Avasant Global Holdings, Inc. v. Gary Norton
Claim Number: FA1607001683813
Complainant is Avasant Global Holdings, Inc. (“Complainant”), represented by Ravi Mahalingam, El Segundo, California, USA. Respondent is Gary Norton (“Respondent”), represented by Eve J. Brown of Bricolage Law, LLC, Brookline, Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name is <avisant.com>, registered with LiquidNet Ltd.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Fernando Triana, Esq. as Chair.
Nathalie Dreyfus, Esq. as Co-Panelist.
Steven M. Levy, Esq. as Co-Panelist.
Complainant submitted a Complaint to the Forum electronically on July 14, 2016; the Forum received payment on July 14, 2016.
On July 19, 2016, LiquidNet Ltd. confirmed by e-mail to the Forum that the disputed domain name <avisant.com> is registered with LiquidNet Ltd. and that Respondent is the current registrant of the name. LiquidNet Ltd. has verified that Respondent is bound by the LiquidNet Ltd. 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 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 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 email@example.com. Also on July 21, 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.
A timely Response was received and determined to be complete on September 6, 2016.
On September 22, 2016, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed Fernando Triana, Esq. as Chair of the Panel, Nathalie Dreyfus, Esq. and Steven M. Levy, Esq. as Panelists.
Having reviewed the communications record, 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 registered the mark AVASANT before the United States Patent and Trademark Office (Reg. No. 3,756,609, filed Sept. 4, 2008, registered Mar. 9, 2010). (Annex A to the Complaint).
b. Complainant uses the mark in connection with business consulting and IT-related services.
c. Respondent’s domain name <avisant.com> is confusingly similar to the mark because it replaces the second “A” in the mark with an “I,” creating visual and phonetic similarity.
d. Respondent has no rights or legitimate interests in the disputed domain name.
e. Respondent is not conducting itself in association with goods and services. Respondent previously used the domain to compete with Complainant in a “zone of expansion” in relation to Complainant’s services.
f. Respondent registered and used the disputed domain name in bad faith.
g. Respondent’s competing use indicates Policy ¶ 4(b)(iv) bad faith.
h. Respondent was well aware of Complainant’s mark AVASANT and its rights in the mark when registering and subsequently offering competing services under the disputed domain.
a. Complainant has rights in AVASANT. Complainant does not have rights in AVISANT, which is a common French dictionary word meaning “advising.” (Annex 1 to the Response).
b. The difference in one letter is sufficient to distinguish the domain name because changing that one letter, while seemingly insignificant, garners a substantially different connotation.
c. Respondent has rights and legitimate interests in the disputed domain name because it has used the disputed domain name as a business for the past six years.
d. Furthermore, searching the term AVISANT on the Internet returns results exclusively for the French word and Respondent. (Annex 2 to the Response).
e. Complainant has failed to provide evidence that Respondent is a cybersquatter.
f. Respondent has provided bona fide services—high-quality consulting, database administration, data center solutions, disaster recovery, general help desk health, IT/EHR project management, ITIL services, etc. to the public—under the disputed domain name.
g. Respondent has applied for trademark registration for AVISANT with the United States Patent and Trademark Office (“USPTO”). (Annex 4 to the Response).
h. Complainant met this trademark application with an opposition before the Trademark Trial and Appeal Board (“TTAB”) and demanded that Respondent withdraw the trademark application. Respondent withdrew the trademark application and undertook efforts to rename its company “IVISINT.” (Annex 5 to the Response).
i. Respondent registered and used the disputed domain in good faith.
j. At no point did Respondent intend on benefitting from any association, actual or perceived, with Complainant.
k. Respondent’s legitimate use at registration as an IT consulting business, and then the shift to travel advising in light of Complainant’s objections, demonstrates that Respondent used the domain in good faith.
l. Under Policy ¶ 4(b)(iv), which Complainant argues, Respondent has demonstrated actions that he has done everything in his power to avoid confusion with Complainant in the minds of Internet users.
A. Complainant has the trademark AVASANT registered before the United States Patent and Trademark Office (USPTO) to identify: “Globalization services, namely, providing business consultation services in the area of marketing and business management practices in foreign countries; sourcing services, namely, assisting businesses in locating providers of goods and services and receiving quotations from multiple competitive sources; business process consulting; business marketing services; business management; business consultation pertaining to the procurement of information technology supplies and equipment; business management consulting; mergers and acquisitions consulting services; market analysis and research services; business information services; advisory services relating to business risk management; providing information and consultation in the areas of business change management and reorganization; contract negotiation and advisory services, namely, providing mediation of contracts for the purchase and sale of products and providing consultation related thereto”, since March 9, 2010, with registration No. 3756608.
