Avaya Inc. v. Moayyad Hamad
Claim Number: FA1207001456063
Complainant is Avaya Inc. (“Complainant”), represented by Joseph Englander of Shutts & Bowen LLP, Florida, USA. Respondent is Moayyad Hamad (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ayava.us>, registered with Hostopia.com Inc. d/b/a aplus.net.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflicts in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2012; the Forum received a hard copy of the Complaint on August 7, 2012.
On August 1, 2012, Hostopia.com Inc. d/b/a aplus.net confirmed by e-mail to the National Arbitration Forum that the <ayava.us> domain name is registered with Hostopia.com Inc. d/b/a aplus.net and that Respondent is the current registrant of the names. Hostopia.com Inc. d/b/a aplus.net has verified that Respondent is bound by the Hostopia.com Inc. d/b/a aplus.net registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On August 7, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 27, 2012 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
A timely Response was received and determined to be complete on August 27, 2012.
On August 31, 2012 an Additional Submission was received from the Complainant that complied with Supplemental Rule 7. On September 11, 2012 an Additional Submission was received from the Respondent. The Respondent’s Additional Submission did not comply with Supplemental Rule 7, however, the submission was considered in light of the fact that the Respondent was proceeding pro se.
On August 31, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following allegations:
1. Complainant owns several United States Patent and Trademark Office (“USPTO”) registered AVAYA trademarks that are used in connection with its ongoing telecommunication business activities:
Reg. No. 2,696,985 registered March 18, 2003;
Reg. No. 2,697,002 registered March 18, 2003; &
Reg. No. 3,507,805 registered September 30, 2008.
2. Respondent’s <ayava.us> domain name is confusingly similar to Complainant AVAYA mark, as the disputed domain name merely transposes the letters “v” and “y” of the mark.
3. Complainant has used the AVAYA mark worldwide since at least as early as 2000.
4. Respondent’s registration of a common misspelling of Complainant’s AVAYA mark is typosquatting and constitutes evidence that Complainant lacks rights or legitimate interests in the disputed domain name.
5. Respondent is not commonly known by either the name “Ayava” or AVAYA as the WHOIS information for the disputed domain name identifies the registrant as “Moayyad Hamad” and Respondent is not associated or affiliated with or sponsored by Complainant.
6. Respondent registered and uses the disputed domain name in bad faith because it resolves to a website offering telecommunications hardware and software that directly compete with the telecommunications products and services offered by Complainant.
7. Respondent’s disputed domain name disrupts Complainant’s business by facilitating competition and creates confusion for the purpose of Respondent’s own financial gain.
8. Respondent registered the disputed domain name with knowledge of Complainant’s famous AVAYA mark in an attempt to capitalize unfairly on the goodwill of Complainant’s well-known AVAYA mark.
B. Respondent makes the flowing allegations:
1. Ayava LLC has been registered in Tempe, Arizona since 2006 and has owned the <ayava.us> domain name since that time.
2. Ayava originally started selling video and audio products and systems.
3. The Ayava name was created by combining one of the owners’ names, Aya Hamad, with the letters “V” and “A” (abbreviation for video and audio).
4. Respondent has never and does not intend to sell VoIP.
5. Respondent’s and Complainant’s logos are different and dissimilar.
6. Respondent is a small family-owned business run by two owners with its main customer being the U.S. Air Force.
7. The small difference of transposing the letters “y” and “v” makes all the difference in the world to Respondent and its customers as the finding should indicate that the names are simply different.
8. The only product on Respondent’s website that might conflict with Complainant would be the Tanberg/Cisco Video Conferencing System, but Respondent is not selling those systems anymore.
9. Respondent intended to register the <ayava.com> domain name when it first started its business but found that domain name was already taken by Complainant.
10. Respondent has nothing to do with Complainant and is not selling or offering any products that cause conflict to Complainant’s customers.
11. Respondent is authorized to own a “.us” domain name because it is an American company and the domain name matches the company’s name and brand according to the “.us” registrar terms and regulations.
12. This proceeding has caused tremendous damage to Respondent’s business as its website and e-mails have been down since August 1 and Respondent is a fully online-based company with all communication done via e-mail.
C. Complainant’s Additional Submissions allege:
1. Complainant registered <ayava.com> in 2001 in an effort to prevent typosquatting and that Respondent admitted his knowledge of Complainant’s ownership of that particular domain.
