Avaya Inc. v. Sudhir Sazena
Claim Number: FA0810001229266
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@cavaya.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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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
Complainant
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.
Respondent
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.
FINDINGS
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.
DISCUSSION
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.
The
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.
DECISION
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
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum