Haas Automation, Inc. v. Machine Tools 247
Claim Number: FA1109001405779
Complainant is Haas Automation, Inc. (“Complainant”), represented by Farah P. Bhatti of Buchalter Nemer, California, USA. Respondent is Machine Tools 247 (“Respondent”), represented by John Beal, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usedhaasmachines.com>, registered with Network Solutions, LLC.
The undersigned certify that they acted independently and impartially and that to the best of their knowledge, they have no known conflict in serving as Panelist in this proceeding. Hon. Bruce E. Meyerson, Ho-Hyun Nahm, Esq., and Hon. Carolyn Marks Johnson sit as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 1, 2011; the National Arbitration Forum received payment September 6, 2011.
On September 2, 2011, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <usedhaasmachines.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC verified that Respondent is bound by the Network Solutions, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 28, 2011, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@usedhaasmachines.com. Also on September 8, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete September 28, 2011.
Complainant filed an Additional Submission October 3, 2011.
On October 5, 2011, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Bruce E. Meyerson, Ho-Hyun Nahm, Esq. and Hon. Carolyn Marks Johnson to sit as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant asserts that Respondent
1. Registered a domain name that contains Complainant’s protected mark;
2. That the Domain name is confusingly similar to Complainant’s protected mark;
3. That the Respondent has no rights to or legitimate interests in the disputed domain name; and
4. That Respondent registered and used the disputed domain name in bad faith.
B. Respondent made the following points in response:
1. Complainant seeks to protect a trade name since the HAAS trademark is in the form of a logo.
2. Respondent’s use at the disputed domain name does not reference or show Complainant’s trade or service mark.
3. By incorporating “used” and “machines,” Respondent separates its efforts from Complainant’s mark.
4. Respondent will change or remove any offending words in the domain name.
5. Respondent’s domain name is popular with customers and they request specifically that Respondent sell them used HAAS machines from Complainant.
6. Respondent has as much right as Complainant to use the terms “Used HAAS Machines” in pursuit of sales.
7. Many others use the term “Used HAAS Machines” in sales.
8. Respondent has been selling used HAAS machines for 15 years.
9. Respondent did not register the domain name in bad faith because it promotes the HAAS machines in a very positive light and thinks they make an excellent line of products.
10. Respondent has not offered the site for sale.
11. Respondent did not register the domain name to prevent Complainant from doing so.
12. Respondent has not limited Complainant’s ability to register its own site.
13. Respondent has not disrupted Complainant’s business.
14. Respondent’s site contains the disclaimer: “We are not affiliated with Haas Automation.”
15. Complainant did not demonstrate confusion in the Internet market.
C. Complainant’s Additional Submission makes the following points:
1. Complainant has used HAAS, HAAS AUTOMATION and HAAS FACTORY OUTLET in commerce since 1983.
2. Complainant’s official domain name is <haasmachines.net>.
3. Complainant previously prevailed in a domain name dispute for Respondent’s use of <haasmachines.net>.
4. Complainant also asserts common law rights in its HAAS mark.
5. Complainant owns a registration for HAAS AUTOMATION and common law rights in HAAS.
6. Respondent uses Complainant’s protected mark in its disputed domain name along with descriptive words that make it confusingly similar to and/or confusing as to the source of the goods or services.
7. Complainant’s HAAS mark is the dominant word in Respondent’s disputed domain name.
8. Complainant’s right to the HAAS mark is exclusive.
9. Respondent is diverting Internet traffic to its own site by using Complainant’s protected mark.
10. Complainant makes the goods that Respondent is selling under its own site.
11. Complainant has not licensed Respondent to use its mark.
12. Respondent used Complainant’s mark to compete directly with Complainant.
13. Respondent acted in bad faith in registering the mark of another, without permission, and in competing against Complainant using Complainant’s own mark; and in confusing those seeking to contact Complainant for Complainant’s products.
14. Respondent has not shown rights in the mark, has failed to rebut confusing similarity, has not shown any right to use Complainant’s mark, and has failed to adequately rebut bad faith.
Complainant established that it has registered trademark rights in the mark contained within the disputed domain name.
Respondent failed to show that it has a license or permission or right to use Complainant’s protected mark in a domain name or otherwise.
