Haas Automation, Inc. v. Neal McKean / Machineworks
Claim Number: FA1403001546449
Complainant is Haas Automation, Inc. (“Complainant”), represented by Farah P. Bhatti of Buchalter Nemer, California, USA. Respondent is Neal McKean (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <haasused.com>, <usedhass.com>, and <usedhaas.info>, 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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 3, 2014; the National Arbitration Forum received payment on March 4, 2014.
On March 3, 2014, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <haasused.com>, <usedhass.com>, and <usedhaas.info> 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 5, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 2014 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@haasused.com, postmaster@usedhass.com, postmaster@usedhaas.info. Also on March 5, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 31, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho-Hyun Nahm, Esq. 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
i. Complainant, Haas Automation, Inc., owns the HAAS mark, which has been associated with computer numerally controlled (or CNC machines) and machine tools for over thirty-one years.
ii. Complainant is the owner of the HAAS mark, which it has registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,573,776, filed November 3, 2000, registered May 28, 2002). Complainant has adopted and has continuously used in commerce the HAAS marks in connection with machine tools and services related thereto.
iii. The domain names are confusingly similar to Complainant’s HAAS mark.
i. Respondent has no rights or legitimate interest in the domain names.
ii. Respondent is not commonly known by the disputed domain names.
iii. Respondent is using the domain names to divert Internet traffic from Complainant’s website.
i. The domain name was registered in bad faith.
ii. Complainant previously filed 2 UDRP complaints against Respondent.
iii. Respondent’s intention was to use the domain names to redirect Internet users to a commercial website where Respondent would sell used HAAS machines.
iv. Respondent was clearly aware of Complainant’s marks.
B. Respondent
1. Respondent failed to submit a Response in this proceeding. The Panel notes that the disputed domain names were registered on the following dates:
i. <haasused.com> on March 17, 2000;
ii. <usedhass.com> on April 30, 2013;
iii. <usedhaas.info> on October 20, 2001.
Complainant established that it had rights in the mark contained in the disputed domain names. Respondent has no rights to or legitimate interests in the disputed domain names.
Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain names in bad faith.
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 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.
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.”).
Complainant asserts that it owns the HAAS mark, which has been associated with computer numerically controlled (or CNC machines) and machine tools for over thirty-one years. Complainant contends that it is the owner of the HAAS mark, which it has registered with the USPTO (Reg. No. 2,573,776, filed November 3, 2000, registered May 28, 2002). See Complainant’s Exhibit 6. The Panel notes that Respondent resides within the United States. Therefore, the Panel holds that Complainant’s filing and registration of the HAAS mark with the USPTO shows rights in the mark pursuant to Policy ¶ 4(a)(i). See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). However, the Panel notes that Respondent registered the <haasused.com> domain name on March 17, 2000, before Complainant’s filing of the HAAS mark on November 3, 2000. The Panel determines that a valid trademark registration is not necessary to show rights in a mark, so long as Complainant can show secondary meaning in the mark, proving common law rights in the mark under Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant alleges that it has adopted and has continuously used the HAAS mark in commerce since 1983. Complainant argues that it considers itself a global leader in the production and manufacturing of machine tools, mills, and related services. Complainant claims that it is the largest CNC machine tool builder in the Western world. Complainant asserts that, due to its success in the industry and amongst its competitors, Complainant has achieved international recognition in the field of CNC machine tools and related services and has acquired distinctiveness in the mark. In Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010), the panel held that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999. As the Panel finds that Respondent’s continuous use of the HAAS mark shows secondary meaning in the mark, the Panel finds that Complainant has common law rights in the HAAS mark under Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <haasused.com>, <usedhass.com>, and <usedhaas.info> domain names are confusingly similar to Complainant’s HAAS mark. Complainant argues that Respondent has added the generic term “used” either as a prefix or a suffix to Complainant’s HAAS mark. The Panel finds that Respondent’s addition of a generic term is inconsequential to a Policy ¶ 4(a)(i) determination. See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark). Complainant contends that Respondent misspells the HAAS mark in the <usedhass.com> domain name, where it replaces the letter “a” with the letter “s.” The Panel determines that Respondent’s substitution of letters in Complainant’s mark does not distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i). See Victoria’s Secret et al v. Atchinson Investments Ltd., FA 96464 (Nat. Arb. Forum Feb. 27, 2001) (finding <victoriassecreats.com> confusingly similar as a misspelling of the VICTORIA’S SECRET mark; the “additions of the letters “a” and “s” do not circumvent the Complainant’s rights in the mark nor avoid the confusing similarity aspect under Policy 4(a)(i)”). Finally, the Panel observes that Respondent adds the generic top-level domain (“gTLD”) “.com” or “.info” to Complainant’s mark in the disputed domain names. The Panel concludes that Respondent’s inclusion of a gTLD to Complainant’s HAAS mark does nothing to differentiate the domain names from the mark under Policy ¶ 4(a)(i). See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant). Accordingly, the Panel determines that Respondent’s <haasused.com>, <usedhass.com>, and <usedhaas.info> domain names are confusingly similar to Complainant’s HAAS mark according to Policy ¶ 4(a)(i).
