Cognigen Networks, Inc. v. Cognigen Corporation; Pharmaceutical Outcomes Research, Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cognigen Networks, Inc. v. Pharmaceutical Outcomes Research

a/k/a Cognigen Corporation

Case No. D2001-1094

1. The Parties

The Complainant is Cognigen Networks, Inc., a corporation of the State of Colorado,

7001 Seaview Avenue NW, Suite 210, Seattle, Washington 98117, USA.

The Respondent is Cognigen Corporation, a Corporation of the State of New York,

395 Youngs Road, Buffalo, New York, USA.

2. The Domain Names and Registrar

The Contested Domain Name is <cognigencorp.com>.

The Registrar is Network Solutions, Inc. (NSI), 505 Huntmar Drive, Herndon,

Virginia 20170, USA.

3. Procedural History

The Complaint was brought pursuant to the Uniform Domain Name Dispute Resolution

Policy ("Policy"), which was adopted by the Internet Corporation for

Assigned Names and Numbers (ICANN) on August 26, 1999, and approved

on October 24, 1999, and in accordance with the ICANN Rules for Uniform Domain

Name Dispute Resolution Policy ("Rules") as approved on October 24,

1999, and by the World Intellectual Property Organization Supplemental Rules

for Uniform Domain Name Dispute Resolution Policy in effect as of December 1,

1999 ("Supplemental Rules").

The Complaint was filed with the WIPO Arbitration and Mediation Center (the

"Center") in hard-copy form on September 4, 2001, with Annexes 1‑15

and the appropriate payment, and additional copies of the Complaint including

annexes were filed on September 13, 2001; and in e-mail form, also with the

annexes, on September 8, 2001.

The Complainant's attorney stated that he separately served, on July 20, 2001,

and by first class mail, a copy of the Complaint together with a copy of the

cover sheet, on the Respondent and on the Registrar, NSI.

Pursuant to paragraph 4(d) of the Policy, the Complainant selected the Center

as the ICANN approved administrative dispute resolution service provider to

administer this proceeding. Through the Complaint, the Complainant requested

either a single or three member panel.

After receiving the original Complaint, the Center, in accordance with paragraph

5 of the Supplemental Rules, determined whether the Complaint fully complied

with the formal requirements of the Rules and the Supplemental Rules. In that

regard, on September 5, 2001, the Center requested confirmation from NSI of

information set forth in the Complaint relative to the contested domain name;

specifically, contact and registrant information for that domain name, as well

as whether NSI received a copy of the Complaint from the Complainant. The Center

also requested NSI to specify: (a) whether the ICANN Policy applies to

the contested domain name, and (b) the current status of that domain name.

Furthermore, on September 5, 2001, the Center, via e-mail, requested that the

Respondent supply the Center with an electronic copy of the Complaint, four

hard‑copies of the Complaint, and clarify whether it desired a single

or three member panel.

On September 7, 2001, NSI provided its response to the Center through which

NSI provided contact information pertinent to the contested domain name from

its WHOIS database, confirmed that NSI is the registrar of that name, stated

that the Policy is in effect (through Network Solutions' version 5.0 registration

agreement) for the domain name, stated that the language of the registration

agreement is English, and stated that the domain name was then in an "active"

status.

On September 14, 2001, the Center, through e-mail, required the Respondent

to amend its Complaint such that the mutual jurisdiction clause (paragraph 15

in the Complaint) referred to the correct jurisdiction in which the Registrar

is located, i.e. Virginia rather than Maryland as originally recited. Later

the same day, the Complainant submitted by e-mail and hard-copy an appropriately

amended version of the Complaint. An appropriate amended Complaint was received

in electronic form by the Center on September 19, 2001 and in hard-copy form

on September 21, 2001. Though the amended Complaint still did not clearly indicate

whether a single or three member panel was requested, the Center inferred, from

the fee originally provided, that the Complainant had chosen a single member

panel.

On September 24, 2001, the Center notified the Respondent of the filing of

the Complaint, including an indication that the Center was forwarding a complete

copy of the Complaint, both in e-mail and hard-copy form, to the Respondent

(with the latter method forwarding a copy of all the annexes as well). The

Complaint, and its accompanying documents, and all subsequent communications

associated therewith were provided in the preferred manners and to the addresses

as mandated by paragraphs 2(a), 2(b) and 4(a) of the Rules.

