DECISION

 

Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC

Claim Number: FA1503001611255

 

PARTIES

Complainant is Avaya Inc. (“Complainant”), represented by Joseph Englander of Shutts & Bowen LLP, Florida, USA.  Respondent is Evelyn Dayda / Avaya Unlimited Sources LLC (“Respondent”), represented by Mark Azizi, California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <avayausa.com>, registered with GoDaddy.com, LLC.

 

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.

 

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on March 25, 2015; the Forum received payment on March 25, 2015.

 

On March 26, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <avayausa.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 April 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 2015 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@avayausa.com.  Also on April 1, 2015, 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 April 20, 2015.

 

Complainant submitted a timely Additional Submission, which was received on April 24, 2015.

 

On April 30, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant made the following contentions:

 

Complainant has registered the AVAYA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,696,985, registered Mar. 18, 2003).  The mark is used on or in connection with the telecommunications business providing hardware and software and business management and consultation services.  The <avayausa.com> domain name is confusingly similar to the mark because the domain name contains the entire mark and adds the generic term “USA” and the generic top-level domain (“gTLD”) “.com.”

 

Respondent has no rights or legitimate interests.  Respondent is not commonly known as the domain name or in possession of licensing rights.  Further, the disputed domain name resolves to a website offering competing services.

 

Respondent has engaged in bad faith registration and use.  Respondent’s offering of competing services disrupts Complainant’s business.  Respondent is also attempting to benefit commercially from a likelihood of confusion.  Lastly, Respondent registered the disputed domain name with actual notice of Complainant’s rights in the mark.

 

 

 

B. Respondent made the following contentions:

   General.

1. Avaya Unlimited Sources, LLC incorporated with the State of California on April 1, 2014 (annex 1) to fulfill both government contracts and private industry with general office supplies.   To support this business plan, the company sought out a domain name that was available to market it services.   Avayausa.com was available and registered through Godaddy.com and a website built to market the company’s services.

2. The company’s name was selected by the company’s principal based on her Grand Daughter’s name as evidenced by a copy of the certificate of live birth (annex 2) and in no way created the company name or the companies’ domain name in bad faith as the Complainant suggests.  At the time of the company’s formulation the respondent had neither knowledge of Avaya, Inc., nor any of the products or services it markets.  In fact, there are no similarities in the products being sold and the company has transacted business with government entities during its first year in business without ever being asked if they are associated with Avaya, Inc. 

3. The Complainant contends that the Respondent used bad faith in registering the domain which by stating in their complaint that Policy, paras. 4(a)(i), (ii), (iii) have been satisfied.  It is our opinion that Avaya, Inc. has failed to satisfy these policies.

 

Identical and/or Confusingly Similar

1.    It is important to note, “Avaya” is a person’s name.  In fact, Avaya is the name

of our principal’s granddaughter, which is the basis for the use of the name of our company.  Additionally, research online suggests that “Avaya” is also a Hindu word for “To arrive or inform” or “Like a bird”, and Ukrainian for “A cherished place”.  Therefore, any claim that “Avaya” is unique or distinct would lack merit.  We have been using the name, Avaya Unlimited Sources LLC, since 2014, and been doing so in good-faith.  According to 15 U.S.C. §1115(b)(4). Again, our principal bestowed the name of her company after her granddaughter and not your client’s company; therefore, there is no infringement as alleged.

 

2. The Avayausa.com domain has been used in conjunction with the company’s business to provide information on the company and is in the process of developing a shopping cart facility to purchase selected products.  This activity was started without knowledge of Avaya, Inc. or with intent to use the Avaya name to attract customers from Avaya, Inc. or to hold the domain name with hopes of selling it.

 

3.  As for the claim that we have violated the Anticybersquatting Consumer Protection Act (“ACPA”), there is no factual basis to conclude such.  The ACPA was designed to thwart those who register domain names containing trademarks with no intention of creating a legitimate web site; but instead plan to profit from selling the domain name to the trademark owner or a third party.  We are a legitimate business and lawfully obtained the domain name “avayausa.com” in connection with and in furtherance of our business.  There is absolutely no evidence to suggest otherwise.  Again, we are not acting in bad faith when we registered the subject domain name. 

