Avaya Inc. v. Avayo Electronics
Claim Number: FA1302001487607
Complainant is Avaya Inc. (“Complainant”), represented by Joseph Englander of Shutts & Bowen LLP, Florida, USA. Respondent is Avayo Electronics (“Respondent”), represented by Konstantinos Zournas, Greece.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <avayo.net>, registered with TUCOWS, INC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Paul M. DeCicco and The Honourable Neil Anthony Brown QC as Panelists, Richard Hill as Presiding Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 27, 2013; the National Arbitration Forum received payment on February 27, 2013.
On February 28, 2013, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <avayo.net> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 March 4, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 2013 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@avayo.net. Also on March 4, 2013, 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.
A timely Response was received and determined to be complete on March 25, 2013.
Complainant filed an Additional Submission, which was received and found to be compliant on April 1, 2013. The Forum notified Respondent of this submission on April 2, 2013.
Complainant filed another Additional Submission on April 2, 2013, which the Forum found to be deficient under National Arbitration Forum Supplemental Rule 7(e), which limits a party to a single additional submission. However, in all the circumstances, the Panel decided to accept the late submission and take it into account.
Respondent filed an Additional Submission on April 8, 2013, which was found to be compliant.
On April 10, 2013, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Paul M. DeCicco and The Honourable Neil Anthony Brown QC as Panelists, Richard Hill as Presiding 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant alleges that it owns several US registered trademarks incorporating the term AVAYA that have been used since at least 2000 in connection with its ongoing telecommunications business activities, in particular hardware and software and business management and consulting services. It also owns numerous international trademarks, registered in Canada, the Middle East and elsewhere, and several domain names incorporating its marks. The Complainant employs some 17,500 people worldwide; it and its products are well-known around the world and its marks are now famous.
According to the Complainant, the disputed domain name is confusingly similar to its mark because it is an obvious misspelling of the mark: the mark and the disputed domain name differ by only one letter. The Complainant cites UDRP cases to support its position.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name, in particular because it is engaged in typosquatting. Further, the Respondent is not sponsored of affiliated with the Complainant and the Complainant has not licensed or otherwise given permission to use its mark. Misdirecting Internet traffic by using the Complainant’s mark is not a bona fide offering of goods or services in the sense of the Policy. The Complainant cites UDRP cases to support its position.
According to the Complainant, the disputed domain name was registered and is being used in bad faith because the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s mark. The Complainant’s marks are famous, so the Respondent must have been aware of them when it registered the disputed domain name. The Complainant cites UDRP cases to support its position.
The Complainant states that the disputed domain name was registered in 2005, long after the Complainant had established its trademark rights. The registrant of the disputed domain name is “Avayo Electronics”, a Canadian corporation. That is apparently a manufacturer of data and telecommunication products including structure cabling systems, fiber optic cables and accessories, raised flooring/jack flooring systems, server racks and network cabinets. Such products may be used in connection with the telecommunication products and services offered by the Complainant. That is, the goods and services offered for sale by the Complainant and the Respondent are complementary and are often used together.
According to the Complainant, using the disputed domain name to promote competing goods and services disrupts the Complainant’s business and is evidence of bad faith in the sense of the Policy. The Complainant cites UDRP cases to support its position.
B. Respondent
The Respondent alleges that the disputed domain name is not confusingly similar to the Complainant’s mark. An objective bystander, comparing the disputed domain name with the mark “AVAYA” would not, on the balance of probabilities, conclude that the domain name and the mark are confusingly similar. In the Internet context, users are aware that domain names for different websites are often similar and that small differences matter. Further, the Respondent has been trading for eight years but the Complainant has not produced any evidence of confusion by Internet users or clients and customers. The Respondent cites UDRP cases to support its position.
The Respondent denies having engaged in typosquatting. It chose the disputed domain name because it corresponds to the name of its Canadian corporation that was founded in 2005. The Respondent registered the trademark AVAYO in the UAE in May 2008.
According to the Respondent, it has more than 100 employees worldwide. The Respondent and the Complainant offer different products and services. The Respondent’s turnover is more than USD 13 million and it engages in extensive legitimate commercial operations. The Respondent offers evidence to support these allegations and it cites UDRP cases to support its position.