Hence, the notification to the Respondent having occurred on September 24, 2001,

under paragraph 4(c) of the ICANN Policy, this administrative proceeding is

deemed to have commenced on that date.

Having reviewed the Complaint and succeeding correspondence between the Center

and NSI, in detail, the Panel agrees with the determination of the Center that

the Complaint and its handling met the requirements of the Rules and the Supplemental

Rules.

The Respondent was then provided with a 20‑calendar day period, expiring

on October 14, 2001, to file its response with the Center and serve

a copy of the response on the Complainant.

On September 25, 2001, the Respondent , by e-mail, facsimile and courier letter,

filed a request with the Center to dismiss the Complaint in view of what it

perceived as a parallel, nearly identical, litigation between the parties and

then underway in the United States District Court for the District of Washington

(Cognigen Networks, Inc. v. Cognigen Corp. and Thaddeus Grasela Docket

No. C01-1077). The Center, via an e-mail dated September 28, 2001, responded

to the request by stating that the panel, not the Center, has the sole discretion

to determine whether to suspend or terminate the administrative proceeding in

view of the parallel litigation or to proceed to a decision. As such, the Center

informed the Respondent that it would proceed with the proceeding and inform

the panel, once it was appointed, of this request.

The Respondent then filed its Response, together with Annexes A-J, with the

Center by e-mail on October 12, 2001, and in hard-copy form on October 15, 2001.

Through the Response, the Respondent requested a three person panel and remitted

to the Center the additional fee due for such a panel.

Through an e-mail dated October 16, 2001, and apparently after reviewing the

Response, the Complainant filed a request with the Center to file an additional

submission to address various factual issues raised in the Response. Subsequently,

via a letter sent October 16, 2001, to the Center, via e-mail, courier and facsimile,

the Respondent objected to the Complainant's request for approval to file its

additional submission.

In an e-mail letter to the parties dated October 18, 2001, the Center acknowledged

the Complainant's request and the Respondent's objection (having labeled them

both as "supplemental submissions") and noted that the Supplemental

Rules do not expressly provide for such submissions, but nevertheless indicated

that these particular submissions will be provided to the panel -- once appointed

-- to determine, in its sole discretion, whether to consider these filings or

not, as it deems appropriate.

Accordingly, pursuant to the Rules and Supplemental Rules, on November 27,

2001, the Center appointed the Panel consisting of Mr. Mark Van Buren Partridge,

Esq. and Mr. Neil Arthur Smith, Esq. as Panelists; and Mr. Peter L. Michaelson,

Esq. as Presiding Panelist, each of whom had previously accepted and returned,

by facsimile to the Center, a fully executed Statement of Acceptance and Declaration

of Impartiality and Independence.

Based on the deadline set forth in paragraph 15 of the Rules, a decision was

to be issued by the Panel to the Center on or before December 11, 2001.

Owing to the travel schedule of the Presiding Panelist as well as other time

conflicts encountered by the Panel, on December 10, 2001, the Center, at the

Panel's request, extended the due date of the Panel's decision to December 18,

2001, so as to afford the Panel with sufficient time to thoroughly consider

this matter and properly prepare its reasoned decision.

This dispute concerns one domain name, specifically: <cognigencorp.com>.

The language of this proceeding is English.

4. Factual Background

A copy of the WHOIS registration record for the contested domain name appears

in Annex 1 to the Complaint. As indicated on this record, the Respondent

registered this name with NSI on March 25, 1999.

The Complainant owns the following United States trademark registration for

the mark "COGNIGEN" on which this dispute is based. The Complainant

has provided, in Annex 4 to the Complaint, a hard-copy printout of the corresponding

registration records listed in the publicly web‑accessible Trademark Electronic

Search System (TESS) and Trademark Application and Registrations Retrieval (TARR)

databases maintained by the United States Patent and Trademark Office (PTO).

COGNIGEN (block letters)

US registration 2,426,794; registered February 6, 2001

This trademark was registered, for use in connection with: "Telecommunications

services, namely the electronic transmission of voice, data, video, facsimile

and information; the resale of telecommunication services; namely the electronic

transmission of voice, data, video, facsimile, and information; providing telecommunications

connections to worldwide global computer networks for the transfer and dissemination

of a wide range of information; and paging services" all in international

class 38. This mark claims first use and first use in inter‑state commerce

of April 30, 1997.