 

Rights or Legitimate interests

The Respondent did not register the domain name with the intent to prevent the owner of a Trademark to use the service mark from a domain name.  The Respondent registered the domain name to market its own business and build an online presents to allow its customers to obtain information about the company’s products and services.  The Respondent has no pattern of the stated practice referenced above.

 

 

 

Registration and Use in Bad Faith

 

1.Avaya Unlimited Sources, LLC is a registered California corporation with its primary purpose of selling office supplies and products to government and private industry and has no intent to disrupt the business of the Complainant who is in the business of selling telecommunication services and products.

 2.Avaya Unlimited Sources, LLC never intended to commercially gain or confuse users of its website through use of the Complainant name or the products it sells.  We see no value in the Avaya name as it applies to the products of Avaya Unlimited Sources, LLC. As mentioned, the company was named after the principals Grand Daughter.  The products and services provided are substantially different and the company started a ligament business in April 2014 before a complaint was filed or notified of such complaint being brought forward.

 

C. Additional Submissions

    Complainant made the following additional contentions.

 

1.Complainant reiterated that it has rights in the AVAYA mark based on its numerous trademark registrations in the United States and around the world.

 

2. Despite Respondent’s contentions, the AVAYA mark is a fanciful mark entitled to broad protection.

 

3.Respondent has not denied that Complainant had never authorized Respondent to use its trademark in any way.

 

4. Despite Respondent’s submissions, AVAYA is not a common first name.

5. The consuming public may perceive that the goods and services are related enough to those of Complainant to cause confusion about their source.

 

6. It is inconceivable that Respondent registered the disputed domain name without knowledge of Complainant’s rights in the AVAYA mark.

 

FINDINGS

1.    Complainant is a United States company engaged in its telecommunications business providing hardware and software and business management and consultation services.

2.    Complainant has registered the AVAYA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,696,985, registered Mar. 18, 2003).

3.    Respondent registered the disputed domain name on September 15, 2014.                  The domain name resolves to a website offering competing services in that they offer goods and services that are sufficiently similar to those of Complainant to cause confusion as to their source.

 

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

 

The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant has registered the AVAYA mark with the USPTO (e.g., Reg. No. 2,696,985, registered Mar. 18, 2003).   Complainant argues that the mark is used in connection with the telecommunications business providing hardware and software and business management and consultation services.  To this, Respondent has given what it maintains are various reasons why the domain name was chosen, has claimed that the word “Avaya” has various generic meanings in several foreign languages and that Complainant’s trademark is not “unique or distinct”. It must be remembered, however, that the question at this stage of the proceeding is solely whether Complainant has a valid trademark. Naturally, the Panel cannot go behind or second guess the registration of a trademark, but must accept it upon proper proof, which Complainant has provided. The other arguments raised must be left for consideration to the later stages of the decision when the Panel will consider whether those arguments give Respondent a right or legitimate interest in the domain name and whether it was registered and used in bad faith. Accordingly the Panel finds that registration of the trademark with the USPTO is sufficient to establish Complainant’s rights in a trademark.  See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).

 

The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s AVAYA mark. Clearly it is not identical, as the letters “usa” have been added to the trademark. The question then is whether it is similar and, if so, confusingly similar to the trademark. The answer to that question depends on whether an objective bystander, looking at both the domain name and the trademark, would conclude that the former was confusingly similar to the latter or not. Complainant argues that the <avayausa.com> domain name is confusingly similar to the mark because the domain name contains the entire mark and adds the geographic term “usa” and the gTLD “.com.”  As a general rule, the Panel notes that the addition of a gTLD, such as “.com,” cannot distinguish a domain name from the mark at issue.  See 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 other question is how the addition of the letters “usa” , which clearly stand for the United States of America,would be seen. Prior UDRP panels have found consistently that the addition of a geographic term of this sort, when added to a domain name that is otherwise identical to the mark at issue, creates a confusing similarity.The reason why this is so is that it gives the impression to the internet user that it relates to the activities of Complainant in the geographic region specified and that the domain name will lead to a website dealing with the same subject.  See Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Nat. Arb. Forum Apr. 6, 2001) (“The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.”).  Thus, as the Panel finds that the “usa” portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.     