The Respondent invokes the doctrine of laches (the trademark owner’s failure to pursue an alleged domain name infringer in good time) to support its argument to the effect that it has rights and legitimate interests in the disputed domain name. The Respondent cites UDRP cases to support its position.
The Respondent states that it is making a legitimate and fair commercial use as the disputed domain name corresponds to the Respondent’s registered company. The Respondent does not intend or ever intended for a commercial gain misleadingly diverting consumers and has not tarnished the Complainant’s trademark.
The Respondent notes that, in the Complaint, the Complainant admitted that the Respondent is a manufacturer of certain types of equipment. Thus, according to the Respondent, the Complainant admits that the Respondent does have rights and legitimate interests in the disputed domain name. The Respondent cites UDRP cases to support its position.
According to the Respondent, it registered the disputed domain name with the sole purpose of using it for its company website and e-mail. It does not own any other domain names. Thus it has neither registered nor used the disputed domain name in bad faith in the sense of the Policy. The Respondent cites UDRP cases to support its position.
The Respondent notes that, in the Complaint, the Complainant states that the Respondent’s products and services do not compete with those of the Complainant, rather, they are complementary.
The Respondent alleges that “the Complaint is downright frivolous, a disgrace to the UDRP and an insult to Panelists that have to put up with such Complaints.” In this proceeding, the Complainant is represented by counsel who cited numerous UDRP decisions in support of the Complaint. This shows that, at a minimum, the Complainant’s counsel is familiar with the UDRP system and with the methods of researching prior UDRP decisions. From an objective view of the facts, the Complainant, employing experienced counsel, had to have known that it could never prove that the Respondent lacks rights and legitimate interests in respect to the disputed domain name. The Respondent has used the disputed domain name in connection with a bona fide offering of goods, the Respondent has been commonly known by the domain name and the Respondent is making a legitimate use of the domain name. All the facts were known by the Complainant as all these were presented in the Complaint. The Complainant and its counsel have already lost two UDRP cases, yet they persist in testing the limits of the UDRP. They have engaged in reverse domain name hijacking. The Respondent cites UDRP cases to support its position.
C. Additional Submissions
In its first Additional Submission, the Complainant presses its case regarding confusing similarity.
Further, the Complainant states that the Respondent has no established rights or legitimate interests in the disputed domain name and states that the Respondent must have registered the disputed domain name in order to intentionally to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site.
The Complainant does not address the allegations of the Respondent to the effect that the disputed domain name merely corresponds to the name of the Respondent’s corporation. It does however state that some of the addresses provided by Respondent appear to be private dwellings.
The Complainant argues that the doctrine of laches is inapplicable and cites UDRP cases to support its position.
The Complainant denies that it has engaged in Reverse Domain Name Hijacking.
In its second, deficient, Additional Submission, the Complainant presents a report by a private investigator to the effect that the Respondent’s address in Canada corresponds to a private house whose resident is not affiliated with the Respondent. However, the Respondent’s brother lives next door. Further, according to the report, the Respondent does not do business in Canada.
In its Additional Submission, the Respondent notes that the Complainant’s Additional Submission merely restates what is already in the Complaint, provides no actual proof for any of its allegations, and does not address the main points of the Response.
According to the Respondent, the locations mentioned by the Complainant are small offices which are located in residential areas. The Respondent’s factories are located in its other locations.
The Respondent notes that the Complainant has submitted a second Additional Submission without explaining its relevance to these proceedings. It states that the only possible purpose of that Additional Submission is to harass the Respondent and for the Complainant’s Representative to waste the Complainant’s funds.
The Respondent presses its case with respect to the elements of the Policy.
The Respondent is a business whose name corresponds to the disputed domain name. That business is a legitimate business which does not compete directly with the Complainant.
When it filed its Complaint, the Complainant was well aware of the fact that the Respondent is engaged in a legitimate business which does not compete directly with the Complainant. When it filed its Additional Submission, the Complainant was well aware of the fact that the disputed domain name corresponds to the name of the Respondent’s business.
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.
