WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Avaya Inc. v. Ali Parsa / Ali Parsa, AVAYeRASA / Ali Parsa Koosha
Case No. D2018-1472
1. The Parties
The Complainant is Avaya Inc. of Santa Clara, California, United States of America ("United States"), represented by Fowler White Burnett, United States.
The Respondent is Ali Parsa of Tehran, Iran (Islamic Republic of) / Ali Parsa, AVAYeRASA of Tehran, Iran (Islamic Republic of) / Ali Parsa Koosha of Tehran, Afghanistan.
2. The Domain Names and Registrars
The disputed domain names <aloavaya.com>, <aloavaya.net>, <aloavaya.org>, <avayarasa.com>, <avayarasa.net>, and <avayarasa.org> (respectively, the first to sixth disputed domain names) are registered with Tucows Inc.
The disputed domain name <avayerasa.com> (the seventh disputed domain name) is registered with Realtime Register B.V.
The disputed domain names <avayerasa.net> and <avayerasa.org> (the eighth and ninth disputed domain names) are registered with OnlineNic, Inc. d/b/a China-Channel.com.
Tucows Inc, Realtime Register B.V., and OnlineNic, Inc. d/b/a China-Channel.com will collectively be referenced as the "Registrars".
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 3, 2018. On July 3, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On July 4, 2018, July 6, 2018, and July 10, 2018, the Registrars transmitted by email to the Center verification responses confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2018. On July 23, 2018 and August 7, 2018, the Center received email communications from the Respondent. On August 13, 2018, the Complainant filed an unsolicited Supplemental Filing with the Center by email. On August 13, 2018, the Center informed the Parties that the panel appointment process would commence. On August 14, the Center received further email communications from the Respondent.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on August 20, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Since about 2000, the Complainant has been providing telecommunications equipment and software under the trademark AVAYA. It has registered and uses numerous domain names in connection with its operations including <avaya.com>, <avaya.info>, <avay.net>, <avayanetwork.com>, <avayasolutions.com> and <avayalive.com>.
The Complainant says its trademark AVAYA has been used since 2000 around the world. Amongst other things, it is owner of registered trademarks for AVAYA:
(a) in the United States, Registration No. 2696985, for a wide range of goods and services in International Classes 9, 35, 37, and 42, which was registered on March 18, 2003;
(b) in the United States, Registration No. 2697002, in slightly stylised form for a wide range of goods and services in International Classes 9, 35, 37, and 42, and which was also registered on March 18, 2003;
(c) in the United States, Registration No. 3507805, for clothing in International Class 25 and which was registered on September 30, 2008;
(d) in Iran, No. Registration 173157, for the slightly stylised version of AVAYA in International Classes 9, 35, 37, 38, and 42 and which was registered on November 3, 2010 from an application made on December 22, 2009.
The Panel also notes that the vast majority of the Complainant's several hundred registered trademarks around the world are for AVAYA in the slightly stylised version and resulted from applications filed between June and October 2000.
The seventh disputed domain name was first registered by the Respondent on April 24, 2015.
In May 2015, the Respondent registered <avaya.center>. As a result of a complaint brought in July 2015, however, the Respondent was found to have no rights or legitimate interests in that domain name and the registration was ordered to be suspended under the Uniform Rapid Suspension (URS) system.
On, respectively, January 20 and March 29 in 2016, the Respondent registered the eighth and ninth disputed domain names.
On February 29, 2016, the Respondent registered a company in Iran under the name Avayerasa Communications Company Ltd.
On May 16, 2017, the Respondent registered the fourth, fifth, and sixth disputed domain names. On June 25, 2017, the Respondent registered the first disputed domain name. The second and third disputed domain names were first registered by the Respondent on July 3, 2017.
On December 24, 2017, the Respondent's company applied to register the trademark Avayerasa (in a stylised form) in Iran; Application No. 139650840001096499. The application appears to have been published in the Official Gazette on January 3, 2018.
It appears that each disputed domain name redirected to a website at "www.avayerasa.com" just before the Complaint was filed. The website offers for sale products including the Complainant's Avaya brand products and products from Vtech, Huawei, and Zenitel.
5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.
