Avaya Inc. v. Michael Mills
Claim Number: FA1505001621855
Complainant is Avaya Inc. (“Complainant”), represented by Joseph Englander of Shutts & Bowen LLP, Florida, USA. Respondent is Michael Mills(“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <avayablue.com> and <avayablue.net>, registered with1&1 Internet AG.
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.
Mrs. Prathiba M. Singh as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 29, 2015; the Forum received payment on May 29, 2015.
On June 1, 2015, 1&1 Internet AG confirmed by e-mail to the Forum that the <avayablue.com> and <avayablue.net> domain names are registered with 1&1 Internet AG and that Respondent is the current registrant of the names. 1&1 Internet AG has verified that Respondent is bound by the 1&1 Internet AG 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 June 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 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@avayablue.com, postmaster@avayablue.net. Also on June 2, 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 June 19, 2015.
Complainant submitted a timely Additional Submission that was received on June 24, 2015. Respondent submitted a timely Additional Submission that was received on June 26, 2015.
On June 29, 2015 pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum
appointed Mrs. Prathiba M. Singh 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 namesbe transferred from Respondent to Complainant.
A. Complainant
Complainant uses the AVAYA mark in connection with its telecommunications business providing hardware and software and business management and consultation services. Complainant holds Registration No. 2,696,985 for the AVAYA mark with the United States Patent and Trademark Office (“USPTO”) (Registered Mar. 18, 2003). Respondent’s <avayablue.com> and <avayablue.net> domain names are confusingly similar to the AVAYA mark as the names merely include the descriptive term “blue” and the generic top-level domain (“gTLD”) “.com” or “.net.”
Complainant submits that Respondent has no rights or legitimate interests in the <avayablue.com> and <avayablue.net> domain names. First, Respondent is not commonly known by the disputed domain names as per the relevant WHOIS information. Also, Complainant has never given Respondent license, authorization, or consent to use the AVAYA mark in connection with the domain name registrations. Further it is submitted by Complainant that Respondent is not making any bona fide offering of goods or services or any legitimate noncommercial or fair use. Instead, Respondent is utilizing the disputed domain names to maintain a website which directly competes in the telecommunications industry in which Complainant operates.
It is further submitted by Complainant that Respondent has registered and used the <avayablue.com> and <avayablue.net> domain names in bad faith. Respondent has disrupted Complainant’s business by offering related services per Policy ¶ 4(b)(iii). It is further submitted that Respondent registered and used the disputed domain name to profit from the goodwill associated with Complainant’s mark per Policy ¶ 4(b)(iv).
It is further submitted that Respondent has registered and used the <avayablue.com> and <avayablue.net> domain names with actual and/or constructive knowledge of the AVAYA mark and has been aware of Complainant’s rights in the mark.
B. Respondent
It is submitted by Respondent that the <avayablue.com> and <avayablue.net> domain names do not create an air of confusion as Respondent operates in a different telecommunications sphere. The addition of “blue” is indicative of the entity Respondent represents and signifies the products/services it offers.
It is further submitted by Respondent that he maintains good faith in registration and use by stating, “I have supported Nortel Networks and subsequently Avaya products”, refuting Complainant’s assertion that it trades off the goodwill associated with the AVAYA mark.
It is further submitted by Respondent registered the disputed domain names on January 4, 2013 (<avayablue.com>) and January 11, 2013 (<avayablue.net>).
C. Additional Submissions by the Complainant
It is submitted by Complainant that it indisputably has rights in the famous AVAYA mark based upon its numerous trademark registrations in the United States and around the world. It is further submitted by Complainant that it has a total of 172 registrations in 54 different countries.
It is further submitted by Complainant that Complainant has been exclusively and extensively used AVAYA Mark for approximately 13 years before Respondent registered the disputed domain names <avayablue.com> and <avayablue.net>.
It is reiterated by Complainant that Respondent’s <avayablue.com> and <avayablue.net> domain names are confusingly similar to the AVAYA mark as the names merely include the descriptive term “blue” and the gTLD “.com” or “.net.”
It is further submitted by Complainant that Respondent’s admission is that the services offered through the disputed domain names are different from the goods and services offered by Complainant. As a reply to the same Complainant hereby submits that Avaya is not just manufacturing equipment but also a leading global provider for next-generation business collaboration, contact center, networking and related services to companies of all sizes around the world. Thus, the services offered by Respondent are identical to the services offered by Complainant.
