Haas Automation, Inc. v. Machineworks Inc c/o WMT Machine Tools
Claim Number: FA1001001305251
Complainant is Haas Automation, Inc. (“Complainant”), represented by Farah
P. Bhatti, of Buchalter Nemer,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain name at issue is <usedhaas.com> and <usedhaascnc.com>, registered with Enom, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 27, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 28, 2010.
On January 28, 2010, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <usedhaas.com> and < usedhaascnc.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 February 3, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 23, 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@usedhaas.com, and postmaster@usedhaascnc.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 24, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <usedhaas.com> and <usedhaascnc.com> domain names are confusingly similar to Complainant’s HAAS mark.
2. Respondent does not have any rights or legitimate interests in the <usedhaas.com> and <usedhaascnc.com> domain names.
3. Respondent registered and used the <usedhaas.com> and <usedhaascnc.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Haas Automation, Inc., has registered its HAAS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,573,776 issued May 28, 2002; filed November 3, 2000). Complainant has used its mark in commerce since July 7, 1983, in connection with power tools, both vertical and horizontal drilling and milling machines, and lathes. Complainant uses the mark in connection with computer numerically controlled machines and services related to them. Complainant operates a website <haascnc.com> where it markets and sells new and used HAAS machines.
Respondent, Machineworks Inc c/o WMT Machine Tools, registered the disputed domain name <usedhaas.com> September 20, 1999, and disputed domain name <usedhaascnc.com> September 21, 1999. The disputed domain names resolve to websites which sell Complainant’s used or pre-owned machine tools, unrelated to the Complainant.
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 asserts it has rights in its HAAS mark due to its registration with the USPTO (Reg. No. 2,573,776 issued May 28, 2002; filed November 3, 2000). The Panel finds that Complainant’s registrations of its HAAS mark with the USPTO is sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO).
Although Complainant has rights in its HAAS mark due to registration with the USPTO, Respondent’s registration of the disputed domain names was in September 1999, thereby pre-dating Complainant’s rights through trademark registration. However, the Panel finds that Complainant has common law rights in its HAAS mark dating back to 1983.
Complainant asserts it has common law rights in its HAAS mark
through its continuous use in commerce since July 7, 1983, in connection with
power tools, both vertical and horizontal drilling and milling machines, and
lathes. Complainant uses the mark in connection with computer numerically
controlled machines and services related to them. The Panel finds Complainant
has provided sufficient evidence of its continuous use and acquired secondary
meaning in the HAAS mark to establish common law rights in the mark under Policy
¶ 4(a)(i) dating back to 1983. See
Respondent’s <usedhaas.com> and <usedhaascnc.com> domain names are confusingly similar to Complainant’s HAAS mark because Respondent’s domain names incorporate the dominant feature of Complainant’s mark, adds the generic term “used” and the generic abbreviation “CDC” which stands for the types of machines produced by Complainant, computer-numerically-controlled machines. Both disputed domain names also add the generic top-level domain “.com.” The Panel finds that such minor alterations to Complainant’s registered mark do not negate the confusingly similar aspects of Respondent’s disputed domain names pursuant to Policy ¶ 4(a)(i). See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also SEMCO Prods., LLC v. dmg world media (uk) ltd, FA 913881 (Nat. Arb. Forum Apr. 9, 2007) (finding that the <atlhomeshow.com> domain name was confusingly similar to the complainant’s ATLANTA HOME SHOW mark, as “atl” was a common abbreviation for the city of Atlanta).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. Once Complainant has made a prima facie case in support of these allegations, the burden to establish that it has rights or legitimate interests in the disputed domain names shifts to the Respondent pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has established a prima facie case in support of its Complaint, shifting the burden to the Respondent. In light of Respondent’s failure to respond to the proceedings, the Panel will proceed to analyze the record in light of Policy ¶ 4(c). See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuan to paragraph 4 (a)(ii) of the Policy.”); see also G.D. Searle v Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy 4(a)(ii).”)
The WHOIS information for the <usedhaas.com> and <usedhaascnc.com> domain names lists “Machineworks Inc c/o WMT Machine Tools” as the registrant. Complainant asserts Respondent is not licensed or otherwise authorized to use the HAAS mark. Without affirmative evidence, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
The disputed domain names resolve to websites that purportedly offer pre-owned and used versions of Complainant’s products. The Panel finds that Respondent’s use of the <usedhaas.com> and <usedhaascnc.com> domain names are not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a making legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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 also Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”).
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
Complainant contends Respondent is using the disputed domain names to allegedly market Complainant’s used and pre-owned goods in competition with Complainant. The Panel finds Respondent’s registration and use of the <usedhaas.com> and <usedhaascnc.com> domain names to operate a website in direct competition with Complainant constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use pursuant to Policy ¶ 4 (b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Complainant contends Internet users, searching for
Complainant’s products, may become confused as to Complainant’s sponsorship or
affiliation with the disputed domain names and resolving websites. Respondent allegedly
attempts to profit from this confusion through its product sales. Therefore,
the Panel finds Respondent’s use of the <usedhaas.com>
and
<usedhaascnc.com> domain names constitutes bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)
(finding that the respondent’s use of the <saflock.com> domain name to
offer goods competing with the complainant’s illustrates the respondent’s bad
faith registration and use of the domain name, evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv)); see also Luck's Music Library v. Stellar Artist Mgmt.,
FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged
in bad faith use and registration by using domain names that were identical or
confusingly similar to the complainant’s mark to redirect users to a website
that offered services similar to those offered by the complainant); see also State Fair of
The Panel finds Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <usedhaas.com> and <usedhaascnc.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr., Panelist
Dated: April 7, 2010
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