Before dealing with the three elements of the Policy, the Panel notes that the issue of laches has been the subject of debate between the parties and that it has also been the subject of some recent cases. However, the Panel is of the view that this proceeding can and should be disposed of on the basis of the substantive issues. Accordingly the Panel holds that it need not address further the issue of laches.
For the reasons set forth below, the Panel holds that it need not analyse this element of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
The Respondent contends, and provides evidence to prove, that it has been commonly known by the disputed domain name for eight years. That disputed domain name corresponds to the Respondent’s company name and a UAE registered trademark. The Complainant does not contest this. On the contrary, the Complainant admits that the Respondent is a manufacturer of data and telecommunication products which do not compete with the Complainant’s own products. Thus the Panel holds that the Respondent has adequately shown that it is commonly known as “AVAYO” in its business name. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the respondent has rights and a legitimate interest in the domain name since the domain name reflects the respondent’s company name); see also Futuris Automotive Interiors (Australia) Pty Ltd v. X9 Interactive LLC, D2011-0596 (WIPO June 20, 2011) (“However, in the present case, rather than establishing such a prima facie case, the Panel finds that the Complainant has conceded that the Respondent or its corporate predecessor operated a business initially trading as the “Futuris Internet Business Centre” and that the Respondent or its corporate predecessor went on to use the name “Futuris” between at least 1996 and 2004. … Accordingly the Complainant has failed to persuade the Panel that the Respondent does not have rights and legitimate interests in the disputed domain name within the meaning of paragraph 4(a)(ii) of the Policy.”)
Since the Respondent prevails regarding this element of the Policy, the Panel need not consider the other elements of the Policy.
As already noted, the element analysed above is dispositive, see Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (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); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”); see also MatchMaker Int'l Dev. Corp. v. Kaiser Dev. Corp., FA 146933 (Nat. Arb. Forum May 9, 2003) (“If Respondent registered the domain name for legitimate purposes, or if it reasonably believed at the time of registration that those purposes were legitimate, then the registration was not in bad faith.”).
Nevertheless, the Panel finds that the Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith); see also Avaya Inc. v. Moayyad Hamad, FA 1456063 (Nat. Arb. Forum Sept. 14, 2012) (“The Panel finds that Respondent’s conduct in this matter does not demonstrate bad faith registration or use under Policy ¶ 4(a)(iii)). See Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding no bad faith registration or use of the domain name <racegirl.com> where no evidence was presented that the Respondent intended to divert business from the Complainant or for any other purpose prohibited by UDRP Rules); see also William S. Russell v. Mr. John Paul Batrice d/b/a the Clock Doc, D2004-0906 (WIPO Dec. 13, 2004) ("The Complainant does not offer any specific evidence that controverts the Respondents assertion that the disputed domain name was registered solely for the purpose of operating a legitimate business. Nor has the Complainant offered any evidence that suggests that the Respondent has “engaged in a pattern” of registering domain names for the purpose of preventing the owner of the trademark from using the corresponding domain name. [...] Due to the lack of any compelling evidence proffered by the Complainant that would suggest bad faith registration and use, the Panel therefore concludes that the Complainant has not sustained his burden of proof with respect to paragraph 4(a)(iii) that the Respondent has registered and used the disputed domain name in bad faith.")
Paragraph 1 of the Rules defines Reverse Domain Name Hijacking:
Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.
The Respondent invokes this provision when it requests the Panel to find that the Complainant is using the Policy in a bad faith attempt to deprive a registered domain name holder of a domain name.
The general conditions for a finding of bad faith on the part of the Complainant are well stated in Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO, October 18, 2000):
Clearly, the launching of an unjustifiable Complaint with malice aforethought qualifies, as would the pursuit of a Complaint after the Complainant knew it to be insupportable.
These conditions are confirmed in Goldline International, Inc. v. Gold Line, D2000-1151 (WIPO, January 4, 2001) and Sydney Opera House Trust v. Trilynx Pty. Limited, D2000-1224 (WIPO, October 31, 2000) (where the condition is stated as “the respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge”), which in turn cites Plan Express Inc. v. Plan Express, D2000-0565 (WIPO, July 17, 2000).
