Avaya Inc. v. Sudhir Sazena
Claim Number: FA0810001229266
Complainant is Avaya Inc. (“Complainant”), represented by Joseph
R. Englander, of Shutts & Bowen LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cavaya.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 14, 2008; the National Arbitration Forum received a hard copy of the Complaint on October 15, 2008.
On October 14, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <cavaya.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 28, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 17, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on November 11, 2008.
An Additional Submission was received from Complainant on November 17, 2008, and was determined to be timely and complete pursuant to Supplemental Rule 7.
On November 21, 2008 the Respondent filed an Additional Statement in response.
On November 19, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dawn Osborne as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The Complainant contentions can be summarized as follows:
The Complainant has trade mark rights and goodwill in the word AVAYA in
both word and logo form and has had long use and continues to use the Avaya marks
in jurisdictions throughout the
Therefore, the Complainant contends the disputed Domain Name is confusingly similar to the AVAYA trade mark. The Domain Name comprises the Complainant’s mark AVAYA in its entirety, except that the Domain Name begins with the letter “C”; this slight alteration does not render the disputed domain name distinct from the mark. Further, the Respondent has been doing business on the website not that dissimilar to the Complainant’s field of business, for example, the owner has been using the website for the following services, business management and consultation; management consultation in the field of customer, supplier, partner and employee relationship management for the benefit of others, installation and maintenance of computer hardware; installation of computer networks; and maintenance and repair of computer networks. Moreover, the owner of the disputed Domain Name has been selling competing services using materials which use a blatant infringement of the Complainant’s stylized word mark in the same colour red, thereby evidencing its bad faith registration and use.
The Respondent has no legitimate interest or rights in the Domain Name. The Complainant has no relationship with the Respondent and has not given it permission to use the AVAYA marks. Also, the Respondent has not made use of, nor made 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. The Respondent has intentionally misdirected consumers to competing services, thereby disrupting the Complainant’s business. Respondent has not used the Domain Name for legitimate non commercial or fair use as it has used the Domain Name for commercial gain in a related business enterprise to mislead consumers into believing that its website is the “official” AVAYA website and to divert consumers based on its messages on its website. Such use constitutes a breach of the Registration Agreement.
The Respondent registered the Domain Name in bad faith and is using the Domain Name in bad faith. It is highly unlikely that Respondent selected the Domain Name without being aware of Complainant’s well known AVAYA marks. In addition, Respondent has used the Domain Name to operate a website through which it sells an assortment of goods and services identical to those offered by Complainant itself and for which its AVAYA marks are registered, namely, communications software and business consultation creating a strong likelihood of confusion in an effort to ride on the Complainant’s goodwill or to suggest that the Respondent is connected to the Complainant when it is not. The Respondent has taken down its web pages from the Domain Name but could resume use at any time.
The Respondent contentions can be summarized as follows:
The Domain Name, <cavaya.com> is not confusingly similar to a trade mark or service mark owned by the Complainant because the Domain Name has been used by Respondent only to provide products and services as a partner to Oracle Corporation, which is not related to the goods and services offered by the Complainant (telecommunications products and services). Respondent’s Domain Name has been used solely to market Oracle products and related solutions, as a partner to Oracle Corporation.
Additionally, the word “Cavaya” means “intelligence” in the Sanskrit language, which is why it was selected as the name of Respondent’s company and domain name, since the business of the Respondent was to provide “intelligent” solutions.
Respondent’s business has served as a partner to Oracle Corporation since 2004 for Oracle’s applications, products and services. Respondent registered the disputed Domain Name in April 2004, and has used it in connection with a bona fide offering of goods or services well before any notice to the Respondent of the dispute. In 2005, Respondent formed Cavaya, Inc. as a California Corporation to provide services, previously mentioned, again, well before any notice of a dispute. As such, Respondent has both a right and legitimate interest in the Domain Name.
Prior to the dispute, the Respondent has not attempted to contact the Complainant for the purposes of soliciting or otherwise attempting to sell, rent or transfer the Domain Name. Further, Respondent has not engaged in a pattern of conduct of registering Domain Names to the detriment of owners of trade mark or service marks, thus illustrating the Respondent’s use of the Domain Name providing legitimate goods and services for years with no intent of disrupting the Complainant’s business.
The Respondent has now sold the assets of its company to Idhasoft Inc.
C. Additional Submissions
Pursuant to Rule 7 of the National Arbitration Forum’s Supplemental Rules, the Complainant filed an additional submission in answer to the Respondent’s Response on November 17, 2008 the new and relevant submissions in which can be summarized as follows:
Firstly, the Complainant stated that although the Respondent has shown a legitimate partnership with Oracle Corporation, the aforementioned Corporation directly competes with Complainant in the areas of unified communications, Internet protocol telephony, and computer-telephone integration. Further, Oracle partners with companies in direct competition to the Complainant in communications software and hardware market. The Complainant uses the Avaya marks for business management and consultation; management consultation in the field of customer, supplier, partner and employee relationship management and installation and maintenance of computer software and technical support services. Respondent has used the Domain Name for business management and consulting and technical support, thus offering services that directly compete with Complainant and that show an association with Complainant, where none exists.