The Complainant currently uses

the domain names <cognigen.com> and <cognigen.net>, for which copies

of the WHOIS registration records for these names respectively appear in Annexes

5 and 6 to the Complaint. These records indicate that the Complainant registered

<cognigen.com> on August 31, 1995, and <cognigen.net> on August

5, 1998. The Complainant states that it has used its domain name <cognigen.com>

since 1997. In contrast, the contested domain name, which the Respondent has

registered, is <cognigencorp.com>.

The Complainant and its predecessors

in interest have used its trademark and company name "COGNIGEN" since

at least as early as 1993, when Mr. Kevin Anderson incorporated his company

under that name in California (as indicated from a hard-copy print‑out,

appearing in Annex 8 to the Complaint, of the salient corporate records filed

with the Secretary of State of the State of California). Later, Mr. Anderson

incorporated his company in Nevada, as indicated by the hard-copy print‑out,

appearing in Annex 9 to the Complaint, of the pertinent records of the Secretary

of State of the State of Nevada).

The rights in both the California

and Nevada corporations, along with the trademark "COGNIGEN", were

subsequently assigned to Complainant.

In March 2000, the Complainant became aware that the Respondent had filed a

United States trademark application with the PTO to register the mark "COGNIGEN".

Such an application was filed on May 17, 1999, as serial number 75/707,819,

on an intent-to-use basis, for use in connection with the following services:

"Business marketing consulting services for pharmaceutical and healthcare

industries" in international class 35;

"Electronic storage of data" in international class 39; and

"Pharmaceutical research in the fields of pharmacokinetics, pharmacodynamics,

pharmaceutical economics, and pharmaceutical outcomes" in international

class 42.

This mark was published for opposition on March 14, 2000, by the PTO. The

Respondent has filed a Statement of Use alleging use of the mark in all three

classes as of September 30, 2000. Copies of the corresponding entries

for this application in the TESS and TARR databases appear in Annex 10

of the Complaint and in Annex E of the Response.

The Complainant states, that as a result of the publication, Mr. Darrell Hughes,

CEO of the Complainant, contacted Mr. Thaddeus Grasela, President of the

Respondent (then called "Pharmaceutical Outcomes Research"), to determine

the nature of the services which the Respondent intended to provide under its

mark "COGNIGEN" and how the mark was to be used. In addition, Complainant's

counsel, on April 7, 2000, filed a request with the PTO for an extension of

time to oppose registration of the mark. The Complainant states that as a result

of discussions held between these individuals, Mr. Hughes was assured by

Mr. Grasela that the Respondent would use the mark only as a trademark

for its pharmaceutically related services. Subsequently, counsel for the Respondent

sent a letter dated June 28, 2000, to the Complainant's counsel (a copy of which

appears in Annex 11 to the Complaint) stating that "Our client is in the

health care industry, specifically in the area of drug development and marketing.

The service mark will be used in relation to that industry, as more fully described

in the identification of services in its service mark application."

Based on the representations made in the June 28th letter, the Complainant

apparently concluded that confusion was not likely to arise as a result of concurrent

use of the mark "COGNIGEN" by both it and the Respondent on their

respective goods and/or services. Accordingly, the Complainant apparently decided

not to oppose the Respondent's trademark application and hence refrained from

filing an opposition. The Complainant merely permitted the extended opposition

period to simply expire. Subsequently, on December 12, 2000, the PTO issued

a Notice of Allowance to the Respondent for the 75/707,819 trademark application

for the mark "COGNIGEN".

In a news release dated September 25, 2000 (a copy of which appears as page

1 of Annex 12 to the Complaint), the Respondent announced on its web site

that it changed its corporate name from "Pharmaceutical Outcomes Research,

Inc." to "Cognigen Corporation". The release stated that “Cognigen

Corporation, formerly Pharmaceutical Outcomes Research Inc., is a global analytical

communication company that combines innovate software and analysis with advanced

internet technology and human creativity to transform data and transcend boundaries."

