Haas Automation, Inc. v. MachineTools 24 7
Claim Number: FA1001001304352
PARTIES
Complainant is Haas Automation, Inc. (“Complainant”), represented by Farah P. Bhatti, of Buchalter Nemer, California, USA. Respondent is MachineTools 24 7 (“Respondent”), represented by Jon Beal, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <haasmachines.net>,
registered with Godaddy.com, Inc.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on January 22, 2010; the National Arbitration Forum received a
hard copy of the Complaint on January 25, 2010.
On January 25, 2010, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <haasmachines.net>
domain name is registered with Godaddy.com, Inc. and that the Respondent is the
current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, Inc.
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On January 26, 2010, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 16, 2010 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts, and to postmaster@haasmachines.net by
e-mail.
A Response was received electronically prior to the February 16, 2010
deadline, but the Response was not received in hard copy prior to the
deadline.
Complainant’s Additional Submission was received in a timely manner
according to Supplemental Rule 7.
On February 26, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <haasmachines.net> domain name is confusingly similar to Complainant’s HAAS AUTOMATION mark.
2. Respondent does not have any rights or legitimate interests in the <haasmachines.net> domain name.
3. Respondent registered and used the <haasmachines.net> domain name in bad faith.
B. Respondent failed to submit a sufficient Response in this proceeding in that only an email version was received and that was received after the deadline to respond.
C. Additional Submissions:
Complainant filed an Additional Submission which restated its positions in the Complaint and responded to the email of Respondent which is not regarded as a proper Response by the Panel.
FINDINGS
Complainant, Haas Automation, develops, markets, and sells computer numerically controlled (“CNC”) machines, and it offers these CNC machines under its HAAS AUTOMATION mark. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office ("USPTO") for its HAAS AUTOMATION mark (e.g., Reg. No. 2,573,775 issued May 28, 2002). Respondent’s <haasmachines.net> domain name is confusingly similar to Complainant’s HAAS AUTOMATION mark. Complainant has not authorized Respondent to use the HAAS AUTOMATION mark and Respondent is not commonly known by the domain name at issue. Respondent is using the website which resolves to the domain to sell used equipment manufactured by Complainant and its competitors for profit and totally without permission of Complainant. This website therefore confuses the public as to its origin, sponsorship and connection with the Complainant. Accordingly, it clearly appears that the domain name was registered in bad faith within the meaning of the Policy.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this
Panel to “decide a complaint on the basis of the statements and documents
submitted in accordance with the Policy, these Rules and any rules and
principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove
each of the following three elements to obtain an order that a domain name
should be cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the Respondent has no rights or legitimate interests
in respect of the domain name; and
(3) the domain name has been registered and is being
used in bad faith.
Complainant’s trademark registrations with the USPTO are sufficient to establish rights in the HAAS AUTOMATION mark. A federal trademark registration is sufficient in order for a complainant to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Therefore, Complainant has developed rights in its HAAS AUTOMATION mark under Policy ¶ 4(a)(i).
Respondent’s <haasmachines.net> domain name is confusingly similar to
Complainant’s HAAS AUTOMATION mark. The
disputed domain name contains Complainant’s mark after removing the term
“automation.” The disputed domain name
adds the descriptive term “machines,” which refers to Complainant’s CNC
machines, and adds the generic top-level domain (“gTLD”) “.net.” The removal of a term from a complainant’s
mark, the addition of a generic term, and the addition of a gTLD all fail to
adequately distinguish a disputed domain name from a complainant’s mark. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000)
(finding that the domain name <asprey.com> is confusingly similar to the
complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007)
(finding confusing similarity where <kohlerbaths.com>,
the disputed domain name,
contained the complainant’s mark in its entirety adding “the descriptive term
‘baths,’ which is an obvious allusion to complainant’s business.”); see
also Jerry Damson, Inc. v.
Tex. Int’l Prop. Assocs.,
FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic
top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the
Domain Name from the mark.”). Accordingly, Respondent’s <haasmachines.net> domain name is confusingly similar to Complainant’s
HAAS AUTOMATION mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy 4(a)(i) has been satisfied.
Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii), and then
the burden shifts to Respondent to show it does have rights or legitimate
interests. See Hanna-Barbera Prods., Inc. v.
Entm’t Commentaries,
FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must
first make a prima facie case that the respondent lacks rights and
legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show
that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima
facie showing that Respondent does not have rights or legitimate interest in
the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”).
Respondent is not commonly known by the <haasmachines.net> domain
name. Respondent is not affiliated with
Complainant, and Respondent has never been licensed or permitted to use the
HAAS AUTOMATION mark or any domain names incorporating the mark. The WHOIS information lists the domain name
registrant as “Machine Tools 24 7,” which is not similar to the disputed domain
name and does not suggest that Respondent is commonly known by the disputed
domain name. A respondent is not
commonly known by a disputed domain name if the respondent has not been licensed
to use a complainant’s mark and if the WHOIS information, as well as other
information on the record, does not support a finding that the respondent is
commonly known by the disputed domain name.
See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other evidence in the record); see
also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name).
Respondent uses the <haasmachines.net> domain name to operate a website that sells Complainant’s CNC machines as well as products from Complainant’s competitors. Respondent has stated that it chose the disputed domain name to attract Internet users interested in Complainant’s machine products. Respondent’s use of a confusingly similar disputed domain name for this purpose is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The use of a disputed domain name to resolve to a website selling a complainant’s products, as well as a complainant’s competitors’ products, is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).
The Panel finds that Policy 4(a)(ii) has been satisfied.
Respondent is using the <haasmachines.net> domain name to resolve to a website selling Complainant’s CNC machines and related products. The website also sells the machines and related products of Complainant’s competitors. Internet users interested in purchasing Complainant’s CNC machines may instead purchase a CNC machine from Respondent because of Respondent’s use of the confusingly similar disputed domain name. The use of a disputed domain name for the purpose of selling competing products, including selling the complainant’s products, constitutes a disruption of the complainant’s business, which constitutes bad faith registration pursuant to Policy ¶ 4(b)(iii). See Wall v. Silva, FA 105899 (Nat. Arb. Forum Apr. 29, 2002) (finding that despite respondent’s claim that it used the <josephinewall.com> domain name, which was identical to complainant’s JOSEPHINE WALL mark, to help complainant become popular in the United States, the Panel found that the respondent’s use of the domain name to sell the complainant’s artwork in the United States constituted disruption pursuant to Policy ¶ 4(b)(iii)); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
The Panel finds that Policy 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <haasmachines.net>
domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 12, 2010
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