Complainant refutes claims brought in the Response as to the name choice,
Cavaya. Upon reference to relevant
online sources translating various Sanskrit terms into English, the Complainant
found no English translation for any Sanskrit word indicated by the letters
Cavaya. Complainant, did however, find
several works translated from Sanskrit to mean intelligence, including abdhutakratu,
avagama, and ehimaya. Sanskrit
is spoken by less than fifteen
thousand citizens in
The Respondent registered the Domain Name after the Complainant registered its Avaya marks and used the mark after the Complainant’s first use. The Respondent does not dispute that the Complainant has prior trade mark rights.
In concluding the additional submission, the Complainant responds to Respondent’s bad faith defence. The fact that the Respondent has not contacted, solicited or attempted to sell, rent or transfer the Domain Name to the Complainant has little significance because the Respondent has been successfully using the Domain Name to trade on Complainant’s reputation; thus, the Respondent has engaged in bad faith registration and use of the Domain Name.
Pursuant to Rule 7 of the National Arbitration Forum’s Supplemental Rules, the Respondent filed an additional submission in answer to the Complainant’s additional submission on November 21, 2008 the new and relevant submissions in which can be summarized as follows:
Respondent commenced by stating that Cavaya has not been involved in offering any services in the areas of “unified communications”, telephony or computer – telephone integration, nor does Cavaya’s website make any mention of this type of service. Consequently, the Complainant’s claims that Cavaya directly compete with their goods and services are incorrect and without merit. The services of both companies are quite different. There is no riding on the coattails of the Complainant as the Complainant suggests.
In relation to the Complainant’s remarks relating to the term Cavaya the Complainant is incorrect in stating that Cavaya does not mean intelligence. “Kavayah” means The Intelligent. The “h” in Kavayah is silent and not pronounced. Further, the word is better pronounced with a C rather than a K, and this is why the Respondent chose “Cavaya”. It is irrelevant that Sanskrit is a dead language. So is latin which is still widely referred to. The Respondent chose “Cavaya” as it was unique and had a meaning related to what the Respondent is doing.
The Panelist finds that since the marks are not confusingly similar, the Respondent appears to have a legitimate interest in the Domain Name and did not register it in bad faith the Domain Name will not be transferred to the Complainant.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Respondent explains that it has sold its rights in the Domain Name to Idhasoft Inc . However the Respondent appears to be connected with
this new company still, for example the e mail address used is
The Respondent does not dispute the Complainant’s registered and unregistered rights in the mark Avaya. The panelist finds that the Domain Name does contain the Complainant’s trade mark, however it is likely that the Domain Name would be naturally perceived as the word “Cavaya” and not “c” plus “avaya”. Indeed the Respondent has been trading for four years and the Complainant has not produced any evidence of confusion. Accordingly, the Panelist is of the view that the Domain Name is not confusingly similar to a trade mark in which the Complainant has rights.
Criteria set out in the Policy whereby a Respondent can demonstrate its rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) of the Policy include:
“(i) before an 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights).
Since April 2004 when it registered the disputed domain name and before the Complaint was issued, the Respondent had used the Domain Name in connection with a bona fide offering of goods and services and had been trading as Cavaya Inc. The Respondent does appear to have a genuine business using a non confusingly similar name which operates independently of the use of the Domain Name and has done for approximately four years. See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the respondent had rights or legitimate interests in the disputed domain name because the respondent had been providing motorcycle customization and detailing services for some time under its mark THE SKUNKWORX CUSTOM CYCLE); see also Russell & Miller, Inc. v. Dismar Corp., FA 353039 (Nat. Arb. Forum Dec. 20, 2004) (finding that the respondent used the <salesigns.com> domain name for a bona fide offering of goods or services, which was established by the respondent’s “longstanding involvement in the ‘sale sign’ market”); see also Successful Money Mgmt. Seminars Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001) (Respondent had a legitimate interest in the domain name because Respondent selected the name in good faith for its web site, and was using the domain name in connection with its direct-mail marketing goods and services).
Accordingly, the panelist holds that the Respondent has demonstrated a right or legitimate interest to the Domain Name under the Policy. (The extent to which the Complainant and Defendant’s goods and services overlap or the Defendant’s mark or logo are too close to that of the Complainant which is a matter of much dispute between the parties will be relevant to the application of trade mark or unfair competition law to this factual situation in any Court, but is not determinative in this context in the absence of evidence that the mark was not adopted in good faith.).
There is no evidence that the Respondent has been involved in a pattern of registration of domain names containing the trade marks of others or has sought to sell the name to the Complainant. In light of the findings as to legitimate interest and in the absence of any evidence of bad faith (the question of alleged infringement of registered and unregistered trade mark rights not being determinative of this question under the Policy) the Complainant has not proven registration and use in bad faith. See Lockheed Martin Corp., supra (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name because the respondent had been providing motorcycle customization and detailing services for some time under its mark THE SKUNKWORX CUSTOM CYCLE); see also Successful Money Mgmt. Seminars Inc., supra.
Not having established any of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <cavaya.com> domain name shall remain with the Respondent.
Dawn Osborne, Panelist
Dated: 9 December 2008
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