In a web‑based news article dated September 28, 2000 (a copy of which

appears in page 2 of Annex 12 to the Complaint) states: "Cognigen, which

employs 65, sells software that allows scientists all over the world to overcome

communication barriers to facilitate approval of drugs in countries throughout

the world. The name Cognigen is derived from the Latin word "cognoscent"

which means knowledge and the word generate." [emphasis added]

The Respondent states that it is a niche company working in the pharmaceutical

and health care industries. The Respondent designs and analyses data obtained

from pharmacokinetic and pharmacodynamic studies. Its clients include Fortune

100 companies, biotechnology companies, hospitals and managed health care organizations.

Since its founding in 1992, the Respondent has worked with 16 of the world’s

leading pharmaceutical companies to develop and test significant new drugs.

As noted above, the Respondent was originally known as "Pharmaceutical

Outcomes Research" and changed its name to "Cognigen" in September

2000. Copies of representative pages printed from the Respondent's web site,

as of the date of the Response, appear in Annex B to the Response.

The Respondent states that it has used the mark "COGNIGEN" in commerce

since September 2000. The Respondent states that it registered the contested

domain name in March 1999 but did not begin using it until September 2000, when

it also adopted the "COGNIGEN" mark as its name. Various examples

of marketing and advertising materials describing the Respondent's business

and showing the Respondent's use of its mark and domain name appear in Annex

C to the Response.

Based on information shown on its web site, the Complainant provides a multi-level

telecommunications network marketing using some 137,000 “agents” to sell long

distance service, telephone calling cards, cell phones, digital satellite TV

service and Internet connections to consumers. According to that information,

the Complainant's agents sell these products and services to their friends and

family members and, presumably, recruit additional agents to sell the products

to others.

The Respondent states that none of its products or services is related in any

way whatsoever to the Complainant's business.

The Respondent states that, when it created its mark "COGNIGEN",

none of its employees had ever heard of the Complainant or for that matter any

other company then using the word "COGNIGEN".

The Respondent further states that at the time it filed its Federal trademark

application in May 1999, there were no other Federal trademark applications

for the mark "COGNIGEN" filed by the Complainant or any other party—other

than an abandoned application filed by Warner‑Lambert in 1984 for using

the mark as the name of a drug.

The Respondent's federal trademark filing on May 17, 1999, for its mark "COGNIGEN"

preceded the Complainant's trademark filing on January 7, 2000, for the same

mark by approximately seven months. However, the Respondent's filing was made

on an intent‑to‑use basis, and inasmuch as its first use date of

September 30, 2000, is later than its filing date of January 7, 2000,

the earliest date that can be accorded the Respondent, under United States law

(where the parties reside), is its filing date (constructive use date), which

is subsequent to the Complainant's first use date.

The Respondent states that its web site is an electronic version of its brochure

and describes its expertise, services and personnel. The Respondent notes that

it does not advertise its web site except in an advertisement that it runs in

a narrowly distributed technical journal called Clinical Pharmacology and

Therapeutics, a copy of such an advertisement appears in Annex C to the

Response.

The Respondent states that it chose the contested domain name to reflect its

new company name, Cognigen, and to suggest the strengths and qualities that

it believes its customers are seeking—namely pharmacological studies that are

“Not just clinically tested . . . [but also] cognitively engineered,” as its

company’s slogan goes. At the time the Respondent registered its domain name,

it learned that the domain name <www.cognigen.com> was not available,

as that domain name was already in use by the Complainant. Therefore, the Respondent

stated that it chose the contested domain name to enable customers to distinguish

between itself and the Complainant, Cognigen Networks, when addressing e‑mail

messages or typing a web site address.

The Respondent states that, through its counsel's letter of June 28, 2000,

it never made any promises to the Complainant regarding its use of the "COGNIGEN"

mark, including not promising not to use the mark as its company name or in

its domain name.

After the June 28, 2001 letter, the Respondent heard nothing further from the

Complainant for six months. The Respondent states that, based on the Complainant's

silence and failure to file an opposition with the PTO, the Respondent had no

reason to believe that its use of the mark as part of its web address was either

objectionable to the Complainant or somehow in bad faith.

The Respondent states that, in September 2000, it formally changed its corporate

name from "Pharmaceutical Outcomes Research" to "Cognigen".

In doing so, the Respondent started using its new domain name, i.e. the contested

domain name, printed new letterhead and business cards and began using its new

corporate name in advertising and marketing materials.

