WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Avaya Inc. v. Seid Saeed Emad Eslami Oskuie
Case No. DIR2016-0003
1. The Parties
The Complainant is Avaya Inc. of Basking Ridge, New Jersey, United States of America, represented by Peretz Chesal & Herrmann, PL, United States of America.
The Respondent is Seid Saeed Emad Eslami Oskuie of Tehran, the Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name, <avaya.ir> (the "Domain Name"), is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 8, 2016. On February 9, 2016, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Domain Name. On February 10, 2016, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on February 16, 2016.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the "Policy" or "irDRP"), the Rules for .ir Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 22, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was March 13, 2016.
At the request of the Complainant the case was suspended on February 26, 2016 and reinstituted on April 13, 2016, the purpose of the suspension being to enable the parties to reach a settlement, the Respondent having indicated in the course of email communications with the Center and the Complainant's representative that he was willing to transfer the Domain Name to the Complainant. His sole concern appears to have been to ensure that any transfer that he makes is to the Complainant and nobody else. The procedure suggested to him required him to release to the Complainant's representative "the account information and password" for the Domain Name. From the Panel's reading of the case file this does not appear to have been done. The Respondent has however agreed to "an Order from the Panel transferring ownership or acknowledging transfer of the ownership to Avaya." Given his position in the matter he has not filed a Response.
The Center appointed Tony Willoughby as the sole panelist in this matter on April 20, 2016. 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
The Complainant is and has for some years been engaged in the provision of telecommunications hardware and software around the world under the trade mark AVAYA. The Complainant is the registered proprietor of a large number of trade mark registrations for the mark AVAYA including United States Trade Mark Registration Number 2696985 AVAYA (word) registered on March 18, 2003 in classes 9, 35, 37 and 42 for a wide variety of communications hardware and software and related services.
The Domain Name registration was first "created" on July 13, 2011. It is connected to a static page featuring the message "WELLCOM [sic]TO AVAYA". This links to a website at <oskueistore.com> promoting the goods/services of "Avaya", "Panasonic", "at&t" and "Uniden" and using the logos for those brands.
5. Parties' Contentions
The Complainant contends that the Domain Name is identical to its AVAYA trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Domain Name was both registered in bad faith and is being used in bad faith.
The Respondent has not responded to the Complaint save to indicate that he is willing to transfer the Domain Name to the Complainant. However, in his email correspondence with the Center and with the Complainant referred to in section 3 above he has made it clear that he registered the Domain Name hoping to do business with the Complainant.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered or is being used in bad faith.
While the Parties appear to have come to an agreement that the Panel should issue an order directing that the Domain Name be transferred to the Complainant, the Panel is under an obligation to issue orders in accordance with the terms of the Policy. It is incumbent on the Panel therefore to verify that the Complainant has made out a case in compliance with Paragraph 4(a) of the Policy.
B. Identical or Confusingly Similar
The Domain Name comprises the name "Avaya" and the ".ir" country code Top Level Domain ("ccTLD") identifier. It being permissible for the Panel to ignore the ccTLD identifier where, as here, it serves a purely technical function, the Panel finds that the Domain Name is identical to a trade mark in which the Complainant has rights.
C. Rights or Legitimate Interests
It is clear from the Case File that the Respondent registered the Domain Name hoping to be able to do business with the Complainant, but without having had any permission from the Complainant to use its trade mark in this way or indeed in any other way.
It was at best a speculative registration and not one based upon any right or legitimate interest.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered or Used in Bad Faith
Knowingly registering a domain name which is identical to the trade mark of another, without the permission of the trade mark owner and with the intention of attracting business on the back of the fame of that trade mark is likely to constitute bad faith registration under the Policy.
To then use the Domain Name as it is currently being used (see section 4 above) to resolve to a trading site offering the goods and services of others, some of whom are likely to be competitors of the trade mark owner compounds the abuse. The impression given to the visitor is that the Respondent is an authorized user of the trade mark and, indeed, contrary to the indication given in his email correspondence, that he is trading in the Complainant's goods.
The Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <avaya.ir>, be transferred to the Complainant.
Date: April 20, 2016