Domain name - Domain name dispute resolution policy - Trademark - Constructive knowledge  - Trade Names - Confusingly similar - Bad faith registration - Bad faith use - Late submissions - Former Employee.

The Complainant is the owner of four trademarks that include the word "AVIDIA," AVIDIA, AVIDIA SYSTEMS, AVIDIAWARE, and AVIDIA IQ. The Complainant had registered the domain name AVIDIA.COM, but the registration lapsed.  The Respondent registered the domain name in April, 1999, the same month the Complainant says the registration lapsed.

The Complainant employed the Respondent as vice president of sales. The Respondent left his employment in May 1997 or May 1998. 

According to the Complainant, the Respondent offered to sell the domain name for $100,000. The Respondent’s final "demand," as his attorney termed it, was for $35,000. 

Held, Name Transferred to Complainant.

The domain name registered by the Respondent, avidia.com, is identical to the trademarks in which the Complainant has rights. The Respondent has no rights or no legitimate interests in the domain name. He has no relationship to the Complainant,
other than being a former officer of the Complainant’s predecessor, Avidia Systems. His asserted intended use of the domain name - an alumni site for former Avidia employees - is not a legitimate use of the domain name that uses the Complainant’s trademarked names.  His "demand" for an exorbitant sum speaks for itself of bad faith.

M. Scott Donahey, concurring:

The late reply filed by the Complainant or the Supplemental Response filed by the Respondent is not considered for the reasons stated in J.P. Morgan v. Resource
Marketing, ICANN Case No. D2000-0035. 

First, the facts that Respondent has made no bona fide use of the domain name since, nor  has he produced any evidence of expenditures made in preparation for such use demonstrate that Respondent has no rights or legitimate interests in respect of the domain name at issue.  The Respondent's intention to establish "an AVIDIA alumni-site for former AVIDIA employees" does not create rights or legitimate interests in respect of the domain name at issue. In addition, the Panel can conceive of many alternate domain names that could be more suited for his intentions. Finally, the fact that Respondent has both constructive and actual notice of Complainant’s use of the mark, Respondent cannot show any rights or legitimate interests in respect of the domain name at issue. 

Cases referred to

Barney’s Inc. v. BNX Bulleting Board, ICANN Case No. D2000-0059
Cellular One v. Brien, ICANN Case No. D2000-0028
Compagnie de Saint Gobain v. Com-Union Corp., ICANN Case No. D2000-0020
J.P. Morgan v. Resource Marketing, ICANN Case No. D2000-0035
World Wrestling Federation v. Bosman, ICANN Case No. D99-0001

Policies referred to

Uniform Domain Name Dispute Resolution Policy
National Arbitration Forum's Supplemental Rules to ICANN's Uniform Domain Name Dispute Resolution Policy

Panel Decision referred to
--

Brandt, Panelist: -
 

    Domain name: avidia.com. 
    Domain name registrar: Network Solutions. 
    Domain name registrant: Michael Centrella. 
    Date of domain registration: April 15, 1999. 

Summary

This domain name dispute was heard by the three undersigned Arbitrators on April 19, 2000 pursuant to the ICANN Uniform Domain Name Dispute Resolution Policy upon the written submissions of the parties. The Complainant is represented by Lee Pederson, D’Alessandro & Ritchie, 1731 Technology Drive, Suite 700, San Jose, CA 95110, Phone: 408-441-1100 x110; Fax: 408-441-8440; e-mail: [email protected]. The Respondent is
represented by Thomas A. Hargett, 7351 Shadeland Station Way, Suite 190, Indianapolis, IN 46246-3927, Phone: 317-598-2040, Fax: 317-598-2050. 

The Arbitrators did not consider the late filed papers filed by both parties. 

The Arbitrators find in favor of the Complainant. 

Findings

The Complainant is the successor to Avidia Systems, Inc., a seller of communications equipment. The Complainant is the owner of four trademarks that include the word "AVIDIA," AVIDIA, AVIDIA SYSTEMS, AVIDIAWARE, AND AVIDIA IQ. 

The Respondent was employed by Avidia Systems as vice president of sales. He left his employment in May 1997 or May 1998, depending on which version is accurate. The
Complainant registered the domain name avidia.com, but the registration lapsed. The Complainant alleges that it lapsed in April, 1999 and suspects that the Respondent took steps to prevent the Complainant from receiving notice of lack of renewal and imminent lapse. The Respondent states that the registration lapsed in July, 1998 and denies that played any role in it. In any event, the Respondent registered the domain name in April, 1999, the same month the Complainant says the registration lapsed.

According to the Complainant, the Respondent offered to sell the domain name for $100,000. The Respondent’s final "demand," as his attorney termed it, was for $35,000. 

Conclusions

The domain name registered by the Respondent, avidia.com, is identical to the trademarks in which the Complainant has rights. The Respondent has no rights or no legitimate interests in the domain name. He has no relationship to the Complainant,
other than being a former officer of the Complainant’s predecessor, Avidia Systems. His asserted intended use of the domain name - an alumni site for former Avidia employees - is not a legitimate use of the domain name that uses the Complainant’s trademarked names. It is apparent that the Complainant is merely attempting to take advantage of the lapse in the Complainant’s registration, which he himself may have caused or contributed to, for the primary purpose of selling it to the Complainant, the owner of the trademarks. His "demand" for an exorbitant sum speaks for itself. 

Decision

The domain name avidia.com is transferred from the Respondent to the Complainant. 

___________________ ___________________
_______________________

Robert S. Brandt M. Scott Donahey Jeffrey M. Samuels

Arbitrator Arbitrator Arbitrator

Panel Chair
 
 

Date: April 19, 2000
 

M. Scott Donahey, concurring:

I would not receive or consider the Reply filed by the Complainant or the Supplemental Response filed by the Respondent for the reasons stated in J.P. Morgan v. Resource
Marketing, ICANN Case No. D2000-0035. I concur in the result for the following reasons.

First, the facts that Respondent has made no bona fide use of the domain name since its registration some twelve months ago, nor has produced any evidence of expenditures made in preparation for such use demonstrate that Respondent has no rights or legitimate interests in respect of the domain name at issue. Policy,  4(a)(ii); Barney’s Inc. v. BNX Bulleting Board, ICANN Case No. D2000-0059. Respondent, a former employee of Complainant, stated that it is his intention to establish "an AVIDIA alumni-site for former AVIDIA employees to communicate, network, brainstorm and to promote their new companies. Response, at 1-2. Such an intention does not create rights or legitimate interests in respect of the domain name at issue. The Panel can conceive of any number of domain names that could be used for this purpose, many being more descriptive of the intended purpose. Compagnie de Saint Gobain v. Com-Union Corp., ICANN Case No. D2000-0020. Finally, the fact that Respondent has both constructive, and, as a former employee, actual notice of Complainant’s use of the mark, Respondent cannot show any
rights or legitimate interests in respect of the domain name at issue. Cellular One v. Brien, ICANN Case No. D2000-0028.

Since the Complainant has established that the Second Level Domain name is identical to a mark in which Complainant has rights (Policy,  4(a)(i)), and that Respondent has registered and is using the domain name at issue in bad faith (Policy  4(a)(iii) and 4(b)(i); World Wrestling Federation v. Bosman, ICANN Case No. D99-0001), Complainant has established all the elements required under  4(a) of the Policy and is entitled to have the domain name at issue transferred to it.