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.”).
Complainant asserts that Respondent is not commonly known by the <haasused.com>, <usedhass.com>, and <usedhaas.info> domain names. Complainant argues that it has not consented to Respondent’s use of the mark in the disputed domain names. Complainant claims that the domain names are not owned, affiliated with, or endorsed by Complainant. Complainant argues that Respondent is neither affiliated with, nor has it been licensed or permitted to use Complainant’ HAAS mark or any domain name incorporating the mark. The Panel notes that the registrant of the disputed domain names is identified as “Neal McKean / Machineworks” in the WHOIS record. See Complainant’s Exhibit 4. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that respondent was commonly known by the domain names, and complainant had not authorized respondent to register a domain name containing its registered mark. Thus, the Panel determines that Respondent is not commonly known under the <haasused.com>, <usedhass.com>, and <usedhaas.info> domain names according to Policy ¶ 4(c)(ii).
Complainant claims that Respondent is using the <haasused.com>, <usedhass.com>, and <usedhaas.info> domain names to divert Internet traffic from Complainant’s website <haascnc.com>. The Panel notes that Respondent is using the disputed domain names to resolve to competing websites, offering a similar service to Complainant. See Complainant’s Exhibit 8. Complainant contends that Respondent has the intention of using the disputed domain names to sell the products of Complainant. Complainant also argues that Respondent is using the disputed domain names to try to steal customers from Complainant. Previous UDRP panels have held that a respondent’s use of the disputed domain name to resolve to a website offering a competing service or to sell a complainant’s products is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); 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.”). Thus, the Panel finds that Respondent is not using the <haasused.com>, <usedhass.com>, and <usedhaas.info> domain names for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant contends that it previously filed 2 UDRP complaints against Respondent. See Haas Automation, Inc. v. Machineworks Inc. c/o WMT Machine Tools, FA 305,251 (Nat. Arb. Forum Apr. 7, 2010) and (Haas Automation, Inc. v. Imachinetools.com/Neal McKean, FA 393,128 (Nat. Arb. Forum July 15, 2011). In Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007), the panel held that prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations. Accordingly, the Panel finds that Respondent’s prior UDRP proceedings in which it lost domain names to Complainant demonstrates a pattern of bad faith registration, showing bad faith under Policy ¶ 4(b)(ii).
Complainant asserts that Respondent’s intention was to use the <haasused.com>, <usedhass.com>, and <usedhaas.info> domain names to redirect Internet users to a commercial website where Respondent would sell used HAAS machines. The Panel observes that Respondent’s disputed domain names link to webpages that appear to sell machine tools, which is a service similar to that of Complainant. Additionally, Complainant asserts that Respondent’s intention was to use the domain names to sell HAAS machines. The Panel notes that Respondent may profit from its use of the disputed domain names. Past UDRP panels have found that a respondent’s use of a disputed domain name to either offer a competing services or sell a complainant’s products misled and diverted consumers, showing bad faith under Policy ