Complainant lied, NAF messed up whois, Panelist can’t read, hosting company suspends website but the domain ayava.us survives a UDRP complaint

Complainant, Avaya Inc., a company located in Basking Ridge, NJ, USA, submitted a Complaint to the National Arbitration Forum on July 31, 2012 for the domain name ayava.us that was registered in 2006 by Respondent Ayava LLC.

Please note the difference in spelling between the 2 companies. Complainant owns several United States Patent and Trademark Office (USPTO) registered AVAYA trademarks. Complainant registered ayava.com in 2001 in an effort to prevent typosquatting. 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).

Respondent was identified in the Complaint as Moayyad Hamad and NOT as AYAVA INC. This was because Complainant lied or simply intentionally hide the company name and filed the complaint identifying the Respondent as the contact person in whois.

This is what whois shows and hasn’t changed since at least 2007:
Registrant Name: Moayyad Hamad
Registrant Organization: AYAVA INC.

When a name appears in whois TOGETHER with an organization then the Registrant IS the organization. The name is a contact person that could be the president, CEO, IT manager, legal counsel etc. Moayyad Hamad owns the company together with his wife, Aya A. Hamad.

Somehow the National Arbitration Forum accepted that the Respondent’s name was just  Moayyad Hamad. This can only be explained by the Forum’s favoritism towards complainants because they bring most of the money to the Forum. The NAF should have asked he Complainant to amend the complaint in order to at least include the name of the company as a co-respondent. NAF messed up. Again.

Then the Panelist makes these incredible statements in his discussion:

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. […] 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).

Really? Complainant asserts that Respondent is not commonly known by either the name “Ayava” and the Panelist simply accepts it? What about Respondent’s assertions that Ayava LLC has been registered in Tempe, Arizona since 2006 and has owned the ayava.us domain name since that time. Did the Panelist read the whois details to see  AYAVA INC. as the Registrant Organization? I am sure that a copy of whois was included in the Complaint as the Complainant is required to supply one.

How the domain name was saved by all these lies, screw ups and indifference is a miracle. But it was saved. In another decision last week the Panelist didn’t bother to make a 1 minute search in order to find out if the company listed in whois was real. But in that case the Respondent defaulted and the domain was transfered.

Respondent claims 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. I am not sure why and how this happened but a visit to the domain name ayava.us gives this result:

Forbidden
You don’t have permission to access / on this server.

This Complaint that was clearly a Reverse Domain Name Hijacking (RDNH) and it is too bad that Respondent didn’t ask for a RDNH ruling. Maybe he didn’t know about RDNH as he probably represented his company. I am sure the Complainant visited Respondents’s website before August 1st and found it’s legitimate website that at the bottom wrote “© AYAVA, LLC. – All rights and technical modifications reserved.” So not only did the Complainant tried to steal the domain name but also tried and is succeeding to destroy Respondent’s business. If I was Moayyad Hamad I would sue all parties involved in this proceedings as well as his hosting company. Hosting companies are not required to suspend a domain name during a UDRP complaint. I will wait and see when will the website be reinstated after this decision.

Complainant asserted 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. That is again a lie, as 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.

Anyway let’s see how the Panelist denied this complaint.

Panelist quickly found that the first element of the UDRP (Identical and/or Confusingly Similar) was satisfied as Complainant owns several USPTO registered AVAYA trademarks and generally, neither simple misspellings nor an added ccTLD can differentiate a disputed domain name from a mark.

In the second element of the UDRP (Rights or Legitimate Interests) the Respondent asserted 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 recognized 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. The Panel found that Respondent’s use of the domain name in business since 2006 was 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.

The Panel found that the ownership of the mark AVAYA in association with Complainant’s 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 alleged 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 disagreed that Respondent engaged in typosquatting and found 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 concluded 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).

Then the Panelist made some interesting notes including a note about laches:

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.).

Finally the Panelist found that Respondent’s conduct in this matter did not demonstrate bad faith registration or use under Policy ¶ 4(a)(iii). (Registration or Use in Bad Faith) Respondent asserted that it has nothing to do with Complainant and is not selling or offering any products that cause conflict to Complainant’s customers. Respondent stated 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 claimed 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.

So the Panel concluded that the Complainant’s requested relief would be DENIED and accordingly, it was ordered that the ayava.us domain name REMAIN WITH Respondent.