2. Respondent offers products from Cisco Systems, Inc. which is a company that competes with the Complainant and that Respondent is acting in bad faith by having a domain that resolves to a website that promotes Complainant’s competitors.
3. Complainant asserts that Respondent’s identification of the differences between the company logos is irrelevant to the UDRP proceeding, and further due to Complainant’s registration of the AVAYA mark, protection of their mark extends to all fonts and colors.
4. Complainant contends that Respondent’s use of the .us TLD is further evidence that Respondent misappropriated Complainant’s trademark.
5. Complainant also asserts that it had nothing to do with Respondent’s website being down because UDRP filings do not take down websites and Respondent claims the website went down on August 1, 2012 while Complainant filed its documents on August 7, 2012.
D. Respondent’s Additional Submissions allege:
1. Respondent’s commission is licensed by the U.S. Department of Commerce and that entity’s regulations take into consideration differences in logos.
2. That no one owns a trademark registration for AYAVA and that Respondent’s company owns the disputed domain name legally and has full rights to use it as an American owned and registered company.
3. Respondent began selling video conferencing equipment in 2008, four years prior to Complainant’s similar activities and Respondent did so through its connection with the Tandberg company prior to Cisco’s acquisition of the company.
4. Respondent does not own or operate an e-commerce business that would affect Complainant in any way.
5. Respondent asserts that the Forum and/or the UDRP process are responsible for Respondent’s website no longer working.
Complainant is Avaya Inc., a company located in Basking Ridge, NJ, USA that states that is has “long been engaged in the telecommunications business providing communications hardware and software and business management and consultation services using the AVAYA Marks in the United States and around the world.” Complainant’s use dates back to 2000 and the company purports to have 19,000 employees worldwide, 3000 research and development professionals, and approximately 10,200 channel partners worldwide. Complainant states that it is consistently recognized as a global leader by industry and technology experts and provides evidence of past awards and notoriety.
Respondent is the owner, along with his wife, Aya A. Hamad, of a two person company in Tempe, AZ, USA that sells energy products such as solar panels, miscellaneous furniture such as auditorium seats, and a variety of audio visual equipment such as projectors and digital signage. The company was established in 2006 and has operated as a small family business since that time, primarily doing business with the United States Air Force bases located in relatively close proximity to their home.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
As noted above, Complainant owns several USPTO registered AVAYA trademarks that are used in connection with its ongoing telecommunication business activities:
Reg. No. 2,696,985 registered March 18, 2003;
Reg. No. 2,697,002 registered March 18, 2003; &
Reg. No. 3,507,805 registered September 30, 2008.
The Panel finds that these USPTO trademark registrations are sufficient to prove that Complainant has rights in the AVAYA mark pursuant to Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the Complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).
Complainant alleges that the <ayava.us> domain name is confusingly similar to Complainant’s AVAYA mark as the only difference is the transposition of the letters “v” and “y,” which Complainant argues is a common misspelling. The Panel notes that the disputed domain name also attaches the country-code top-level domain (“ccTLD”) “.us.” Generally, neither simple misspellings nor an added ccTLD can differentiate a disputed domain name from a mark. See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the Complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Reliant Techs., Inc. v. Jones, FA 1124524 (Nat. Arb. Forum Feb. 19, 2008) (“Also, because all domain names are required to have a top-level domain, Respondent’s use of the country-code top-level domain (“ccTLD”) “.us” does not distinguish the disputed domain name from Complainant’s registered mark.”). The Panel finds that Respondent’s <ayava.us> domain name is confusingly similar to Complainant’s AVAYA mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
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). The Panel finds that Complainant has made the requisite showing.
The Panel notes that there is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <ayava.us> domain name. The Panel recognizes that such a lack of evidence may be a sufficient basis to find that the Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it has no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). However the Panel notes that a registered domain name owner’s failure to own service marks or trademarks in the disputed domain name cannot be dispositive since having a protected trademark is not a prerequisite to registering a domain name. It is common ground that ownership of a protected mark does not automatically establish domain name rights nor does the registration of a domain name automatically confer protectable trademark rights.
