Avaya Inc. v. Jomar Technologies / Jomar Technologies, Inc.
Claim Number: FA1404001554827
Complainant is Avaya Inc. (“Complainant”), represented by Joseph Englander of Shutts & Bowen LLP, Florida, USA. Respondent is Jomar Technologies / Jomar Technologies, Inc. (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <replaceavaya.com>, registered with WILD WEST DOMAINS, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 18, 2014; the National Arbitration Forum received payment on April 18, 2014.
On April18, 2014, WILD WEST DOMAINS, LLC confirmed by e-mail to the National Arbitration Forum that the <replaceavaya.com> domain name is registered with WILD WEST DOMAINS, LLC and that Respondent is the current registrant of the names. WILD WEST DOMAINS, LLC has verified that Respondent is bound by the WILD WEST DOMAINS, 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 April 21, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 2014 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@replaceavaya.com. Also on April 21, 2014, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 14, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is a telecommunication and technology company providing communications hardware and software as well as business management and consultation services in the United States and around the world.
Complainant has rights in the AVAYA mark, used in connection with telecommunications and consultation services. Complainant owns registrations for the AVAYA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,696,985 registered March 18, 2003).
Respondent’s <replaceavaya.com> domain name is confusingly similar to Complainant’s AVAYA mark. The disputed domain name contains Complainant’s AVAYA mark in its entirety, while adding the generic or descriptive term “replacement” and the generic top-level domain (“gTLD”) “.com.”
Respondent does not have any rights or legitimate interests in the <replaceavaya.com> domain name. Respondent is not commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its AVAYA mark in any way. Respondent is using the <replaceavaya.com> domain name to redirect users to a website located at <jomarttechnologies.com/voip/> which promotes products and services that directly compete with Complainant’s telecommunication services.
Respondent registered and is using the <replaceavaya.com> domain name in bad faith. Respondent is disrupting Complainant’s business by diverting Internet users to Respondent’s website, which offers goods that compete with Complainant’s business.
Respondent had knowledge of Complainant’s AVAYA mark prior to registering the <replaceavaya.com> domain name because Complainant’s mark has been used exclusively and extensively around the world since at least 2000.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registration for the AVAYA mark.
Respondent registered the at-issue domain name after Complainant acquired rights in the AVAYA mark.
Respondent is not authorized to use Complainant’s mark in any capacity.
The <replaceavaya.com> domain name is being used to redirect Internet users to a website located at <jomarttechnologies.com/voip/> which promotes products and services that directly compete with Complainant’s telecommunication services.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The at-issue domain name is identical to a mark in which the Complainant has trademark rights.
Complainant’s USPTO registration of AVAYA demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (holding that the complainant’s trademark registrations with the USPTO had established rights in the BLOOMBERG mark).
The at-issue domain name contains Complainant’s entire AVAYA trademark, prefixed with the generic term “replace.” To complete the domain name the top-level, “.com,” is appended thereto. Respondent’s addition of a generic word to a the dominant feature of a trademark does not differentiate the domain name from Complainant’s mark under Policy ¶ 4(a)(i). Likewise, affixing the necessary top-level domain name does nothing to avoid confusing similarity between the Complainant’s trademark and the at-issue domain name. Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s AVAYA mark under the Policy. See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); 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).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
WHOIS information for the <replaceavaya.com>domain name lists “Jomar Technologies” as the domain name registrant and “Jomar Technologies, Inc.” as the registrant organization. There is nothing in the record that otherwise suggests Respondent is commonly known by the <replaceavaya.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name 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).
Respondent is using the <replaceavaya.com> domain name to redirect Internet users to a website located at <jomarttechnologies.com/voip/>. There, such website promotes products and services that directly compete with Complainant’s telecommunication services. Using the confusingly similar at-issue domain name to market goods or services in competition with Complainant’s offering is neither a bona fide offering of goods and services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Given the forgoing, Complainant satisfies its initial burden and absent evidence to the contrary conclusively demonstrates that Respondent lacks both rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) bad faith circumstances, as well as other circumstances, are present from which the Panel concludes that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above, Respondent is using the at-issue domain name to divert Internet users to a website which offers products in competition with those of Complainant. Such use disrupts Complainant’s business and thereby demonstrates Respondent’s bad faith registration and use of the at-issue domain name pursuant to Policy ¶4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Additionally, Respondent had actual knowledge of Complainant’s rights in the AVAYA trademark when it registered the at-issue domain name. Respondent’s knowledge of Complainant’s mark is shown in light of the notoriety of the AVAYA mark and Respondent’s use of such mark to promote products that directly compete with Complainant’s voice over IP telecommunication products. Respondent’s prior knowledge of Complainant’s trademark further indicates bad faith registration and use of the domain name under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <replaceavaya.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 15, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page