 

Complainant has thus made out the first of the three elements that it must establish.

 

Rights or Legitimate Interests

 

It is now well established that 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.”).

 

Applying that test, the Panel finds that Complainant has established such a prima facie case that arises from the evidence that Complainant has a registered trademark and Respondent has registered and used a domain name that incorporates the trademark and is confusingly similar to it and that Complainant has not given Respondent permission to use the trademark in a domain name or in any other way. As Complainant has made out a prima facie case and as the onus is then on Respondent to rebut it, it remains to be seen if Respondent can rebut that case and show that it has a right or legitimate interest in the domain name.

 

Respondent’s first argument is that it chose the domain name “to fulfil both government contracts and private industry with general office supplies… (and that) to support this business plan, the company sought out a domain name that was available to market it services.   Avayausa.com was available and registered through Godaddy.com and a website built to market the company’s services.” There are, however, several reasons why none of those arguments can create a right to the domain name or a legitimate interest in it. Many domain names are available but without any right to register or use them, particularly where, as in the present case, the domain name uses another party’s trademark without permission and the domain name gives rise to confusion in the market. For that reason the UDRP was devised to give some protection to trademark owners against others registering domain names that infringed on their rights, even if those domain names were freely available from Go Daddy or any other accredited registrar; one of the feature of the UDRP is that a domain name holder, like Respondent, must show is that it has some right to the name or some recognized interest in it; simply saying that it was available does neither.

 

But Respondent’s real argument and an argument that is also used in the context of bad faith is that she registered the domain name as it is her Grand Daughter’s name and that it follows that there can be “no infringement”. The Panel is unable to accept that argument. Respondent clearly did use her Grand Daughter’s name. But to say that such a coincidence entitles her to use it as a domain name and that it gives rise to “no infringement” of Complainant’s trademark is simply not correct. In any event that view cannot be supported on the evidence. The Panel is unable to accept the view that the sole or principal reason why Respondent chose the domain name <avayausa.com> was that it incorporated her Grand Daughter’s name. Indeed, the probabilities are that Respondent chose the name because it includes Complainant’s name and trademark. Complainant is a well known company in the United States and even if Respondent had not heard of it, a simple Google search would have revealed that there was a risk of her infringing Complainant’s trademark. Moreover, if Respondent’s intention was simply to have a domain name using her Grand Daughter’s name without being influenced by the trademark AVAYA, the Panel would expect to see some evidence that an unsuccessful attempt had been made to register <avaya.com> as there would be no need to add “usa” to the domain name when the business presumably would be operating in the United States. The Panel also notes that there is no disclaimer of any association with Complainant on the website and that the goods promoted on the site are, although not the same, are, as Complainant puts it, “sufficiently similar to those of Complainant to cause confusion as to their source.” The Panel notes in particular that Complainant is in telecommunications, providing hardware and software and Respondent’s website at www.avayausa.com, although dealing mainly in office supplies and printers, promotes “computers” and carries logos for IBM, Dell and other computer companies, giving rise to scope for the internet user to assume that it a subsidiary or associated entity of Avaya or for the internet user being confused as to whether it was or not.

 

The substance of what has happened in this case is that Respondent has registered a domain name which includes a name over which Complainant has many trademarks and to which Respondent has added the letters “usa”, giving as clear an indication as could be given to an internet user that the domain name deals with the prominent Avaya company and its activities in the USA, an indication that is confirmed when the visitor goes to the website and finds it is being used to promote goods that in some cases are similar to those of Complainant. That series of facts cannot give rise to a right or legitimate interest in the domain name.