B. Before any notice of the dispute, Respondent used the disputed domain name in connection with a bona fide offering of goods or services.
C. Before any notice of the dispute, Respondent applied for the registration of the trademark AVISANT, before the USPTO, with serial number 86398176, specifying that “The English translation of the word "AVISANT" in the mark is "ADVISING"”.
D. Once Respondent knew of Complainant’s existence, with the opposition to the trademark application AVISANT, before the USPTO, with serial number 86398176; in good faith Respondent withdrew the trademark application, changed the sign by means of which Respondent identifies its services to IVISINT, and changed the services provided by means of the disputed domain name in order to eliminate any possible confusion.
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.
This discussion, based on the evidentiary support submitted by the parties, will be developed as follows:
Identical and/or Confusingly Similar
Discussion of this element has been intentionally omitted as explained below.
Paragraph 4(c) of the Policy includes an enunciative list of circumstances that prove Respondent’s rights or legitimate interests in a disputed domain name:
(i) before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent established its rights and legitimate interest in the disputed domain name, as follows:
(i) Respondent acquired the disputed domain name in 2010 and has continuously used it to provide IT products and services to small and medium sized businesses and organizations (Annex 3 to the Response). Thus, Respondent has used the disputed domain name before any notice of the dispute.
(ii) Respondent’s use of the disputed domain name in connection with a bona fide offering of services, as providing IT products and services to small and medium sized businesses and organizations, is in principle a legitimate business. Furthermore, Complainant has not provided any evidence to the contrary.
(iii) Respondent has been commonly known by the disputed domain name, since at least 2010 (Annex 2 to the Response).
(iv) Before any notice of the dispute, Respondent applied for the registration of the trademark AVISANT, before the USPTO, with serial number 86398176, specifying that “The English translation of the word "AVISANT" in the mark is "ADVISING"”.
Respondent later withdrew the trademark application. Nonetheless, even if no trademark right was acquired, Respondent would still have legitimate interest in the disputed domain name.
Thus, in view of the above arguments taken together, Respondent has established rights and legitimate interests in the disputed domain name, which Complainant failed to rebut. Therefore, the requirement set forth in paragraph 4(a)(ii) of the Policy has not been satisfied.
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(1) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(2) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(3) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(4) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.
Complainant asserts that: “Respondent has intentionally and knowingly attempted to attract Internet users to its website or other on-line locations for commercial gain, by creating a likelihood of confusion with the AVASANT mark. Respondent is well aware of Complainant’s brand in the market for IT and consulting-related services. Therefore, there is no legitimate purpose for Respondent to continue to use the “AVISANT” mark other than to dilute the “AVASANT” brand and divert potential customers of Complainant for Respondent’s undeserved and unearned benefit”.
The Panel finds that despite Complainant’s allegation regarding Respondent’s prior knowledge of Complainant’s business, no evidence was filed in that regard. Hence, the Panel cannot consider that Respondent knew of Complainant’s business prior to the opposition to the registration of the trademark AVISANT, as informed by Respondent (Annex 4 to the Response).
Moreover, the Panel finds Respondent’s good faith in the fact that Respondent proceeded with:
- The withdrawal of the trademark application for AVISANT (Annex 4 to the Response).
- Changing the sign by means of which Respondent identified its services, from AVISANT to IVISINT (Annex 5 to the Response).
- Modifying the content of the website to which the disputed domain name resolves to, from IT related goods and services, to a tourism site (Annex 6 to the Response).
However, in this case, Complainant did not file any evidence at all addressing Respondent’s bad faith registration of the domain.
Complainant did not provide evidence that (i) the domain name was acquired by Respondent to prevent Complainant from reflecting its trademark in the disputed domain name; or (ii) Respondent registered the disputed domain name for the purpose of depriving Complainant of use of the trademark online, and benefiting financially from the sale of competitor’s products; or (iii) Respondent acquired the disputed domain name to attract, for commercial gain, Internet users, by creating a likelihood of confusion with Complainant's trademark.
On the opposite, Respondent acquired the disputed domain name to create a legitimate business and has taken action to avoid confusion with Complainant after knowing of its existence.
Consequently, all three elements of the Policy paragraph 4(a) have not been established in the present case. Since Complainant has not satisfied paragraphs 4(a)(ii) and 4(a)(iii) of the Policy there is no need for the Panel to address paragraph 4(a)(i) of the Policy.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the disputed domain name <avisant.com> REMAIN WITH Respondent.
Fernando Triana, Esq.
Chair of the Panel
Nathalie Dreyfus, Esq.
Steven M. Levy, Esq.
Dated: September 29, 2016
 See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Forum Dec. 28, 2006) (deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).
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