The disputed domain name is confusingly similar to a mark in which Complainant has exclusive protected rights.
Respondent has failed to show rights under any of the provisions of ICANN Policy.
Respondent’s conduct in registering and using a domain name that contains the protected mark of another and in using that domain name to compete with Complainant by selling Complainant’s own products under Complainant’s protected mark along with goods of Complainant’s competitors, supports findings of bad faith registration and use.
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."
Paragraph 4(a) of the Policy requires Complainant to 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 to 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 alleges that it has rights in the HAAS mark because it has numerous trademark registrations for the HAAS and related marks with the United States Patent and Trademark Office (“USPTO”), including the following:
HAAS Reg. No. 2,573,776 registered May 28, 2002;
HAAS AUTOMATION Reg. No. 2,573,775 registered May 28, 2002;
HAAS FACTORY OUTLET Reg. No. 3,514,894 registered October 14, 2008; &
HAAS FACTORY OUTLET Reg. No. 3,533,101 registered November 18, 2008.
In the past, panels have held that USPTO trademark registrations demonstrate a complainant’s rights in a mark sufficiently for Policy ¶ 4(a)(i) as seen in Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), and Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007). Based on the evidence and this precedent, the Panel finds that Complainant established rights in the HAAS mark pursuant to a Policy ¶ 4(a)(i) analysis.
Complainant contends that Respondent’s <usedhaasmachines.com> domain name is confusingly similar to Complainant’s HAAS mark because the disputed domain name couples Complainant’s mark with the generic and descriptive terms “used” and “machines” and the generic top-level domain name (“gTLD”) “.com.” In Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001), and Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005), panels found that confusing similarity continued to exist despite combining a mark with a descriptive or generic term. Panels have also repeatedly found that an attached gTLD does nothing to remove a disputed domain name from the realm of confusing similarity. See 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.”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). The Panel therefore determines that Respondent’s <usedhaasmachines.com> domain name is confusingly similar to Complainant’s HAAS mark under Policy ¶ 4(a)(i).
Respondent asserts that its <usedhaasmachines.com> domain name is not confusingly similar to Complainant’s HAAS mark because the HAAS mark is in the form of a logo and the disputed domain name, according to Respondent, does not show or refer to or use the aforementioned HAAS, in the form of a logo, HAAS AUTOMATION, and HAAS FACTORY OUTLET trade or service marks. Respondent also argues that by incorporating the words “used” and “machines” in the disputed domain name, Respondent clearly distinguishes the disputed domain name from Complainant’s mark. The Panel disagrees.
The disputed <usedhaasmachines.com> domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests:
Complainant alleges that Respondent has no rights to or legitimate interests in the disputed domain name. Complainant must make a prima facie case to support these allegations, which Complainant has done here. Once Complainant does so, the burden of proof shifts to the Respondent to show that it does have such rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) 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.”).
Complainant asserts that Respondent is not affiliated with Complainant and that Complainant has not licensed or permitted Respondent to use the HAAS mark in any domain name. Complainant alleges that Respondent is not commonly known by the <usedhaasmachines.com> domain name as the WHOIS information shows that Respondent registered the disputed domain name under the name “MachineTools 247.” The Panel finds that this WHOIS information is not nominally related to the disputed domain name and that without further information, Respondent has not shown that it is commonly known by the disputed domain name and has not shown rights or legitimate interests under a Policy ¶ 4(c)(ii) evaluation. See 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); see also 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).
Complainant contends that Respondent’s website resolving from the <usedhaasmachines.com> domain name offers HAAS machines and competing products for sale and prominently displays Complainant’s HAAS mark. In previous cases, such as Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), and Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003), panels have determined that using a disputed domain name to sell competing goods or goods similar to those offered by a complainant did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Based on the evidence and these prior findings, the Panel here finds that Respondent has not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Respondent urges that it has rights and legitimate interests in the <usedhaasmachines.com> domain name as used HAAS machines are popular with Respondent’s customers, who both buy from and sell to Respondent. Respondent alleges that it has been selling used HAAS machines for more than 15 years and that Respondent has an extensive database of customers looking to buy and sell such machines. Respondent contends that it has never received any inquiry indicating that a customer was confusing Respondent with Complainant. Respondent asserts that it has the right to use the <usedhaasmachines.com> domain name because it is in the business of buying and selling such machines, including Complainant’s HAAS brand. Respondent argues that its clientele looks to Respondent to buy and sell used HAAS machines on their behalf and that Respondent has been known throughout the manufacturing community as a reliable and creditable source for used HAAS machines. Notwithstanding these contentions by Respondent, the Panel finds no evidence that Complainant has ever permitted, licensed, or otherwise sanctioned Respondent’s use of Complainant’s protected mark in a domain name.
