Avaya Inc. found guilty of Reverse Domain Name Hijacking and harassing the domain name owner

Avaya Inc., a multinational company with over 17,500 employees worldwide, was found guilty of Reverse Domain Name Hijacking by a 3-member Panel at the National Arbitration Forum. I represented the Respondent, Avayo Electronics, in these proceedings.

Avaya Inc. tried to steal the domain name avayo.net (notice the spelling) from its rightful owners for the past 8 years Avayo Electronics from Canada. The Complainant, Avaya Inc., was represented by Joseph Englander of Shutts & Bowen LLP, Florida, USA. 

The Complainant should have known that it could never prove that Respondent was not commonly known by the disputed domain name, because the Complainant in fact knew that Respondent had used the domain name in furtherance of a bona fide offering of goods and services. Not only did the Complainant fail to withdraw its Complaint when it was obvious that it could not succeed, it actually pressed its case by submitting Additional Submissions that did not address the pertinent facts, thus harassing the Respondent. Avaya Inc. had another 2 complaints denied in the past again for domains that were used in good faith by its owners for many years. (see below)

The Respondent, Avayo Electronics, is a business whose name corresponds to the disputed domain name. That business is a legitimate business which does not compete directly with the Complainant, Avaya Inc. When it filed its Complaint, the Complainant was well aware of the fact that the Respondent is engaged in a legitimate business which does not compete directly with the Complainant. When it filed its Additional Submission, the Complainant was well aware of the fact that the disputed domain name corresponds to the name of the Respondent’s business.

Avayo Electronics provided evidence to prove, that it has been commonly known by the disputed domain name for eight years. That disputed domain name corresponds to the Respondent’s company name and a UAE registered trademark. The Complainant did NOT contest this. On the contrary, the Complainant admitted that the Respondent is a manufacturer of data and telecommunication products which do not compete with the Complainant’s own products. Thus the Panel found that the Respondent  adequately shown that it is commonly known as “AVAYO” in its business name.

The Panel found that it was clear from the record that the Complainant knew that the Respondent was engaged in a legitimate business. When it filed the Complaint, the Complainant could plausibly have been unaware of the fact that the disputed domain name corresponds to the Respondent’s business name. However, the Complainant could not have ignored this after the Response was filed. Not only did the Complainant fail to withdraw its Complaint when it was obvious that it could not succeed, it actually pressed its case by submitting Additional Submissions that did not address the pertinent facts, thus harassing the Respondent.  Further, the Complainant merely asserted that the Respondent registered and used the disputed domain name in bad faith, without providing any evidence to support its assertions.

The Panel then went on to say: “As the Respondent correctly notes, the Complainant should have known that it could never prove that Respondent was not commonly known by the disputed domain name, because it was well aware of the Respondent’s business activities. The Respondent also correctly notes that the Complainant in fact knew that Respondent had used the domain name in furtherance of a bona fide offering of goods and services. And the Respondent correctly notes that the Complainant has previously filed domain name cases, and lost in two of such cases when it brought proceedings against legitimate businesses such as the Respondent.  See Avaya Inc. v. Sudhir Sazena, FA 1229266 (Nat. Arb. Forum Dec. 9, 2008); and Avaya Inc. v. Moayyad Hamad, FA 1456063 (Nat. Arb. Forum Sept. 14, 2012). “

Consequently, the Panel found that the Complaint was submitted in an attempt to hijack Respondent’s domain name.

The 3 member Panel cites a lot of very interesting cases in its decision that can be used in other Reverse Domain Name Hijacking cases. Here are all the details of the decision FA1302001487607:

Pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Paul M. DeCicco and The Honourable Neil Anthony Brown QC as Panelists, Richard Hill as Presiding Panelist.

The Reverse Domain Name Hijacking ruling was coming even from the “Findings” section of the decision where the Panel said:
“The Respondent is a business whose name corresponds to the disputed domain name.  That business is a legitimate business which does not compete directly with the Complainant.