It is further submitted by Complainant that the competing and confusing use of the disputed Domain names does not represent a bona fide offering of goods and services under the Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the Domain Names, pursuant to policy ¶ 4(c)(iii) .
It is further submitted by Complainant that registration of a Domain Name with knowledge of the trademark owner’s right has been consistently found to constitute bad faith. It is further submitted by Complainant that even if Respondent is authorized to legally sell services to consumers for Avaya branded products, such a fact would not establish rights or legitimate interests in registering the Avaya Marks in the Domain Names.
D. Additional Submissions by the Respondent
It is submitted by Respondent that Complainant’s representative has not fully comprehended the hierarchy, between System Manufacturers, Third Party Vendor and on site Operations, Administration and Maintenance Technical Support Engineer. It is further submitted by Respondent that he cannot offer to sell similar goods and since he not a Third party Vendor he does not have the access to the channels for the systems manufacture, hardware/software support that a third party Vendor has.
It is further submitted by Respondent that to even suggest that Respondent is directing potential customers to <avayablue.com> and <avayablue.net> and to offer similar goods and services as Avaya Inc. is absurd. The competitors of Avaya Inc. to name some are Cisco, Siemens, Microsoft Lync, etc.
It is further submitted by Respondent that he agrees, the Avaya ‘Power of We” trademark was included the avayablue.com website and the same was not authorized by the Complainant. Respondent further submits that it was a transgression by the person, who assisted him with the construction and that Respondent takes full responsibility, for the transgression. He further submits that he does not believe that this act would constitute ‘bad faith” as there was no intention, of financial gain. Further, he submits that he naively allowed the inclusion of this trademark, as he thought it would be a more engaging experience, for the page it was shown on. Further, he submits that he immediately removed the trademark after receiving notification from Ena Hunter, Corporate Counsel UK and Ireland Avaya UK, dated 22nd of April, 2015 (Attachment 7).
Respondent reiterates that it has never been his intention, nor does he have the need, to trade on the good name of Avaya. He further reiterates that he has supported Nortel Networks and subsequently Avaya products, for in excess of 15 years. In that time he has acquired a level of excellence and is considered in the industry, not only a technical lead, but also an expert, on the subject matter.
It is submitted by Respondent that Avaya Inc. does not actually own the term Avaya Blue by way of trademark and therefore has no right to the websites <avayablue.com> and <avayablue.net>. Further, he submits that assuming that the contrary was true, then would this not mean, anywhere the term Avaya Blue is used from engineers CV’s to Employment Agencies recruiting engineers with the Avaya Blue skillset and everywhere in between using the term Avaya Blue, without authorization.
From the documents filed, it clearly appears that the Complainant has rights in the famous AVAYA Mark based upon its numerous trademark registrations in the United States and around the world. It is further submitted by the Complainant that it has a total of 172 registrations in 54 different countries. Respondent’s <avayablue.com> and <avayablue.net> domain names are confusingly similar to the AVAYA mark as the names merely include the descriptive term “blue” and the gTLD “.com” or “.net.”
Complainant submits that Respondent has no rights or legitimate interests in the <avayablue.com> and <avayablue.net> domain names. First, Respondent is not commonly known by the disputed domain names as per the relevant WHOIS information. Also, Complainant has never given Respondent license, authorization, or consent to use the AVAYA mark in connection with domain name registrations. Further it is submitted by Complainant that Respondent is not making any bona fide offering of goods or services or any legitimate noncommercial or fair use. Instead, Respondent is utilizing the disputed domain names to maintain a website which directly compete in the telecommunications industry in which Complainant operates.
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 uses the AVAYA mark in connection with its telecommunications business providing: hardware, software, business management, and consultation services. Complainant purportedly holds Registration No. 2,696,985 for the AVAYA mark with the USPTO (Registered Mar. 18, 2003). Panels have held where a complainant and respondent operate and/or live in different countries, a USPTO registration confers rights under Policy para4(a)(i). See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy para 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Accordingly, the Panelist finds that Complainant has rights in the AVAYA mark under Policy para 4(a)(i).
