Avaya Inc. v. Mike Duffy / London Central Communications Ltd
Claim Number: FA1511001646519
Complainant is Avaya Inc. (“Complainant”), represented by Joseph Englander of Shutts & Bowen LLP, Florida, USA. Respondent is Mike Duffy / London Central Communications Ltd (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <avaya.london>, registered with Tucows Domains Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
David S. Safran as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 11, 2015; the Forum received payment on November 11, 2015.
On November 12, 2015, Tucows Domains Inc. confirmed by e-mail to the Forum that the <avaya.london> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 November 12, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 2, 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@avaya.london. Also on November 12, 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 November 20, 2015.
A Supplemental Submission was received and determined to be complete on November 30, 2015
On November 24, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David S. Safran 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant holds trademark registrations for the AVAYA mark with both the United States Patent and Trademark Office (“USPTO”) (e.g., Registry No. 2,696,985, registered March 18, 2003) and the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Registry No. 2,237,448, registered October 5, 2001). See Compl., at Attached Annexes 2A, 2B. Complainant has therefore demonstrated rights in the AVAYA mark for the purposes of Policy ¶ 4(a)(i). Respondent’s <avaya.london> domain name infringes Complainant’s rights in the mark as it is identical/confusingly similar. The domain merely appends the “.london” generic top-level domain (“gTLD”) to a fully incorporated and unaltered AVAYA mark.
Respondent has no rights or legitimate interests in respect of <avaya.london>. Respondent is not commonly known by the disputed domain name. Further, Respondent has failed to make an active use of the disputed domain name, evincing neither any bona fide offering of goods or services, nor any legitimate noncommercial or fair use.
Respondent has registered the <avaya.london> domain name in bad faith. Respondent attempted to sell the domain to Complainant in excess of out-of-pocket costs, demonstrating bad faith per Policy ¶ 4(b)(i). See Compl., at Attached Annex. 8 (email correspondence). Respondent has been found to have registered <verizon.london> in bad faith in a previous WIPO decision, indicating a bad faith pattern of domain registrations per Policy ¶ 4(b)(ii). See, e.g., Verizon Trademark Services LLC v. Mike Duffy, London Central Communications, Ltd., D2014-1994 (WIPO 2014). Finally, Respondent registered the disputed domain name with actual knowledge of Complainant, the AVAYA mark, and Complainant’s rights in the mark per Policy ¶ 4(a)(iii).
B. Respondent
Respondent does not disputed Complainant’s rights under Policy ¶ 4(a)(i).
Respondent the domain names that incorporate famous marks registered by Respondent all related to products and services sold as part of its business in the telecommunications industry, imputing a bona fide offering of goods or services.
Respondent agrees that it offered to sell the disputed domain to Complainant for £1,000, and that subsequent to this offer, engaged in negotiations with an agent of Complainant for the transfer of the domain.
C. Additional Submissions
Respondent works in the field of the Complainant and thus would have had knowledge of Complainant’s famous mark. Respondent used the <avaya.london> domain name to point to its own business website at http://www.lccuk.com/ without authorization by Avaya.
The <avaya.london.com> is confusingly similar to Complainant’s mark. Respondent has no rights or legitimate interests in the domain name <avaya.london.com>. The domain name was registered and is being used in bad faith.
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.