On November 20, 2000, the Respondent filed its second federal trademark application—for

a stylized mark that combined the word "COGNIGEN" with the Respondent's

corporate logo of a stylized flying dart or paper airplane with a dotted trail

representing “data points.” This application (a copy of its TESS and TARR entries

appears in Annex G to the Response) was filed for use in conjunction with the

same services as listed in the Respondent's earlier-filed 75/707,819 application

but carried a first use date of September 30, 2000.

On December 1, 2000, the Complainant's counsel sent a letter (a copy of which

appears in Annex H to the Response) to the Respondent's counsel objecting to

the Respondent's use of its "COGNIGEN" mark.

The Respondent's counsel responded by letter dated January 26, 2001, to the

December 1, 2000 letter; with a copy of the responding letter appearing

in Annex I to the Response. In this response, Respondent's counsel pointed

out that the Respondent is in the business of designing and analyzing clinical

tests for pharmaceutical companies, while the Complainant is in the business

of selling long distance and cell phones through a network‑marketing scheme.

Counsel was of the opinion that these two businesses are completely dissimilar,

unrelated and in no danger whatsoever of being confused with each other.

The Respondent's counsel also pointed to what she believed to be misstatements

in the December 1, 2000 letter, as follows:

First, the Complainant's counsel claimed that the Respondent is somehow involved

in the telecommunications business because the Respondent uses the words “global

analytical communications tool” in its web site. Respondent's counsel noted

that this claim, however, is based on lifting the words “global analytical communications

tool” out of their context in order to mischaracterize their meaning. Respondent's

counsel stated that when the words are read in context, it is perfectly obvious

that the Respondent's business is (and has always been) designing and analyzing

pharmacological tests.

Second, the Respondent's counsel stated there was never any agreement regarding

as to how the Respondent would or would not use its "COGNIGEN" mark.

Indeed, she stated that the Complainant knew about the Respondent's business

and use of the mark as early as April 2000, when the Complainant filed

with the PTO a request for extension of time to oppose the Respondent's trademark

application but thereafter did not file an opposition. Nor, as counsel stated,

was there any evidence of a written promise or undertaking between the two companies—and

both companies were represented by counsel throughout their dealings with each

other.

After sending the January 26, 2001 letter, the Respondent did not receive any

further correspondence from the Complainant until six months later, when, in

July 2001, the Complainant Networks filed its lawsuit against the Respondent

in the United States District Court for the Western District of Washington.

Further, the Complainant states that it has received hundreds of misdirected

e-mails (a number disputed by the Respondent as excessive) since the Respondent

began using the contested domain name, though it has offered, as proof of its

assertion, only a single such e-mail (a copy of which appears in Annex 13 to

the Complaint), and which was the subject of an e-mail reply from the Complainant's

founder to the writer of the misdirected e-mail and a subsequent letter dated

July 3, 2001, from the Respondent's counsel to the Complainant's counsel regarding

that e-mail exchange.

5. Parties’ Contentions

i. Similarity

The Complainant apparently takes the position that the contested domain name

is nearly identical and hence confusingly similar to its registered mark "COGNIGEN",

by virtue of its inclusion of the term "COGNIGEN", as to likely confuse

Internet users as to source, sponsorship, affiliation or endorsement of the

services advertised on the Respondent's web site; hence, satisfying the confusing

similarity requirement in paragraph 4(a)(i) of the Policy.

ii. Legitimacy

The Complainant contends that the Respondent has no rights or legitimate interests

in the contested domain name pursuant to paragraph 4(a)(ii) of the Policy.

Specifically, as best understood, the Complainant appears to contend that the

Respondent lacks rights and legitimate interests in the contested domain name

inasmuch as its actual use of the name, in conjunction with its present web

site, extends beyond the use indicated in the June 28, 2000 letter from

the Respondent's counsel and to which the Complainant previously assented.

iii. Bad Faith

The Complainant contends that the Respondent has registered and is now using

the contested domain name in bad faith.

Specifically, the Complainant contends that the Respondent, by intentionally

changing its domain name to the contested domain name which includes the term

"COGNIGEN" and which the Complainant uses as its mark and corporate

name, attempted to attract Internet users to the Respondent’s web site who were

seeking the services of the Complainant. The Complainant then contends that,

as a consequence of this change, the Respondent created a likelihood of confusion

with the Complainant’s web site as to the source, sponsorship, affiliation or

endorsement of its services advertised thereon.