A. Consolidation of Complaints
The eighth and ninth disputed domain names have been registered in the name of Ali Parsa Koosha. The seventh disputed domain name has been registered in the name of Ali Parsa only. All the other disputed domain names have been registered in the name of Ali Parsa of "Avayerasa". The physical and telephone and fax numbers used to register the different disputed domain names are different. However, the email contact for all disputed domain name is the same.
As the disputed domain names resolved to the same website and the email address in the WhoIs contacts is the same in each case, the Complainant contends it is appropriate to treat all the disputed domain names as registered by the same person or under common control.
The Response has been filed from the email address confirmed by the Registrars as correct. The person submitting the Response claims ownership of all the disputed domain names.
In these circumstances, the Panel considers it appropriate to proceed on the basis that all the disputed domain names are registered by the same person or under the control of the same person.
B. Admissibility of Complainant's Supplemental Filing
Apart from documents requested by the Panel pursuant to paragraph 12 of the Rules, neither the Policy nor the Rules expressly provide for supplemental filings. Their admissibility is therefore in the discretion of the Panel bearing in mind the requirements under paragraph 10 of the Rules to ensure that the proceeding is conducted with due expedition and both parties are treated equally, with each party being given a fair opportunity to present its case.
Where unsolicited supplemental filings are admitted, it is usually because the material corrects some error or addresses something raised in a response which could not reasonably have been anticipated or which was not otherwise appropriate to deal with until a respondent's position on a particular point was clear.
For the sake of completeness given the matters raised in the Response, the Panel considers it appropriate to admit the Complainant's supplemental filing and, in the interests of fairness, the Respondent's reply.
C. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant's trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for AVAYA, both in plain type in the United States and in slightly stylised form in the United States, Iran, and many other countries.
The Complainant's trademark, AVAYA, is plainly visible in the first to sixth disputed domain names.
Disregarding the generic Top-Level-Domain ("gTLD") components, the seventh to ninth disputed domain names differ from the Complainant's trademark by the substitution of the letter "e" for the "a" at the end of "avaya" and the addition of "rasa".
The Complainant says that "rasa" means "money" in Pashto, which is the language of a significant section of the Iranian population. It then contends that the substitution of the letter "e" for "a" is a straightforward case of typosquatting. See e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.9.
The Respondent contends, however, that "ava", "avay", "avaya" and "avaye" mean "voice" in Farsi and "rasa" in Farsi means "clear" so that an English translation of the term "avayerasa" is "clear communication".
The Panel considers that the possible meanings of the term are more appropriately assessed under the second and third limbs of the Policy. The second stage of the inquiry under the first element of the Policy simply requires a visual and aural comparison of the disputed domain names to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the gTLD component as a functional aspect of the domain name system: WIPO Overview 3.0, sections 1.7 and 1.11. Questions such as the scope of the trademark rights, the geographical location of the respective parties, and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
Accordingly, the Panel finds that the Complainant has established that each disputed domain name is confusingly similar to the Complainant's trademark and the requirement under the first limb of the Policy is satisfied.
D. Surrender of some disputed domain names
In the Response, the Respondent states that the disputed domain names <aloavaya.com>, <aloavaya.net>, and <aloavaya.org> have a combination including the Complainant's trademark and the Respondent is willing to transfer them to the Complainant.
This Response was provided after the Complainant had contended that the word "alo" is a common form of greeting when answering a telephone call in Iran as in many other countries. At the time this decision is being prepared, the first and second disputed domain names no longer appear to resolve to an active website. The third disputed domain name, however, resolves to a parking page with pay-per-click links relating to telephone systems.
Given the proof of the Complainant's trademarks and the Respondent's consent to transfer, the Panel considers it is appropriate that those three disputed domain names be ordered to be transferred to the Complainant: WIPO Overview 3.0, section 4.10.
In the Respondent's supplemental filing in response to the Complainant's supplemental filing, the Respondent states that the redirect of the fourth, fifth, and sixth disputed domain names to the website at "www.aveayeras.com" has been removed.
At the time the decision is being prepared, that appears to be the case. It is possible that the Respondent intended to include these disputed domain names in the offer of transfer made in respect of the first to third disputed domain names. However, that is not clear unequivocally. Accordingly, the Panel will proceed to consider whether the Complainant has satisfied the requirements of the Policy in respect of these disputed domain name as well as the "avayerasa" formative domain names.
