Mithral Communications Design, Inc. brought a UDRP Complaint against the domain names cosm.com, and cosm.net, which the domain holder bought for “over $55,000?.
The three member panel ruled in favor of the domain holder despite a Trademark and desipte cosm.net doesn’t even resolve, based of a planned use of the domain name by the holder.
Here are the relevant facts and findings:
“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 ”
“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 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 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.”
“The Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under the Policy”
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”
“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.”
“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.”
Article source: http://www.thedomains.com/2012/08/23/cosm-com-cosm-net-bought-for-over-55k-saved-in-a-udrp/. Creative Commons (CC)