It is clear from the record that the Complainant knew that the Respondent is engaged in a legitimate business. When it filed the Complaint, the Complainant could plausibly have been unaware of the fact that the disputed domain name corresponds to the Respondent’s business name. However, the Complainant could not have ignored this after the Response was filed.
Not only did the Complainant fail to withdraw its Complaint when it was obvious that it could not succeed, it actually pressed its case by submitting Additional Submissions that did not address the pertinent facts, thus harassing the Respondent. Further, the Complainant merely asserts that the Respondent registered and used the disputed domain name in bad faith, without providing any evidence to support its assertions.
As the Respondent correctly notes, the Complainant should have known that it could never prove that Respondent was not commonly known by the disputed domain name, because it was well aware of the Respondent’s business activities. The Respondent also correctly notes that the Complainant in fact knew that Respondent had used the domain name in furtherance of a bona fide offering of goods and services. And the Respondent correctly notes that the Complainant has previously filed domain name cases, and lost in two of such cases when it brought proceedings against legitimate businesses such as the Respondent. See Avaya Inc. v. Sudhir Sazena, FA 1229266 (Nat. Arb. Forum Dec. 9, 2008); and Avaya Inc. v. Moayyad Hamad, FA 1456063 (Nat. Arb. Forum Sept. 14, 2012).
Consequently, the Panel finds that the Complaint was submitted in an attempt to hijack Respondent’s domain name. See Futuris Automotive Interiors (Australia) Pty Ltd v. X9 Interactive LLC, D2011-0596 (WIPO June 20, 2011) (“On the contrary, the Complainant’s own researches as described in the Complaint clearly demonstrate that the Respondent (or its corporate predecessor) began to use the disputed domain name in the context of a business using the term “Futuris” within a short period after registration of the disputed domain name and furthermore that this use continued over a period of many years. […] Accordingly, it is clear to the Panel that the Complainant knew or ought to have known that the Respondent’s registration and use of the disputed domain name could not, under any fair interpretation of the reasonably available facts, have constituted registration and use in bad faith. The Panel therefore finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”); see also Adjudicate Today Pty Limited v. The Institute of Arbitrators and Mediators, DAU2012-0033 (WIPO March 13, 2013) (“Futureworld Consultancy (Pty) Limited v. Online Advice, WIPO Case No. D2003-0297 states that a finding of Reverse Domain Name Hijacking may be made if the Complainant “knew or should have known at the time it filed the Complaint that it could not prove that the domain name was registered or used in bad faith”. Given that the Complainant would have been aware that the Respondent had a more than negligible adjudication business in Australia at the time the Complaint was filed, the Panel is of the opinion that the Complainant knew or should have known that it could not prove that the disputed domain name was registered in bad faith. Therefore, the Panel finds that this is an instance of Reverse Domain Name Hijacking.”); see also Genomatix Software GmbH v. Intrexon Corporation, D2010-0778 (WIPO July 8, 2010) ("The Panel finds that the Complaint in this case was made with a reckless disregard for the possibility that the Domain Name was registered in good faith. The Complaint does not contain any evidence to support the allegation that the Domain Name was registered in bad faith. Nor does the Complainant's submission following the Panel's Procedural Order. In all the circumstances, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."); see also Pick Enterprises, Inc. v. Domains by Proxy, LLC, DomainsByProxy.com / Woman to Woman Healthcare / Just Us Women Health Center f/k/a Woman to Woman Health Center, D2012-1555 (WIPO Sept. 22, 2012) ("Regardless of actual intent, Respondent has been put to time and expense to address a Complaint that the Panel finds objectively groundless, one as to which this Panel believes “the complainant in fact knew or clearly should have known at the time that it filed the complaint that it could not prove one of the essential elements required by the UDRP.” These circumstances justify a finding of RDNH in this case, which the Panel accordingly makes.")
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <avayo.net> domain name REMAIN WITH Respondent.
The Panel finds that the Complainant has attempted to engage in Reverse Domain Name Hijacking.
Paul M. DeCicco The Honourable Neil Anthony Brown QC
Panelist Panelist
Richard Hill
Presiding Panelist
Dated: April 19, 2013
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