Avaya Inc. v. Robert Bird
Claim Number: FA1502001603045
Complainant is Avaya Inc. (“Complainant”), represented by Joseph Englander of Shutts & Bowen LLP, Florida, USA. Respondent is Robert Bird (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <avaya.help>, <avayaphone.systems>, <avayaphonesystemrepair.com>, <avayaphonesysteminstallers.com>, and <avayatelephonesystemsbuysellrepairinstall.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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 3, 2015; the Forum received payment on February 3, 2015.
On February 4, 2015, Godaddy.Com, LLC confirmed by e-mail to the Forum that the <avaya.help>, <avayaphone.systems>, <avayaphonesystemrepair.com>, <avayaphonesysteminstallers.com>, and <avayatelephonesystemsbuysellrepairinstall.com> domain names are registered with Godaddy.Com, LLC and that Respondent is the current registrant of the names. 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 February 5, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 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.help, postmaster@avayaphone.systems, postmaster@avayaphonesystemrepair.com, postmaster@avayaphonesysteminstallers.com, as well as postmaster@avayatelephonesystemsbuysellrepairinstall.com. Also on February 5, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 6, 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. 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
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 Mar. 18, 2003). The AVAYA mark is used in connection with telecommunications, specifically providing hardware and software business management and consultation services. The <avaya.help>, <avayaphone.systems>, <avayaphonesystemrepair.com>, <avayaphonesysteminstallers.com>, and <avayatelephonesystemsbuysellrepairinstall.com> domain names are all confusingly similar to the AVAYA mark. The domain names incorporate the mark in full, and include terms that suggest a connection with the telecommunication products and services offered under the AVAYA mark.
Policy ¶ 4(a)(ii). Respondent has no rights or legitimate interests in the disputed domain name. Respondent is listed in the WHOIS information as “Robert Bird.” Respondent is not commonly known by the disputed domain names, and has no legal affiliation with Complainant. The disputed domain names resolve to websites offering phone system installation, relocation, and repair services. The promoted services compete with Complainant’s telecommunications business. Such competitive use does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
Policy ¶ 4(a)(iii). Respondent registered and is using the disputed domain names in bad faith. Respondent uses the disputed domain names to promote competing telecommunication services. Such use disrupts Complainant’s business and constitutes bad faith under Policy ¶ 4(b)(iii). Further, Respondent is attempting to intentionally capitalize on the goodwill of Complainant’s mark by using the confusingly similar domain name to market competing services. This use is indicative of Policy ¶ 4(b)(iv) bad faith. Lastly, Respondent registered the disputed domain name because of its knowledge of the AVAYA mark as demonstrated by the linkage between the mark, the descriptive terms in the domain names, and corresponding use of domain names in connection with services related to Complainant’s telecommunication offerings.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the telecommunications industry, specifically providing hardware and software business management and consultation services.
2. 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 Mar. 18, 2003).
3. Respondent registered the disputed domain name <avaya.help> on December 29, 2014, <avayaphone.systems> on December 28, 2014, <avayaphonesystemrepair.com> on November 30, 2014, <avayaphonesysteminstallers.com> on November 30, 2014, and <avayatelephonesystemsbuysellrepairinstall.com> on December 4, 2015,
They resolve to websites offering phone system installation, relocation, and repair services. The promoted services compete with Complainant’s telecommunications business.
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.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant uses the AVAYA mark in connection with telecommunications, specifically providing hardware and software business management and consultation services. Complainant submits that it owns the AVAYA mark through trademark registrations with the USPTO (e.g., Reg. No. 2,696,985, registered Mar. 18, 2003). The Panel agrees that Complainant’s registration with the USPTO sufficiently demonstrates Complainant’s rights in the AVAYA mark for purposes of Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s AVAYA mark. Complainant claims the <avaya.help>, <avayaphone.systems>, <avayaphonesystemrepair.com>, <avayaphonesysteminstallers.com>, and <avayatelephonesystemsbuysellrepairinstall.com> domain names are all confusingly similar to the AVAYA mark. Complainant notes the domain names incorporate the mark in full, and add terms that suggest a connection with the telecommunication products and services offered under the AVAYA mark, such as “phone,” “system,” and “repair.” Prior panels have determined that the inclusion of a term or terms relating to a mark alongside the mark does not mitigate confusing similarity, but instead increases the likelihood of confusion. See e.g., Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”). Additionally, while the affixation of a gTLD in a domain name has long been considered irrelevant to the confusing similarity analysis, with the immergence of new gTLDs, some of which contain descriptive attributes, panels have begun finding that the added gTLD may serve to increase confusing similarity. See, e.g., DD IP Holder LLC v Manpreet Badhwar, FA 1562029 (Nat. Arb. Forum July 14, 2014) (“because there is a reference to food and restaurants inherent in the new gTLD ‘.menu’, the combination of the ‘dunkin’ element with the ‘.menu’ gTLD extension adds further to the confusing character of the domain in issue in the present case.”). 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 and in the cases of <avayaphonesystemrepair.com>, <avayaphonesysteminstallers.com>, and <avayatelephonesystemsbuysellrepairinstall.com>, the added gTLDs are, at best, irrelevant to the analysis.