In addition, these parties have previously had essentially the same dispute with each other relative to an earlier disputed domain name and Complainant prevailed in that dispute. It is difficult to imagine the circumstance in which Respondent could claim rights or legitimate interests using the same tactic used by it in an earlier filing of a disputed domain name that was ordered transferred to the Complainant.
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant urges that Respondent’s <usedhaasmachines.com> domain name hosts a website that leads to an online shopping site that competes with Complainant by offering Complainant’s own products for sale, as well as those of Complainant’s competitors. Complainant asserts that this website is a way of stealing customers, which disrupts Complainant’s business and reveals bad faith registration and use according to Policy ¶ 4(b)(iii). Selling competing products, whether manufactured by a complainant or a complainant’s competitors, has consistently been found to demonstrate Policy ¶ 4(b)(iii) bad faith as seen in Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001), and G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002).
Similarly, this Panel finds that such conduct by Respondent supports findings that Respondent registered and used the <usedhaasmachines.com> domain name in bad faith, according to a Policy ¶ 4(b)(iii) analysis.
Complainant also asserts that Respondent redirects the <usedhaasmachines.com> domain name to a commercial website where Respondent purportedly sells used HAAS machines and the machines of Complainant’s competitors. Complainant alleges that Respondent registered the disputed domain name containing Complainant’s HAAS mark with the intent to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of Respondent’s website.
This Panel agrees and finds that this conduct also supports findings of bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Complainant also contends that, given the well-known status of Complainant’s mark and the fact that Respondent was previously involved in a UDRP proceeding based on its registration and use of the <haasmachines.net> domain name, Respondent had both constructive and actual knowledge of Complainant’s rights when it registered the <usedhaasmachines.com> domain name. Although constructive knowledge has not generally been held sufficient to support a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant’s mark and that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Respondent argues that the disclaimer on the resolving website asserting that Respondent is not affiliated with Complainant nullifies any claim of bad faith; however, the Panel finds that a mere disclaimer is insufficient to mitigate bad faith under Policy ¶ 4(a)(iii). See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”).
Respondent asserts that it did not register and is not using the <usedhaasmachines.com> domain name in bad faith. Respondent argues that, on the contrary, it promotes HAAS machines in a very positive light. Respondent denies that it has ever attempted or will ever attempt to sell, rent or transfer the disputed domain name to Complainant. Respondent also asserts that it did not register the disputed domain name to prevent Complainant, the trademark owner, from accurately reflecting its mark. Respondent argues that it has limited its use of Complainant’s mark on the resolving website and if Complainant wants Respondent to modify some of the verbiage or terms on the resolving website, Respondent would be willing to consider such requests. Respondent argues that Complainant has not demonstrated any disruption in its business resulting from the <usedhaasmachines.com> domain name and that Respondent’s activities have actually promoted Complainant’s business. In addition, Respondent argues that its website clearly states, “We Are Not Affiliated with Haas Automation” and that Complainant has not shown that Respondent’s resolving website has created any confusion as to the purpose or intention of the disputed domain name.
The Panel finds that despite these claims and protestations, Respondent knowingly registered and used Complainant’s protected mark in a domain name. Further, Respondent used that domain name to compete with Complainant by selling Complainant’s product along with those of Complainant’s competitors. Moreover, Respondent engaged in this same type of conduct using an earlier infringing domain name that was Ordered transferred to Complainant after a proceeding like this and Respondent then registered the instant domain name. It is difficult to see how Respondent can make the above claims to avoid a finding of bad faith.
Taking into consideration the above, the Panel finds that Respondent registered and used the disputed domain name in this case in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <usedhaasmachines.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Bruce E. Meyerson Hon. Carolyn Marks Johnson Ho Hyun Nahm, Esq.
Panelists
Dated: October 19, 2011.
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