Avaya Inc. v. Peter Schmid
Claim Number: FA1201001426677
Complainant is Avaya Inc. (“Complainant”), represented by Joseph Englander of Shutts & Bowen LLP, Florida, USA. Respondent is Peter Schmid (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <avaya-gov.com>, <avayaenterprisesolutions.com>, and <avayagovernmentsolutions.com>, ("the Domain Names") registered with GoDaddy.com, LLC.
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 of Palmer Biggs Legal as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 26, 2012; the National Arbitration Forum received payment on January 26, 2012.
On January 26, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <avaya-gov.com>, <avayaenterprisesolutions.com>, and <avayagovernmentsolutions.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement 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 January 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 16, 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 postmaster@avaya-gov.com, postmaster@avayaenterprisesolutions.com, postmaster@avayagovernmentsolutions.com. Also on January 27, 2012, the Written Notice of the Complaint, notifying Respondent of the email 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 January 27, 2012.
On February 2, 2012, 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 names be transferred from Respondent to Complainant.
A. Complainant
The Complainant's contentions can be summarised as follows:
The Complainant is a global leader in enterprise communications systems. Complainant has rights to the mark AVAYA and marks that incorporate the mark AVAYA in countries and jurisdictions all over the world including the USA. AVAYA GOVERNMENT SOLUTIONS has been used as a trade mark by the Complainant since 2009.
The Domain Names are confusingly similar to the Complainant's famous AVAYA mark. The additional term "government solutions" does not suffice to differentiate the Domain Names from the AVAYA mark so as to avoid a finding of confusing similarity.
The Respondent has no rights or legitimate interests in respect of the Domain Names. Respondent has no connection with the Complainant and has no consent to use the AVAYA mark. The Respondent has never obtained any trade mark registrations for AVAYA. The Domain Names are used to point to pornographic material. This is not a bona fide offering of goods or services, nor a legitimate non commercial or fair use of the Domain Names. Respondent is not commonly known by the Domain Names.
The Domain Names are registered and used in bad faith to point to graphic pornographic material with knowledge of the Complainant's existing rights in the AVAYA mark in an attempt to tarnish this mark or mislead and divert customers.
B. Respondent
Respondent agrees to transfer the Domain Names to the Respondent.
The Complainant is a global leader in enterprise communications systems. Complainant has rights to the mark AVAYA and marks that incorporate the mark AVAYA in countries and jurisdictions all over the world including the USA. AVAYA GOVERNMENT SOLUTIONS has been used as a trade mark by the Complainant since 2009.
Respondent agrees to transfer the Domain Names to the Respondent.
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.
The Panelist's opinion is that the Complainant has rights in a trade mark that is identical to the Domain Name for the purposes of the Policy and that the Respondent has no legitimate interest in the name and has registered and used it in bad faith.
However, it has been held that in circumstances such as this where the Respondent has not contested the transfer of the Domain Name and agrees to transfer the Domain Name to the Complainant, the Panel may decide to forego the lengthy traditional UDRP analysis and order an immediate transfer of the domain name. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”). As such the Panel will order the transfer of the Domain Name to the Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <avaya-gov.com>, <avayaenterprisesolutions.com>, <avayagovernmentsolutions.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: February 6, 2012
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