Avaya Inc. v. Avaya SoftTech India Pvt. Ltd.
Claim Number: FA1408001576274
Complainant is Avaya Inc. (“Complainant”), represented by Joseph Englander of Shutts & Bowen LLP, Florida, USA. Respondent is Avaya SoftTech India Pvt. Ltd. (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <avayagroups.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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 21, 2014; the National Arbitration Forum received payment on August 21, 2014.
On August 22, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <avayagroups.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 August 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 11, 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@avayagroups.com. Also on August 22, 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 September 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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. 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
Policy ¶ 4(a)(i)
Complainant owns the AVAYA mark through trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,696,985, registered March 18, 2003) and the Industrial Property Office in India (e.g., Reg. No. 942,504). Complainant uses the mark in connection with its ongoing business activities in the field of telecommunication technologies and services. Complainant operates online through the domain names <avaya.com>, <avaya.info>, <avaya.net>, <avaya.org>, and <avaya.us>. The <avayagroups.com> domain name is confusingly similar to Complainant’s AVAYA mark because Respondent has simply attached the generic term “groups” to the mark.
Policy ¶ 4(a)(ii)
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <avayagroups.com> domain name. Respondent is neither licensed nor authorized to use the AVAYA mark. Respondent does not provide any bona fide offering of goods or services, or make a legitimate noncommercial or fair use of the disputed name, because the domain name resolves to a website that might download viruses to the user’s computer. The disputed domain name eventually resolves to a website that offers technology products and services in direct competition with Complainant’s business. Respondent attempts to attract Internet users to its own web page for commercial gain.
Policy ¶ 4(a)(iii)
The <avayagroups.com> domain disrupts Complainant’s business, because Internet users find Respondent’s website offering competing technology products. Respondent attempts to attract Internet users to its own web page for its own commercial gain. Respondent had actual or constructive knowledge of Complainant’s mark, due to the exclusive and extensive use of the mark by the Complainant throughout the world.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Avaya Inc., has rights in the the AVAYA mark through trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,696,985, registered March 18, 2003) and the Industrial Property Office in India (e.g., Reg. No. 942,504). Complainant uses the mark in connection with its ongoing business activities in the field of telecommunication technologies and services.
Respondent, Avaya SoftTech India Pvt. Ltd., registered the <avayagroups.com> domain name on October 29, 2013. Respondent is not providing a bona fide offering of goods and services, or a legitimate noncommercial or fair use of, the domain name because the domain name resolves to a website that is stopped by Complainant’s anti-virus software. Respondent’s domain name eventually resolves to a website that offers technology products and services geared for companies competing with Complainant’s business. Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with AYAYA’s marks.
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.”).
Complainant has rights in the AVAYA mark under Policy ¶ 4(a)(i) through trademark registrations with the USPTO and the Industrial Property Office in India. See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i).
Respondent’s <avayagroups.com> domain name is confusingly similar to Complainant’s AVAYA mark under Policy ¶ 4(a)(i) because Respondent has simply added the generic term “groups” to the mark. Respondent has also added the generic top-level domain (“gTLD”) “.com.”
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).
Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the <avayagroups.com> domain name under Policy ¶ 4(c)(ii). Nothing in the WHOIS shows that Respondent is commonly known by the disputed domain name. Further, Complainant has not licensed or authorized Respondent to use the AVAYA mark. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent does not provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the <avayagroups.com> domain name under Policy ¶ 4(c)(iii). The disputed domain name resolves to a website that is stopped by Complainant’s anti-virus software. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Nat. Arb. Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”).
Respondent’s web page does not provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii,) respectively. If Internet users continue on to the disputed domain name regardless of virus protection warnings, they are led to a website with links offering various types of technology products and services in direct competition with Complainant’s business. See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”).
Respondent attempts to attract users to its own web page for commercial gain. Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Respondent is using the disputed domain name to disrupt Complainant’s business, which is evidence of bad faith under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Respondent uses the disputed domain name to attract confused Internet users to its web page for Respondent’s own commercial gain which is evidence of bad faith under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
Respondent had actual knowledge of Complainant’s rights in the AVAYA mark which is evidence of 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").
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 <avayagroups.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 1, 2014
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