Avaya Inc. v. Esmaeil Sedaghat / Noavaran Tahghigh Co.
Claim Number: FA1601001658322
Complainant is Avaya Inc. (“Complainant”), represented by Joseph Englander of Peretz Chesal & Herrmann, P.L., Florida, United States. Respondent is Esmaeil Sedaghat / Noavaran Tahghigh Co. (“Respondent”), Iran.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <avayairan.com>, registered with Tucows Domains Inc.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 27, 2016; the Forum received payment on January 27, 2016.
On January 27, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <avayairan.com> 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 January 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 17, 2016 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@avayairan.com. Also on January 28, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On February 22, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
i) Complainant uses its AVAYA mark in connection with its business as a leading global provider of next-generation business collaboration and communications solutions, providing unified communications, real-time video collaboration, a contact center, networking, and related services to companies of all sizes around the world. Complainant has registered its AVAYA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,696,985, registered March 18, 2003), which demonstrates Complainant’s rights in its mark. The <avayairan.com> domain is confusingly similar to Complainant’s mark as it incorporates Complainant’s mark in its entirety and merely adds the geographic term “Iran” and the generic top-level domain (“gTLD”) “.com.”
ii) Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Second, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent uses its disputed domain name to sell goods and services that are either counterfeit versions of goods and services sold by Complainant, or else they are genuine goods and services of Complainant being resold without authorization. Moreover, Respondent’s use of Complainant’s logo, trademark, and images on Respondent’s resolving website demonstrates that Respondent is attempting to pass itself off as Complainant.
iii) Respondent has registered and is using the disputed domain name in bad faith. First, Respondent’s use of the domain to sell Complainant’s goods and services disrupts and competes with Complainant’s business. Second, Respondent’s selling of Complainant’s goods and services shows Respondent’s intent to divert customers to Respondent’s website for commercial gain. Third, Respondent has attempted, through the domain, to pass itself off as Complainant. Finally, Respondent registered the domain with constructive and/or actual knowledge of Complainant’s mark.
B. Respondent
Respondent did not submit a response in this proceeding. The Panel notes that the disputed domain name was registered on March 1, 2015.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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.
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(f), 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 uses its AVAYA mark in connection with its business as a leading global provider of next-generation business collaboration and communications solutions, providing unified communications, real-time video collaboration, a contact center, networking, and related services to companies of all sizes around the world. Complainant has registered its AVAYA mark with the USPTO (e.g., Reg. No. 2,696,985, registered March 18, 2003). Complainant argues that its USPTO registration demonstrates its rights in its mark. The Panel finds that trademark registrations with the USPTO suffice to demonstrate a complainant’s rights in its mark for the purposes of Policy ¶ 4(a)(i), with respect to the geographic disparity of the parties. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Accordingly, the Panel finds that Complainant has demonstrated its rights in its mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that the <avayairan.com> domain is confusingly similar to Complainant’s mark as it incorporates Complainant’s mark in its entirety and merely adds the geographic term “Iran” and the gTLD “.com.” Previous panels have held that the addition of a geographic term to a complainant’s mark does not serve to adequately distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark). Previous panels have also found that the affixation of the gTLD “.com” is irrelevant to a Policy ¶ 4(a)(i) analysis. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). As such, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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 argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Further, Complainant argues that Respondent has no license or authorization to use Complainant’s mark. The Panel notes that the WHOIS information merely lists “Esmaeil Sedaghat / Noavaran Tahghigh Co.” as registrant and that Respondent has failed to provide any evidence for the Panel’s consideration. As such, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent uses its disputed domain name to sell goods and services that are either counterfeit versions of goods and services sold by Complainant, or else are genuine goods and services of Complainant being resold without authorization. Previous panels have decided that neither a respondent’s use of a domain to sell a complainant’s goods or services nor a respondent’s use of a domain to sell counterfeit goods constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); see also Keihin Corp. v. Youli Ltd., FA 1106190 (Nat. Arb. Forum Dec. 18, 2007) (finding no rights and legitimate interests when the respondent sold counterfeit versions of the complainant’s products in competition with the complainant’s business). Therefore, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant contends that Respondent’s use of Complainant’s logo, trademark, and images on Respondent’s resolving website demonstrates that Respondent is attempting to pass itself off as Complainant. Past panels have held that a respondent’s attempt to pass itself off as a complainant is evidence that the respondent lacks rights and legitimate interests in the disputed domain name. See MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) (finding the respondent lacked rights and legitimate interests in the disputed domain name when the respondent copied the complainant’s websites in their entirety at the disputed domain names). For this reason, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name.
Complainant argues that Respondent’s use of the domain to sell Complainant’s goods and services disrupts and competes with Complainant’s business. Previous panels have concluded that a respondent’s use of a domain to sell a complainant’s goods and services constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii)”). Therefore, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant claims that Respondent’s selling of Complainant’s goods and services shows Respondent’s intent to divert customers to Respondent’s website for commercial gain. Past panels have decided that a respondent violated Policy ¶ 4(b)(iv) when it used a confusingly similar domain to sell a complainant’s products. See AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and services without Complainant's authority . . . is bad faith use of a confusingly similar domain name.”). For this reason, the Panel concludes that Respondent registered and is using the domain in bad faith.
Complainant contends that Respondent has attempted, through the domain, to pass itself off as Complainant. Previous panels have held that a respondent’s attempt to misrepresent itself as a complainant is evidence of bad faith registration and use. See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”). As such, the Panel finds that Respondent has engaged in bad faith registration and use per Policy ¶ 4(a)(iii).
Complainant argues that due to the fame of the AVAYA mark and the fact that Respondent prominently displays Complainant’s logos throughout its website, it is inconceivable that Respondent registered the domain without constructive and/or actual knowledge of Complainant’s mark. The Panel notes that Complainant has not provided evidence to support its contention about its fame. While panels have determined that constructive knowledge is insufficient to support a finding of bad faith, the Panel infers, in the absence of Respondent's rebutting Complainant's argument on the fame of Complainant’s mark, due to the fame of Complainant’s mark and the manner of use of the disputed domain name by Respondent that Respondent had actual knowledge of the mark and Complainant’s rights. Therefore, as the Panel accepts Complainant’s partially-supported contention, it finds that Respondent registered the domain in bad faith, a violation of Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <avayairan.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: March 7, 2017
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