Complainant asserts that Respondent is not commonly known by either the name “Ayava” or the name AVAYA. Complainant states that the WHOIS information for the disputed domain name identifies the registrant as “Moayyad Hamad,” which Complainant claims is not similar to the disputed domain name. Complainant further contends that Respondent is not sponsored by, associated with, or affiliated with Complainant and is not licensed or authorized to use Complainant’s mark. Complainant alleges that Respondent is not an authorized distributor of Complainant’s goods and services. Respondent does not dispute these assertions. The Panel recognizes that based solely on these allegations and the supporting evidence in the record, the Respondent is not commonly known by the disputed domain name and thus could be deemed to lack rights and legitimate interests under Policy ¶ 4(c)(iii). See Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the Respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”).
However the Panel also recognizes that Respondent is defending the disputed domain on behalf of the Company owned jointly with his wife, Aya A. Hamed, and as such would be remiss to disregard the similarity between the Respondent’s wife’s name and the domain name in dispute. The Respondent asserts that the disputed domain name actually consists of his wife’s name in part and the initials of their products and services, V for visual and A for audio. The Panel recognizes that the similarities may provide a basis for finding that Respondent is commonly known by the disputed domain name according to Policy ¶ 4(c)(iii) as it is consistent with Respondent’s company name and comprised, in part, of Respondent’s wife’s name. See Penguin Books Ltd. v. Katz Family, D2000-0204 (WIPO May 20, 2000) (finding that the Respondent had rights or legitimate interests in the <penguin.com> domain name where the evidence established that it reflected the Respondent’s nickname and the domain name was used to send electronic e-mail for the Respondent’s family). The Panel finds that Respondent’s use of the domain name in business since 2006 is sufficient to establish rights in the disputed domain as the Respondent’s used the name in all of its electronic and print communications and advertising as well as business documentation.
Complainant argues that Respondent’s <ayava.us> domain name resolves to a website that offers telecommunications hardware and software, including telepresence management and video conferencing. Complainant asserts that these offered telecommunications products and services directly compete with the telecommunications products and services offered by Complainant. Respondent states that it has never sold and does not intend to sell VoIP. Respondent argues that the only product it sold that may have been competitive with Complainant’s products is no longer sold on the resolving website. Respondent argues that its business is a fully online-based company with all its communication done over e-mail and through its website.
The Panel finds the Respondent’s representations more persuasive. The Complainant is apparently and indisputably a multi-national entity, with a network of tens of thousands of employees, doing telecommunication business on a global basis. The ownership of the mark AVAYA in association with their business does not preclude all others from offering services in the realm of telecommunications. While it is understood that others may directly compete with the Complainant under the guise of totally different and/or non-confusing marks, the evidence hardly supports the assertion here that Respondent’s extremely modest business, even through use of a domain name similar to Complainant’s mark, is doing anything more than incidentally competing with Complainant. These facts in conjunction with the differences between the domain name and the mark support a finding that Respondent has rights and legitimate interests in the disputed domain.
Complainant alleges that Respondent’s <ayava.us> domain name takes advantage of the common mistakes and typographical errors made by Internet users who are attempting to find Complainant. Complainant contends that this behavior is typosquatting and evidences a lack of rights and legitimate interests according to Policy ¶ 4(a)(ii). The Panel disagrees that Respondent engaged in typosquatting and finds that general QWERTY keyboard configuration supports the Respondent in this regard. See iLeads.com LLC v. Elec. Mktg. Sys., Inc., FA 187636 (Nat. Arb. Forum Oct. 13, 2003) (finding that the <aleads.com> domain name was not confusingly similar to the complainant’s ILEADS.COM mark because the letters “a” and “i” are not close to each other on the keyboard, do not look alike, and are not commonly substituted for each other). The Panel concludes that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii). See Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the Respondent overcame the Complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
While there is undoubtedly some dangerous potential associated with allowing even small incursions into the protected property of others, trademark law and the UDRP seek to maintain an optimum balance between those dangers and protecting fair competition as affected by domain name activity. Within the domain name context trademark owners are encouraged to take additional steps to protect themselves from those who may register domain names that are identical or confusingly similar to their own. Complainant took some of those steps by registering domain names identical to its registered trademark, as well as some names that were similar to the protected mark. Complainant took some of those steps in regard to multiple, but not all, top level domains (”TLD”). For example, Complainant registered the domain name <ayava.com>. The Panel is not prepared to declare that Complainant’s taking of some steps was sufficient alone to require that others beneficially fill in the gaps for all potentially similar names, in all TLD’s, that Complainant decided not to register.
