Avaya Inc. v. Afshan Anwar / Redial Consulting Inc
Claim Number: FA1407001569090
Complainant is Avaya Inc. (“Complainant”), represented by Joseph Englander of Shutts & Bowen LLP, Florida, USA. Respondent is Afshan Anwar / Redial Consulting Inc (“Respondent”), Ontario, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <newavaya.com>, registered with GODADDY.COM, 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 July 10, 2014; the National Arbitration Forum received payment on July 10, 2014.
On July 10, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <newavaya.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. 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 July 11, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 31, 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@newavaya.com. Also on July 11, 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.
A timely Response was received and determined to be complete on July 31, 2014.
On August 7, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is engaged in the telecommunication and technology business providing communications hardware and software and business management and consultation services using the AVAYA mark in the United States and around the world. Complainant owns various registrations for the AVAYA mark including with the Canadian Intellectual Property Office (“CIPO”) where Respondent is located.
Respondent’s <newavaya.com> domain name is confusingly similar to Complainant’s AVAYA mark.
Respondent’s <newavaya.com> domain name contains Complainant’s AVAYA mark in its entirety an adds the generic term “new” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <newavaya.com> domain name. Respondent’s disputed domain name was created on April 12, 2010, significantly after Complainant established the AVAYA marks. Additionally, there is nothing in Respondent’s WHOIS information that suggests that Respondent is commonly known by the disputed domain name. Further, Respondent has never received any license, authorization, or consent to use the AVAYA marks in any domain name. Respondent’s disputed domain name redirects Internet users to a website located at <querytel.com> where Respondent promotes products and services that directly compete with Complainant’s products and services.
Respondent registered and is using the <newavaya.com> domain name in bad faith. Respondent’s use of the disputed domain name disrupts Complainant’s business in bad faith. Internet users seeking Complainant’s goods and services are diverted to Respondent’s website resolving from the confusingly similar domain name. Respondent’s resolving website further offers competing goods of Complainant’s business.
Respondent was aware of Complainant’s AVAYA mark when Respondent registered the disputed domain name.
B. Respondent
Respondent responded as follows:
…Querytel took over all end-user business from Redial Consulting as of April and hence forwarded redialcomm.com to Querytel.com. As this time we own 47 domain names and are willing to sell for the right price. After reviewing your exhibits, it doesn’t show that we are promoting Avaya. If Avaya wants this domain, I would recommend that they can make an offer to buy this domain name. QueryTel Inc. provides Manage IT Services to business and proudly promote Cisco Systems.
Complainant owns trademark registrations with the USPTO, CIPO and other registrants worldwide for its AVAYA mark.
Respondent registered the at-issue domain name subsequent to Complainant acquiring rights in the AVAYA mark.
Respondent is not authorized to use Complainant’s trademark.
Respondent’s at-issue domain name directs Internet users to a website located at <querytel.com> where Respondent promotes products and services that directly compete with Complainant’s products and 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.
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s various trademark registrations for the AVAYA mark establish that Complainant has rights in a mark for the purposes of the Policy. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding complainant’s numerous registrations for its HONEYWELL mark throughout the world were sufficient to establish the complainant’s rights in the mark under Policy ¶ 4(a)(i)).
Respondent’s <newavaya.com> domain name contains Complainant’s AVAYA mark in its entirety, prefixes the mark with the generic term “new” and appends the top-level domain name “.com” to the resulting string. These changes do not distinguish the domain name from Complainant’s trademark. Therefore, the Panel concludes that Respondent’s <newavaya.com> domain name is confusingly similar to Complainant’s AVAYA mark under Policy ¶ 4(a)(i).
See Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding that the <westfieldshopping.com> domain name was confusingly similar because the WESTFIELD mark was the dominant element); see also, Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
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 the 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 at-issue domain name lists “Afshan Anwar / Redial Consulting Inc” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <newavaya.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to usTLD Policy ¶ 4(c)(iii). 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).
Furthermore, the website ultimate addressed by the at-issue domain name features the heading “Business Collaboration” and announces services providing, “the latest and most relevant communication technology [that] will help to improve your business.” Respondent’s website also displays communication systems and the products as well as information about “Avaya T7208,” “Avaya IP Office,” “Avaya 9500/9600 Series,” and “Avaya 9600 Series IP Deskphones.” Using a confusingly similar domain name to address a website offering goods or services in direct competition with a complainant’s products is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use of the domain name under Policy ¶4(c)(iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name).
The domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent stated in its Response that it is “willing to sell [the at-issue domain name] for the right price.” The statement suggests Respondent’s bad faith under Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).
Additionally and as mentioned above, Internet users seeking Complainant’s goods and services are diverted to Respondent’s at-issue website. As also discussed above, Respondent’s website offers goods competing with those of Complainant. Respondent’s use of the at-issue domain name disrupts Complainant’s business and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Finally, it is evident from the notoriety of Complainant’s trademark, Respondent’s use of Complainant’s trademark on the website addressed by the at-issue domain name and from the domain name’s undeniable similarity to Complainant’s trademark that Respondent was familiar with Complainant’s AVAYA trademark at the time it registered the <newavaya.com> domain name. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered the at-issue domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed 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 <newavaya.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 9, 2014
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