Next, Complainant contends that Respondent’s <avayablue.com> and <avayablue.net> domain names are confusingly similar to the AVAYA mark as the names merely include the descriptive term “blue” and the gTLD name “.com” or “.net.” Panels have seen such minimal alterations as insufficient in overcoming a finding of Policy para 4(a)(i) confusing similarity. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Considering the changes Respondent has made to the AVAYA mark and the relevant precedent, Complainant asserts and the Panelist agrees that the disputed domain names <avayablue.com> and <avayablue.net> are identical/confusingly similar to Complainant’s domain name.
Furthermore, addition of the word “blue” with “Avaya” makes it an instrument of deception in as much as Respondent admits to having knowledge of the term “Avaya blue” being used with respect to the Nortel suite of products. Thus addition of “blue” does not obviate deception but in fact enhances the same.
The Panel finds that the Policy, para 4(a)(i) has been satisfied.
The Panel finds that Complainant has made out a case that Respondent lacks rights and legitimate interests in the disputed domain name under the Policy, para 4(a)(ii). Complainant argues that Respondent has no rights or legitimate interests in the <avayablue.com> and <avayablue.net> domain names. First, Complainant contends that Respondent is not commonly known by the disputed domain names per the relevant WHOIS information. Also, Complainant has never given Respondent license, authorization, or consent to use the AVAYA mark in connection with domain name registrations. Further Complainant contends that that Respondent’s admission is that the services offered through the disputed domain names are different from the goods and services offered by Complainant. As a reply to the same Complainant submitted that Avaya is not just manufacturing equipment but also a leading global provider for next-generation business collaboration, contact center, networking and related services to companies of all sizes around the world. Thus, the services offered by Respondent are identical to the services offered by Complainant.
It is relevant to note Respondent categorically states that he is a Technical Support Engineer for Avaya products and other products. This goes to show that the use of the disputed domain names is in Bad Faith in as much as a distinct advantage is gained by use of the same, over Complainant and other parties who may be involved in providing similar services as him. Also because of the use of the impugned domain names, there is a serious possibility of monetary gain to the Respondent as there may be an incorrect assumption of affiliation or sponsorship or connection with Complainant when in fact there is none.
In light of that available information on the record, the Panelist agrees that Respondent is not commonly known by the <avayablue.com> and <avayablue.net> domain names under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Next, Complainant argues that Respondent is not making any bona fide offering of goods or services or any legitimate noncommercial or fair use. Instead, Complainant urges Respondent is utilizing the disputed domain names to maintain websites which directly compete in the telecommunications industry in which Complainant operates as per Attachment 12. Panels have seen such competing use as evincing no rights or legitimate interests as per Policy ¶¶ 4(c)(i) and (iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy para4(c)(i) or a noncommercial or fair use pursuant to Policy para4(c)(iii).”). Therefore, Panelist agrees that Respondent has operated with no bona fide offering of goods or services or legitimate noncommercial or fair use.
The Panel finds that the Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent has disrupted Complainant’s business by offering related services per Policy ¶ 4(b)(iii). Panels have found where a respondent was shown to offer competing products via a confusingly similar domain name, such use is evidence of Policy ¶ 4(b)(iii) bad faith disruption. 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 para 4(b)(iii).”). Therefore this Panelist is of the opinion that Respondent has demonstrated bad faith disruption via its registration and use of the <avayablue.com> and <avayablue.net> domain names.
Next, Complainant posits that Respondent registered and used the disputed domain name to profit from the goodwill associated with Complainant’s mark per Policy ¶ 4(b)(iv). While Respondent seems to be operating its business through the disputed domain names, the Panelist is of the opinion that such use is in direct competition with Complainant and that the site was registered in bad faith as well. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Lastly, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the AVAYA mark. Complainant argues that Respondent's offering of Complainant's own products and competing products at the resolving websites indicate that Respondent had actual knowledge of Complainant's mark and rights. The Panelist finds that that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain names in bad faith under Policy para 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also MinicardsVennootschapOnderFIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy para 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds that the Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <avayablue.com> and <avayablue.net> domain names be TRANSFERRED from Respondent to Complainant.
Mrs. Prathiba M. Singh, Panelist
Dated: July 13, 2015
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