Complainant holds trademark registrations for the AVAYA mark with both the USPTO (e.g., Registry No. 2,696,985, registered March 18, 2003) and the UKIPO (e.g., Registry No. 2,237,448, registered October 5, 2001). See Compl., at Attached Annexes 2A, 2B. Complainant argues that its registrations demonstrate rights in the AVAYA mark for the purposes of Policy ¶ 4(a)(i). Panels have seen registrations with the USPTO and UKIPO as satisfactory in fulfilling the rights requirement of Policy ¶ 4(a)(i). See Astute, Inc. v. Raviprasath C / Astute Solution Pvt Ltd, FA 1546283 (Nat. Arb. Forum April 9, 2014) (finding that registrations with two major trademark agencies is evidence enough of Policy ¶ 4(a)(i) rights in the ASTUTE SOLUTIONS mark.); see also Morgan Stanley v. Morgan Stanley, FA 1591083 (Nat. Arb. Forum December 23, 2014) (finding Complainant’s USPTO and UKIPO registrations satisfy the requirements of Policy ¶ 4(a)(i).). Therefore, the Panel finds that Complainant has rights in the AVAYA mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <avaya.london> domain name infringes Complainant’s rights in the mark as it is identical/confusingly similar. The Panel agrees that the domain merely appends merely the “.london” geographic descriptor to a domain that fully incorporates an unaltered AVAYA mark. Where a new gTLD acts as a descriptive element, panels have seen such gTLDs to add to the confusing similarity of a domain. See Avaya Inc. v. Robert Bird, FA 1603045 (Nat. Arb. Forum Mar. 12, 2015) (“The Panel agrees that the disputed domain names are confusingly similar to the AVAYA mark pursuant to Policy ¶ 4(a)(i) as the added terms are descriptive of and related to Complainant’s offerings, and in the cases of <avaya.help>, and <avayaphone.systems>, the added gTLD adds to the confusion . . .”). Here, the Panel agrees that, since Complainant holds trademark registrations for the AVAYA mark and purports to operate in the United Kingdom, that the “.london” gTLD actually adds to confusing similarity in an analysis of Policy ¶ 4(a)(i). Therefore, the Panel holds that the <avaya.london> domain name is confusingly similar to the AVAYA mark under Policy ¶ 4(a)(i).
The Panel notes 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.”).
Complainant urges that Respondent has no rights or legitimate interests in respect of <avaya.london>. Complainant asserts Respondent is not commonly known by the disputed domain name. Respondent has not argued this point or provided evidence that it has been commonly known by the disputed domain name, therefore the Panel finds in favor of Complainant. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Further, Complainant argues that Respondent has failed to make any legitimate use of the disputed domain name, having used the domain to divert internet users to its own website. Neither party has provided screenshots of the disputed domain name’s resolving page, so that use cannot be substantiated outside of the party’s contentions in this matter. Since Respondent has not provided any evidence demonstrating a legitimate use of the website which currently resolves to a parking site, the panel finds that Respondent has failed to make any legitimate use of the disputed domain name. Therefore, the Panel finds that there has been no substantive use of <avaya.london>, and finds for Complainant under Policy ¶ 4(a)(ii).
Complainant argues that Respondent has registered the <avaya.london> domain name in bad faith. First, Complainant asserts that Respondent attempted to sell the domain to Complainant in excess of out-of-pocket costs, demonstrating bad faith per Policy ¶ 4(b)(i). See Compl., at Attached Annex. 8 (email correspondence). In Am. Online, Inc. v. Prijic, FA 112639 (Nat. Arb. Forum June 27, 2002), the panel stated, “[I]n determining whether Respondent has sought consideration in excess of its out-of-pocket costs, the Policy makes clear that only costs related to the domain name are to be considered, and not those related to the creation or maintenance of the connected website.” Here, Appendix 8 to the Complaint provides substantiation of Respondent’s offer for sale of £1,000. The Panel agrees that such an offer is an indication of a bad faith sale in excess of out-of-pocket costs and finds that bad faith is present under Policy ¶ 4(b)(i).
Second, Respondent has been found to have registered <verizon.london> in bad faith in a previous WIPO decision, and Complainant posits this is an indication of bad faith pattern of domain registrations per Policy ¶ 4(b)(ii). See Verizon Trademark Services LLC v. Mike Duffy, London Central Communications, Ltd., D2014-1994 (WIPO 2014). Panels have agreed that past adverse findings may indicate a respondent’s bad faith in a present dispute. See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”). This Panel finds in accordance with Goldmark, and sees Respondent’s past behavior as bearing on the circumstances in the case at hand, thereby finding bad faith under Policy ¶ 4(b)(ii).
Finally, Complainant also contends that in light of the fame and notoriety of Complainant's AVAYA mark, it is inconceivable that Respondent could have registered the <avaya.london> domain name without actual knowledge of Complainant's rights in the mark. However, given Respondent’s admission that it handles goods of the Complainant (Section 4, first paragraph states that Respondent has “a Customer base including Avaya systems”), the Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <avaya.london> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
David S. Safran, Panelist
Dated: December 7, 2015
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