Therefore, the Complainant concludes that the Respondent’s conduct in registering

and using the contested domain name constitute bad faith registration and use

under paragraph 4(a)(iii) of the Policy.

B. Respondent

i. Similarity

The Respondent does not contest the similarity between the Complainant's mark

"COGNIGEN" and the contested domain name.

ii. Legitimacy

The Respondent contends that it has legitimate rights and interests in its

mark "COGNIGEN" under paragraph 4(a)(ii) of the Policy.

Specifically, the Respondent points to its two United States trademark applications,

one filed on May 17, 1999, and the other November 20, 2000 — neither of

which the Complainant has opposed. The Respondent contends that it registered

its domain name in March 1999, without bad intent and for use in eventually

changing its corporate identity. In that regard, the Respondent contends that,

by changing its name to "COGNIGEN CORPORATION" it has done nothing

to cause confusion, divert customers, disparage the Complainant or otherwise

act in an illegal manner under the United States trademark laws.

Furthermore, the Respondent contends that it is using its mark and the contested

domain name in connection with a substantial business, with substantial customers

and in no way harmful or derogatory to the Complainant, and in a manner that

accords with that stated in its June 28, 2001 letter to the Complainant and

to which the Complainant previously assented.

Given this assent as early as late June 2000, the Respondent then went forward

with its plans to adopt the "COGNIGEN" mark for its business and,

in September 2000, began using the mark on all its materials and also began

using the contested domain name as an address to its web site.

iii. Bad Faith

The Respondent, not surprising, contends that its conduct does not amount to

bad faith use and registration.

Specifically, it contends that it registered the contested domain name in good

faith. In that regard, it chose the mark "COGNIGEN", which forms

the basis of the contested domain name, devoid of any prior knowledge of the

Complainant's mark. In that regard, it points to its application to federally

register its mark filed approximately seven months prior to the filing date

of the Complainant's trademark application. Moreover, the Complainant contends

that its use of its mark and the contested domain name is limited to the areas

in which it conducts its business—research, consulting and data storage services

in the pharmaceutical and health care industry.

Furthermore, the Respondent contends that it never offered to sell or transfer

its mark or domain name to the Complainant. In addition, the Respondent contends

that it has no intention and has taken no steps to divert customers of the Complainant,

and that it did not register its domain name in order to deprive the Complainant

of use of its mark as its domain name.

Moreover, the Respondent contends that it has never taken any steps to create

or encourage confusion, deception or mistake over the differences between its

business and that of the Complainant -- as evidenced by the fact that, even

to a casual observer, the web sites of these two businesses are completely unrelated.

Lastly, the Respondent contends that it did not register its mark for the purpose

of disrupting or harming the Complainant in any way.

6. Discussion and Findings

A. Respondent's request to terminate the proceeding

The Panel has considered the Respondent's request to dismiss (terminate) this

administrative proceeding given the parallel proceeding involving the present

parties then underway before the United States District Court for the District

of Washington. It does not appear that Respondent ever asked the court where

that lawsuit is pending to either stay or terminate the Complainant’s pursuit

of this UDRP arbitration.

There is no provision in the Policy that divests an ICANN panel of its discretion

to continue an administrative proceeding in view of another proceeding between

the same parties concurrently occurring in a different forum, as here.

In that regard, paragraph 4(k) of the Policy states in pertinent part: "The

mandatory administrative proceeding requirements set forth in Paragraph 4 shall

not prevent either you or the complainant from submitting the dispute to a court

of competent jurisdiction for independent resolution before such mandatory administrative

proceeding is commenced or after such proceeding is concluded." Hence,

while the Panel views this administrative proceeding as mandatory on the Respondent

by virtue of the dispute resolution provision in its registration agreement,

nevertheless either party has the option, at its sole discretion, of instituting

litigation in a court of law before this proceeding is commenced or after it

has been concluded. The Complainant, by instituting a lawsuit in the United

States District Court for the District of Washington during July 2001, and prior

to the filing of the Complaint here (on September 4, 2001), has simply done

just that.

Moreover, as the Panel reads the Complaint, the relief which the Complainant

seeks, which is predicated on allegations of federal trademark infringement

and unfair competition under federal and state law, does not specifically include

the relief sought through this proceeding; namely, cancellation of the contested

domain name. The allegations raised and the relief sought by the Complainant

through its parallel proceeding extend well beyond those issues which this Panel

can consider and the relief it can provide through the present administrative

proceeding.

