national arbitration forum

 

DECISION

 

Avaya Inc. v. AltiGen Communications, Inc.

Claim Number: FA1204001438176

 

PARTIES

Complainant is Avaya Inc. (“Complainant”), represented by Joseph Englander of Shutts & Bowen LLP, Florida, USA.  Respondent is AltiGen Communications, Inc. (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <avayadock.com>, <avayaucdock.com>, and <avayamobiledock.com>, registered with GoDaddy.com, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 5, 2012; the National Arbitration Forum received payment on April 5, 2012.

 

On April 5, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <avayadock.com>, <avayaucdock.com>, and <avayamobiledock.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 April 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 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@avayadock.com, postmaster@avayaucdock.com, and postmaster@avayamobiledock.com.  Also on April 9, 2012, the Written Notice of the Complaint notifying Respondent of the e-mail 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.

 

On May 7, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant

a)    Complainant has rights in the AVAYA mark which is used in connection with telecommunications business providing communications hardware and software and business management and consultation services;

b)    Complainant has registrations through the United States Patent and Trademark Office (“USPTO”) for the AVAYA mark (e.g., Reg. No. 2,696,985 registered March 18, 2003);

c)    The <avayadock.com>, <avayaucdock.com>, and <avayamobiledock.com> domain names are confusingly similar to the AVAYA mark;

d)    Respondent is not commonly known by the <avayadock.com>, <avayaucdock.com>, and <avayamobiledock.com> domain names;

e)    The <avayadock.com>, <avayaucdock.com>, and <avayamobiledock.com> domain names resolve to the <thefusionphone.com> domain name at which Respondent operates its competing business;

f)     Respondent registered and is using the disputed domain name in order to divert Internet users from Complainant’s legitimate website in order to take commercial advantage of their mistakes regarding confusion Respondent created as to the source of the <avayadock.com>, <avayaucdock.com>, and <avayamobiledock.com> domain names;

g)    Respondent had actual knowledge of Complainant’s rights in the AVAYA mark prior to its registration and use of the disputed domain name.

 

B.  Respondent

Respondent did not submit a timely Response.  It did submit an e-mail stating it was not disputing the Complaint.

 

FINDINGS

For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant contends that it has rights in the AVAYA mark. Complainant provides to the Panel its registrations for the AVAYA mark (e.g., Reg. No. 2,696,985 registered March 18, 2003) with the USPTO. Panels have previously held that the registration of a mark with a federal trademark authority is evidence of rights in a mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). The Panel finds that Complainant has rights in the AVAYA mark pursuant to Policy ¶ 4(a)(i).

 

Complainant contends that Respondent’s <avayadock.com>, <avayaucdock.com>, and <avayamobiledock.com> domain names are confusingly similar to the AVAYA mark. Complainant asserts that Respondent has simply added a descriptive term and generic top-level domain (“gTLD”) to the mark in the disputed domain name. The Panel finds that the addition of a descriptive term fails to make a disputed domain name distinct from the mark within it. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)). The Panel also finds that Respondent’s addition of the gTLD “.com” to each of the disputed domain names is irrelevant for the purposes of a determination of confusing similarity. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that Respondent’s <avayadock.com>, <avayaucdock.com>, and <avayamobiledock.com> domain names are confusingly similar to the AVAYA mark under Policy ¶ 4(a)(i).

Complainant has proven this element.

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant argues that Respondent is not commonly known by the disputed domain names. Complainant asserts that the <avayadock.com>, <avayaucdock.com>, and <avayamobiledock.com> domain names were all created on August 31, 2011, long after Complainant had established rights in the AVAYA mark. Complainant also argues that Respondent has no connection or affiliation with Complainant and has no trademark rights reflecting the disputed domain names. Complainant provides the WHOIS records for the disputed domain names, which all list “AltiGen Communications, Inc.” as the domain name registrant. The Panel finds that this record does not suggest a connection between the disputed domain names and Respondent beyond the simple registration of the domain names. The Panel also finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Complainant asserts that Respondent is not making a Policy ¶¶ 4(c)(i) and 4(c)(iii) protected use of the disputed domain names. Complainant contends that the <avayadock.com>, <avayaucdock.com>, and <avayamobiledock.com> domain names resolve to the <thefusionphone.com> domain name where Respondent operates its business in competition with Complainant. The panels in Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), and Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), found that the operation of a competing website is not a use which confers upon the respondent rights or legitimate interests in the disputed domain name. The Panel finds that Respondent’s operation of a competing website that the disputed domain names resolve to is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). 

 

Complainant has proven this element.

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent registered and is using the disputed domain name in order to create confusion as to the source of the disputed domain names and then take commercial advantage of Internet users’ mistakes regarding this confusion. Complainant asserts that Respondent’s <avayadock.com>, <avayaucdock.com>, and <avayamobiledock.com> domain names resolve to the <thefusionphone.com> domain name where Respondent operates its own website. The Panel finds that Respondent registered and is using the <avayadock.com>, <avayaucdock.com>, and <avayamobiledock.com> domain names in bad faith because Respondent intended to create confusion as to the source of the disputed domain names and then take commercial advantage of the mistakes made by Internet users as a result of the confusion pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market).

 

Complainant asserts that Respondent registered and began using the <avayadock.com>, <avayaucdock.com>, and <avayamobiledock.com> domain names with actual knowledge of Complainant’s rights in the AVAYA mark. Complainant contends that Respondent’s operation of a competing website is evidence that Respondent knew of Complainant’s rights in the AVAYA mark and was attempting to use the association between Complainant and the AVAYA mark to divert customers to its own website. See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated a mark in which the complainant had rights).  The Panel concludes that Respondent had actual knowledge of Complainant’s rights in the mark and finds bad faith registration under Policy ¶ 4(a)(iii).

 

Complainant has proven this element.

 

DECISION

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 <avayadock.com>, <avayaucdock.com>, <avayamobiledock.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  May 10, 2012

 

 

 

 

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