 

Complainant has therefore  argued correctly when it says that Respondent lacks rights or legitimate interests because the website at www.avaya.usa offers competing services, which cannot give rise to a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name under Policy ¶¶ 4(c)(i) or (iii).  Specifically, Complainant argues that Respondent’s offering of computers, tablets, printers, and office supplies competes with its business.  Complainant has provided screenshots of the resolving webpage, which does display such offerings.  See Compl., at Attached Ex. 10.  Prior panels have found that use of a confusingly similar domain name to offer goods or services that compete with those offered under the mark at issue cannot grant a respondent rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii).  See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services). The Panel has already discussed this issue and has concluded that the goods promoted on Respondent’s website are sufficiently similar to those of Complainant to cause confusion as to their source. Thus, as the Panel finds that the disputed domain name is confusingly similar to the AVAYA mark, and that Respondent is using the domain name to offer at least some competing goods and services, it finds that Respondent lacks rights or legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii).    

 

There are some other grounds in the Policy on which a respondent can show a right or legitimate interest, but they do not apply here. Respondent has not suggested that she is known by the domain name and it is clear that it is registered in the name “Evelyn Dayda” and not < avayausa.com> or AVAYA.

 

There is no other ground on which Respondent has argued gives rise to a right or legitimate interest in the domain name or on which it could succeed. The Panel therefore concludes that Respondent does not have a right or legitimate interest in the disputed domain name.

 

Complainant has thus made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

 

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.

 

First, Complainant argues that Respondent has engaged in bad faith registration and use. Complainant argues that Respondent has engaged in bad faith under Policy ¶ 4(b)(iii) by offering competing and similar goods and services on its webpage, giving rise to an intention to disrupt the business of a competitor, namely Complainant.  The Panel again notes that Complainant has provided screenshots of the resolving webpage, which displays advertisements for computers, tablets, printers, and office supplies.  See Compl., at Attached Ex. 10.  Prior panels have found that use of a confusingly similar domain name to offer goods or services that compete with those offered under the mark can consist of bad faith.  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).”). Respondent in reply argues that it “has no intent to disrupt the business of the Complainant.” The Panel has already discussed this issue and made various finding about the intention of Respondent and has found that the goods and services promoted on Respondent’s website are sufficiently similar to those of Complainant to cause confusion as to their source. That is necessarily a potential disruption of Complainant’s business. The Panel therefore finds that the case comes within Policy ¶ 4(b)(iii), that the disruption was the primary reason for registering the domain name and that this shows bad faith registration and, subsequently, bad faith use .

 

Secondly, Complainant argues that Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to profit commercially from a likelihood of confusion.  Complainant argues that Internet users who view the resolving webpage will believe it is affiliated with or sponsored by Complainant, and that Respondent’s intent to profit commercially is evident from its offering of competing or similar goods and services. Respondent argues in reply that it “never intended to commercially gain or confuse users of its website through use of the Complainant name or the products it sells and that....  (t)he products and services provided are substantially different.” Again, the panel has discussed this issue. There is a not a wholesale duplication of products but the Panel’s view is that a judgement must be made from the vantage point of the internet user. It is for that reason that the panel has already concluded that the goods and services promoted on Respondent’s website are sufficiently similar to those of Complainant to cause confusion as to their source. It must also be understood that that conclusion has been caused initially by Respondent’s choice of the domain name itself. The very name attracts the conclusion from internet users that the Panel has found exists or will exist, namely that internet users will be confused by the domain name, the website and the goods and services offered on the site as to whether they are those of the trademark owner or not. Moreover and very importantly, the whole problem and issue could have been avoided if Respondent had taken more care in the choice of domain name and had checked on the possible infringement of trademarks before it registered the domain name in question.   The Panel agrees with the submission of Complainant on this issue. As the Panel believes that a likelihood of confusion exists, and that Respondent is trying to profit commercially, it finds bad faith under Policy ¶ 4(b)(iv).  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).

 

Thirdly, Complainant alleges that Respondent must have had constructive and/or actual notice of Complainant's rights in the AVAYA mark prior to registration of the domain names because of Complainant's widespread use of the mark and its trademark registrations with the USPTO. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii) and generally. See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration)."

   

Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the AVAYA mark and in view of its use of the domain name since its registration conduct since the registration, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.

 

Complainant has thus made out the third of the three elements that it must establish.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <avayausa.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  May 4, 2015

 

 

 

 

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