Moreover, since both the Complaint and Response have been filed in this proceeding,

hence providing the Panel with the documents necessary for it to proceed, the

Panel has decided, in accordance with the discretion granted it under paragraph

18(a) of the Rules, to: (a) deny the Respondent's request to dismiss this proceeding,

and, as such, (b) consider these filings and proceed to decision in this

matter.

B. Complainant's request to file an additional submission

The Panel has reviewed the Complainant's offer of proof set forth in its October 16, 2001

e-mail to the Center that formed the basis of its request to file an additional

submission.

For the reasons set forth below, the Panel finds that the Complainant has not

met its burden of proof sufficient to warrant the relief it seeks. Now, in

assessing this request in the light most favorable to the Complainant, the Panel

believes that even if the Complainant were able to show all the additional facts

it intends, it is unlikely that these facts will cure its failure of proof.

Accordingly, the Panel also now denies, as moot, the Complainant's request

to file an additional submission.

C. Required elements under paragraph 4(a) of the Policy

i. Similarity

No doubt exists whatsoever that the contested domain name is nearly identical

to the Complainant's "COGNIGEN" mark. The differences between the

domain name and the registered mark are simply the concatenation of a generic

abbreviation "corp" onto the latter coupled with the addition of

the generic top level domain ".com".

Various ICANN panels have assessed similarity based on a likelihood of confusion

test, while other panels have limited their inquiry to comparing the contested

domain name to the Complainant's trademark. To simplify our analysis, we base

our view on the latter approach.

Merely from comparing the mark and the domain name, the Panel believes that

these differences, in and of themselves, are simply insufficient to dispel confusion.

Therefore, the Panel also finds that sufficient similarity exists under paragraph 4(a)(i)

of the Policy for the contested domain name.

ii. Illegitimacy

Under paragraph 4(c)(i) of the Policy, rights and legitimate interests can

be shown through proof by a respondent of any of a variety of factors, one of

which being that: "before any notice to you 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".

There is no doubt here that the Respondent registered the contested domain

name (in March 25, 1999) and began making preparations for its use (prior to

September 2000) well before it had notice of this dispute (in early September

2001) in a legitimate effort to change its corporate identity from "Pharmaceutical

Outcomes Research" to "Cognigen" in September 2000.

There can be no question that the Respondent, since the September 2000 date

when it started using the contested domain name, has done so and is continuing

to do so in connection with bona fide service offerings specifically in the

pharmaceutical field. Its registration of its mark "COGNIGEN", coupled

with its printing of new letterhead, business cards, and advertising and marketing

materials and development of its current web site that bears this mark are all

consistent with demonstrable preparations to use its domain name in connection

with its new corporate identity -- preparations which, in fact, it carried out

prior to September 2000. Its federal application to register its second "COGNIGEN"

based mark, as that mark is also used in connection with the Respondent's service

offerings, further illustrates the Respondent's use of its mark "COGNIGEN"

and the contested domain name, which includes this mark, in connection with

its bona fide service offerings.

The Complainant has simply proven no facts that would persuade this Panel to

conclude otherwise and view the Respondent as lacking rights and legitimate

interests in the contested domain name.

Thus, the Complainant has failed to prove a lack of rights and legitimate interests

as required under paragraph 4(a)(ii) of the Policy. For this reason, its Complaint

fails.

iii. Bad Faith

Inasmuch as the Panel views the Respondent's actions in registering and subsequently

using the contested domain name as a consistent exercise of its rights and legitimate

interests in changing its corporate identity and particularly in a manner to

which the Complainant acquiesced, the Panel does not view any of these actions

as evidencing bad faith use or registration of that name under paragraph 4(b)

of the Policy.

Accordingly, the Complainant has also failed to provide bad faith use and registration

under paragraph 4(a)(iii) of the Policy.

7. Decision

In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the relief

sought by the Complainant, namely cancellation of the contested domain name,

is hereby DENIED.

Peter L. Michaelson, Esq.

Presiding Panelist

Mark Van Buren Partridge, Esq.

Panelist

Neil Arthur Smith, Esq.

Panelist

Dated: December 18, 2001