherals, and other related products. Respondent’s awareness of Complainant’s trademark registration demonstrates that Respondent was acting in bad faith by using the COSM mark to name his business. Respondent has the same relative class of consumers as Complainant and the markets for each are similar and both appear in the results from Internet searches using the terms “Cosm,” “Cosm API,” and “Cosm Library.” Respondent uses a definition from the website <dictionary.com> to explain its business name, which it claims derives from the word “cosmos,” which Complainant alleges is “interesting” because <dictionary.com> contains a paid-for ad promoting the <cosm.com> domain name above the definition. The price Respondent paid for the disputed domain names is irrelevant because a likelihood of confusion exists regardless of the purchase price. Respondent’s argument that it relied on the advice of counsel regarding his use of the disputed domain names is irrelevant because reliance on the advice of legal counsel does not absolve a party of the limits of the law. Respondent is “legally reckless” in its argument that Complainant’s failure to purchase the <cosm.com> and <cosm.net> domain names negates all trademark rights because it suggests that the Panel ignore the likelihood of confusion analysis. Respondent’s allegation that Complainant is not commercially successful is misleading because Complainant’s COSM mark has been discussed at various public events and used in research papers, and is “widely known within the computer industry.” Complainant’s COSM mark is in active use and is well known, winning honors since 1999. Respondent acted in bad faith because Complainant operates in the same market in the area of distributed computing and with similarly confusing products.
In its additional statement, the Respondent alleges as follows:
Respondent has acknowledged that the domain names are identical or confusingly similar to Complainant’s registered mark. Respondent submits, however, that the Complainant has not shown that Respondent has no rights or legitimate interest in respect of the domain names or that the domain names were registered or are being used in bad faith. Respondent’s extensive activities and investment in the domains and the associated brands to date, and the filing of a trademark application in the USPTO, are “use of, or demonstrable preparations to use, the domain names in connection with a bona fide offering of goods or services, all of which predate any notice of this controversy, and thus bring the Respondent within the safe harbor of paragraph 4(c)(i) of the Policy.” Forest Labs., Inc. v. Natural Prods. Solutions, LLC, D2011-1032 (WIPO July 29, 2011); see also Forest Labs., Inc. v. Grace, D2011-1006 (WIPO July 29, 2011).
Complainant has not shown bad faith use or registration sufficient to allow this Panel to decide this issue in a UDRP proceeding. Respondent registered these domain names in good faith, and immediately worked hard and invested significant funds to build its brand and promote its business, goods and services on the site at <cosm.com>. Respondent does not wish its business to be affiliated in any way with that of Complainant. Complainant has not presented any facts to indicate that Respondent has attempted, intentionally or unintentionally, to attract, for commercial gain or otherwise, Internet users to the Respondent’s web site or other on-line location by creating a likelihood of confusion with the Complainant’s mark. The Complainant presents no evidence of any actual customer or user confusion and Respondent has attested to seeing no such confusion. The Respondent did not intentionally target the Complainant or its products.
(1) the domain names registered by Respondent are 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 names; and
(3) the domain names have not been registered and are not 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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant claims that it owns rights in its COSM mark by having registered the mark with the USPTO (Reg. No. 2,734,759 registered July 8, 2003). The Panel concludes that Complainant secured rights in its COSM mark through its registration with the USPTO pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent concedes and the Panel finds that incorporating Complainant’s COSM mark in its entirety and adding only a gTLD to the end of each domain name render the disputed domain names identical to Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to the complainant’s TERMQUOTE mark); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to the complainant’s MYSTIC LAKE trademark and service mark).
Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the Respondent’s 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 and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non‑commercial 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.
Prior UDRP decisions opine that Complainant should make a prima facie showing that Respondent does not come under those circumstances. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant has made such a prima facie case.
Respondent's use of the domain names is arguably an infringement of Complainant's rights in the COSM mark, and thus not bona fide. The USPTO, in its examination of Respondent's trademark application, has refused registration to Respondent's COSM mark over Complainant's CSM trademark registration. In doing so, the USPTO stated that:
In the present case, applicant’s mark is COSM and registrant’s mark is COSM. Thus, the marks are identical in terms of appearance and sound.
In the present case, applicant’s goods and/or services are “providing temporary use of non-downloadable computer programs for use in collecting, managing, monitoring, storing and processing data from devices connected to the internet,” and “computer programs for use in collecting, managing, monitoring, storing and processing data from devices connected to the internet,” and registrant’s goods are computer
software and tools for data management and distribution.” The terms software and programs are synonymous in the realm of computers and computer goods and services... Both Applicant [Respondent] and Registrant [Complainant] provide computer programs or software for management in the case of Registrant and managing data in the case of Applicant. Thus, the goods and/or services are identical, and it is presumed that they move in all normal channels of trade and are available to all potential customers.
Also, Respondent's name is not the domain names, and Respondent's use of the domain names is for commercial gain.
Respondent has not overcome this prima facie case. The contentions made by Respondent go to its paradigm of "cloud computing" and Complainant's contrasted paradigm of "distributed computing." These seem to be distinctions without a difference. Both achieve, through different means, the same end result: the development of websites that permit multiple users to achieve something more than they could do by themselves. Using Complainant’s mark to promote sales of Respondent’s competing goods is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”);
The Panel finds that Complainant has met its burden of proof under Policy ¶ 4(a)(ii).
The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
The Panel finds Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
The Panel also concludes that Respondent does not disrupt Complainant’s business and consequently did not register and use the <cosm.com> and <cosm.net> domain names in bad faith under Policy ¶ 4(b)(iii). See Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding that the respondent did not register and use the <racegirl.com> domain name in bad faith because the complainant provided no evidence that the respondent intended to disrupt or divert business from the complainant); see also PRIMEDIA Special Interest Publ’ns. Inc. v. Treadway, D2000-0752 (WIPO Aug. 21, 2000) (holding that the respondent did not register or use the <shutterbug.com> domain name to disrupt the complainant’s business because the respondent’s contemplated use at the time of acquisition was not necessarily competitive with the complainant’s SHUTTERBUG magazine).
The Panel further determines that Respondent did not register the <cosm.com> domain name in bad faith under Policy ¶ 4(b)(iv) because Respondent did not attempt to cause confusion and operates the resolving website in relation to its legitimate business. See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that the respondent did not register or use the domain name <metagen.com> in bad faith where the respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created); see also DJF Assocs., Inc. v. AIB Commc’ns, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding the respondent has shown that it has a legitimate interest in the domain name because the respondent selected the name in good faith for its website, and was offering services under the domain name prior to the initiation of the dispute).
The Panel also finds that Respondent’s plans to set up a website at the <cosm.net> domain name in the “near future” similar to the website found at its <cosm.net> domain name cause Complainant’s allegations of bad faith registration and use under Policy ¶ 4(a)(iii) to fail. See Spiliadis v. Androulidakis, FA 1072907 (Nat. Arb. Forum Oct. 17, 2007) (finding no bad faith in part because the respondent had demonstrated substantial preparations to use the <milos.com> domain name in connection with the island of Milos); see also Collegetown Relocation, L.L.C. v. Concept Software & Techs. Inc., FA 96555 (Nat. Arb. Forum Mar. 14, 2001) (finding no bad faith use if it is conceivable that the respondent could make a legitimate, non-competitive use even if it had not yet done so).
The Complainant not having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <cosm.com> and <cosm.net> domain names REMAIN WITH Respondent.
Richard DiSalle, Chair, and Bruce E. O’Connor and G. Gervaise Davis, Panelists
Dated: August 20, 2012
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