Another protective step trademark owners must take is the careful monitoring of domain name registrations that are identical or similar to their protected marks in the same market of goods and/or services. Such efforts allow the mark owner to immediately bring actions against those who might otherwise seek to cash in on established goodwill by passing themselves off as the trademark owner. Complainant did not appear to take that step in this case as Respondents have been in business for six (6) years in a market that Complainant identifies itself as an award-winning, tech enterprise leader in the field. It seems that Complainant’s size and sophistication would have made them aware of the Respondents much sooner, however if that is not so due to the diminutive size of Respondent’s business then Complainant’s concern about Respondent’s direct competition is misplaced.
While the UDRP is focused on narrower matters then regulating overall competition the above facts are important since time considerations relative to the filing of UDRP proceedings have been held to impact the claim of rights and legitimate interests in a disputed domain name. See Square Peg Interactive Inc. v. Naim Interactive Inc., FA 209572 (Nat. Arb. Forum Dec. 29, 2003) (“Although laches by itself is not a defense to a complaint brought under the Policy, Complainant’s delay in seeking relief is relevant to a determination of whether Respondent has been able to build up legitimate rights in the Domain Name in the interim, and whether it is using the Domain name in bad faith.”).
Although there has been some debate as to whether laches should be an equitable defense in a UDRP administrative proceeding recent Panels have recognized that UDRP proceedings are equitable in nature as they offer equitable relief and therefore laches is a valid defense in appropriate cases.
See The New York Times company v. Name Administration Inc., FA 1349045 (Nat. Arb. Forum November 17, 2010)(finding that laches is a valid defense in appropriate cases), see also Professional Rodeo Cowboys Association, Inc. v. Alternative Advertising Concepts, Inc./Kenneth Foreman, FA 1440736 (Nat. Arb. Forum June 26, 2012) (finding that laches is an appropriate defense). Because the Complainant was a tech leader in the relevant marketplace yet did nothing for an extended period of time in regards to Respondent’s business, either because of Respondent’s small size, or the difference between Respondent’s domain name and Complainant’s mark, the facts that give rise to a laches defense further support Respondent’s rights and legitimate interests in the disputed domain name. See Novak v. Marchex Sales, Inc./Hight, FA 1418478 (Nat. Arb. Forum March 1, 2012)( finding where the trademark holder was sophisticated, had been in business for a substantial period of time and had registered several trademarks and domain names, but then failed to pursue an alleged domain name infringer without excuse or explanation while the alleged domain name infringer built a business, laches should apply.).
Complainant has not proven this element.
Respondent asserts that it has nothing to do with Complainant and is not selling or offering any products that cause conflict to Complainant’s customers. Respondent states that it intended to register the <ayava.com> domain name when it first started its business, but found that the domain name was already taken by Complainant. Respondent claims that it is authorized to own a “.us” domain name because it is an American company, with a legitimate business, and the domain name matches the company’s name and brand according to the “.us” registrar terms and regulations. The Panel finds that Respondent’s conduct in this matter does not demonstrate bad faith registration or use under Policy ¶ 4(a)(iii). See Chestnutt v. Tumminelli, D2000-1758 (WIPO Feb. 2, 2001) (finding no bad faith registration or use of the domain name <racegirl.com> where no evidence was presented that the Respondent intended to divert business from the Complainant or for any other purpose prohibited by UDRP Rules); see also MatchMaker Int'l Dev. Corp. v. Kaiser Dev. Corp., FA 146933 (Nat. Arb. Forum May 9, 2003) (Panelist David Sorkin, dissenting) (“If Respondent registered the domain name for legitimate purposes, or if it reasonably believed at the time of registration that those purposes were legitimate, then the registration was not in bad faith.”).
Complainant has not proven this element.
As the Complainant has failed to establish all three elements required under the usTLD Policy, the Panel concludes that the Complainant’s requested relief shall be DENIED.
Accordingly, it is Ordered that the <ayava.us> domain name REMAIN WITH Respondent.
Prof. Darryl C. Wilson, Esq., Panelist
Dated: September 14, 2012
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