When it filed its Complaint, the Complainant was well aware of the fact that the Respondent is engaged in a legitimate business which does not compete directly with the Complainant.  When it filed its Additional Submission, the Complainant was well aware of the fact that the disputed domain name corresponds to the name of the Respondent’s business.”

Identical and/or Confusingly Similar

For the reasons set forth below, the Panel holds that it need not analyse this element of the Policy.

Rights or Legitimate Interests

The Respondent contends, and provides evidence to prove, that it has been commonly known by the disputed domain name for eight years.  That disputed domain name corresponds to the Respondent’s company name and a UAE registered trademark.  The Complainant does not contest this.  On the contrary, the Complainant admits that the Respondent is a manufacturer of data and telecommunication products which do not compete with the Complainant’s own products.  Thus the Panel holds that the Respondent has adequately shown that it is commonly known as “AVAYO” in its business name.

[…]

Since the Respondent prevails regarding this element of the Policy, the Panel need not consider the other elements of the Policy.

Registration and Use in Bad Faith

As already noted, the element analysed above is dispositive, […] Nevertheless, the Panel finds that the Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii).

Reverse Domain Name Hijacking

Paragraph 1 of the Rules defines Reverse Domain Name Hijacking:

Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.

The Respondent invokes this provision when it requests the Panel to find that the Complainant is using the Policy in a bad faith attempt to deprive a registered domain name holder of a domain name.

The general conditions for a finding of bad faith on the part of the Complainant are well stated in Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO, October 18, 2000):

Clearly, the launching of an unjustifiable Complaint with malice aforethought qualifies, as would the pursuit of a Complaint after the Complainant knew it to be insupportable.

These conditions are confirmed in Goldline International, Inc. v. Gold Line, D2000-1151 (WIPO, January 4, 2001) and Sydney Opera House Trust v. Trilynx Pty. Limited, D2000-1224 (WIPO, October 31, 2000) (where the condition is stated as “the respondent must show knowledge on the part of the complainant of the respondent’s right or legitimate interest in the disputed domain name and evidence of harassment or similar conduct by the complainant in the face of such knowledge”), which in turn cites Plan Express Inc. v. Plan Express, D2000-0565 (WIPO, July 17, 2000).

It is clear from the record that the Complainant knew that the Respondent is engaged in a legitimate business.  When it filed the Complaint, the Complainant could plausibly have been unaware of the fact that the disputed domain name corresponds to the Respondent’s business name.  However, the Complainant could not have ignored this after the Response was filed.

Not only did the Complainant fail to withdraw its Complaint when it was obvious that it could not succeed, it actually pressed its case by submitting Additional Submissions that did not address the pertinent facts, thus harassing the Respondent.  Further, the Complainant merely asserts that the Respondent registered and used the disputed domain name in bad faith, without providing any evidence to support its assertions.

As the Respondent correctly notes, the Complainant should have known that it could never prove that Respondent was not commonly known by the disputed domain name, because it was well aware of the Respondent’s business activities.  The Respondent also correctly notes that the Complainant in fact knew that Respondent had used the domain name in furtherance of a bona fide offering of goods and services.  And the Respondent correctly notes that the Complainant has previously filed domain name cases, and lost in two of such cases when it brought proceedings against legitimate businesses such as the Respondent.  See Avaya Inc. v. Sudhir Sazena, FA 1229266 (Nat. Arb. Forum Dec. 9, 2008); and Avaya Inc. v. Moayyad Hamad, FA 1456063 (Nat. Arb. Forum Sept. 14, 2012).

Consequently, the Panel finds that the Complaint was submitted in an attempt to hijack Respondent’s domain name.

DECISION

Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <avayo.net> domain name REMAIN WITH Respondent.

The Panel finds that the Complainant has attempted to engage in Reverse Domain Name Hijacking.