E. Rights or legitimate interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
The Complainant states that it has not authorised the Respondent to use it trademark or any of the disputed domain names. Nor is the Respondent affiliated with it.
The Respondent, however, contends that these disputed domain names are registered and being used by his company, Avayerasa Communications Company Ltd, in connection with a legitimate business in Iran. The Respondent also has at least applied for a trademark in Iran for a highly stylised version of "Avayerasa". As noted above, the Respondent contends that the verbal elements comprising these disputed domain names are common Farsi words which, when translated, have the descriptive meaning "Clear Communication". The Respondent also points to a number of other websites which use, or are based on, the term "avaye". Most, but not all, of these third-party websites appear to be related to music.
According to the translations submitted by the Respondent, the application to register the company under its name, however, was made in February 2016 and the application to register the trademark was not made until November 11, 2017. Both of these events are well after the Respondent had registered the domain name <avaya.center> and that registration was found to have been made in bad faith under the URS. The Examiner found in that determination that the Respondent had registered that domain name with the intention of disrupting the Complainant's business. The Respondent cannot claim therefore to have adopted either the corporate name, or the stylised version of the trademark, without any notice of the Complainant's trademark or that the Complainant disputed the Respondent's rights to use names or signs confusingly similar to the Complainant's trademark.
As the Complainant points out, the trademark which the Respondent has applied to register features a device element in place of the initial letter "A" which could be viewed as, arguably, a stylised letter "A" or as a separate design element so that the alphanumerical element of the Respondent's trademark is literally "Vayerasa".
The seventh disputed domain name, <avayerasa.com> is the earliest registered disputed domain name. It was registered in very close proximity to the registration of <avaya.center>. Moreover, it has been used to resolve to a website offering both what appear to be the Complainant's products and other brands of telecommunications equipment. It is clear therefore that the Respondent was well aware of the Complainant's trademark when registering that disputed domain name. It would seem likely, given the close proximity of its registration to the registration of <avaya.center>, that both domain names were registered for the same purpose.
It is also unclear whether the products being offered from the Respondent's website as AVAYA products are genuine products or otherwise. Even if they are genuine, however, the website does not clearly disclose that nature of the relationship or, more accurately, the lack of any relationship between the Respondent and the Complainant. Further, as already noted, the website also offers telecommunications products and services from other suppliers.
Tasking all these circumstances together, the Panel does not consider that the adoption of a disputed domain name which so closely resembles the Complainant's trademark for use in connection with goods and services of the kind provided by the Complainant qualifies as a good faith offering of goods and services under the Policy. The term "avayerasa" may have the descriptive meaning in Farsi which the Respondent contends for. However, the strong inference from the circumstances is that the Respondent did not adopt the term innocently for its descriptive content, but is seeking to take advantage of its resemblance to the Complainant's trademark.
That conclusion flows through to the eighth and ninth disputed domain names for the same second Level Domain, registered later. It also applies to the fourth to sixth disputed domain names, all the more so since they embody the Complainant's trademark unmodified. The reasoning the Respondent has accepted for surrendering the disputed domain names formed from "aloavaya" is equally applicable to the fourth, fifth and sixth disputed domain names.
Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also in respect of the fourth to ninth disputed domain names.
F. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that each disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint. See e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The registration of the seventh disputed domain name and the domain name <avaya.center> in such close proximity, particularly given the use of the former to offer products under the Complainant's trademark as well as other companies' telecommunications products, demonstrates the Respondent's awareness of the Complainant's trademark and intention to capitalize on it for its trademark significance. Accordingly, the Panel finds that the Respondent registered the fourth to ninth disputed domain names in bad faith under the Policy.
Further, the use of those disputed domain names in the way outlined above carries forward that attempt to trade on the trademark significance of the disputed domain names. Accordingly, the Panel finds that each of these disputed domain name has also been used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <aloavaya.com>, <aloavaya.net>, <aloavaya.org>, <avayarasa.com>, <avayarasa.net>, <avayarasa.org>, <avayerasa.com>, <avayerasa.net>, and <avayerasa.org> be transferred to the Complainant.
Warwick A. Rothnie
Date: September 3, 2018