Complainant has thus made out the first of the three elements that it must establish.
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 names 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s AVAYA
trademark and to use it in its domain names, adding only generic words that increase the confusing similarity of the domain names to the trademark;
(b) Respondent registered the disputed domain names on the various dates referred to above and has caused them to resolve to websites offering phone system installation, relocation, and repair services. The promoted services compete with Complainant’s telecommunications business;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names. In pursuit of its prima facie case, Complainant argues that Respondent is not commonly known by the disputed domain names, and has no legal affiliation with Complainant. Complainant points out that Respondent is listed in the WHOIS information as “Robert Bird.” As Respondent has failed to supplement this record with evidence to the contrary, the Panel agrees that the available evidence provides no basis to support a finding in favor of Respondent with respect to Policy ¶ 4(c)(ii). 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);
(e) In further demonstrating Respondent’s lack of rights in the mark, Complainant claims the disputed domain names resolve to websites offering phone system installation, relocation, and repair services. See Compl., at Attached Exs. 8, 9, 11. Complainant argues these promoted services involving “TelecomSubs” and “Telecom Quick/Quick Telecom,” compete with Complainant’s telecommunications business, and that such competitive use does not constitute a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. The Panel finds Respondent’s use of the disputed domain names to redirect users to competing providers in the telecommunications field amounts to neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See, e.g., Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
All of these matters go to make out the prima facie case against Respondent. Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it. The only submission from Respondent has been by way of several emails to the National Arbitration Forum relating to Respondent’s intention to defend the proceeding but without making any submission or adducing any evidence relating to the merits of the case.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have 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 names were registered and used in bad faith. That is so for the following reasons.
First, in demonstrating Respondent’s bad faith, Complainant submits that Respondent uses the disputed domain names to promote competing telecommunication services, and argues that such use disrupts Complainant’s business and constitutes bad faith under Policy ¶ 4(b)(iii). The Panel recalls that the disputed domain names resolve to feature content relating to telecommunication service providers, namely “TelecomSubs” and “Telecom Quick/Quick Telecom,” which purportedly compete with Complainant’s own services. See Compl., at Attached Exs. 8, 9, 11. The Panel finds Respondent’s competitive use of the disputed domain names falls within the conduct proscribed by Policy ¶ 4(b)(iii), and therefore finds evidence of Respondent’s bad faith registration and use of the disputed domain names. 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).”).
Secondly, Complainant argues that Respondent is attempting to capitalize on the goodwill of Complainant’s mark intentionally by using the confusingly similar domain names to market its own competing services. Complainant claims this use is indicative of Policy ¶ 4(b)(iv) bad faith. See Compl., at Attached Exs. 8, 9, 11. Panels have found evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent is using a confusingly similar domain name to market goods or services in competition with the respondent in pursuit of commercial advantage. See, e.g., Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant). As the circumstances at present are comparable, the Panel finds Respondent has engaged in bad faith use and registration of the domain names pursuant to Policy ¶ 4(b)(iv).
Thirdly, Complainant claims that Respondent registered the disputed domain names because of its knowledge of the AVAYA mark as demonstrated by the linkage between the mark, the descriptive terms in the domain names, and the corresponding use of domain names in connection with services related to Complainant’s telecommunication offerings. Complainant notes that Respondent even alludes to the AVAYA mark and services at its Quick Telecom website. See Compl., at Attached Ex. 14. Although previous panels have declined to find evidence of bad faith based solely on constructive knowledge, panels have found Policy ¶ 4(a)(iii) bad faith where the circumstances support an inference of actual knowledge. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel agrees that the nexus between Respondent’s domain names and purported offerings demonstrates Respondent’s familiarity with Complainant. Accordingly, the Panel infers Respondent registered the disputed domain names with knowledge of Complainant and its AVAYA mark, which is indicative of bad faith registration pursuant to Policy ¶ 4(a)(iii).
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 names using the AVAYA mark and in view of its conduct since the registration, Respondent registered and used the disputed domain names 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.
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.help>, <avayaphone.systems>, <avayaphonesystemrepair.com>, <avayaphonesysteminstallers.com>, and <avayatelephonesystemsbuysellrepairinstall.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: March 12, 2015
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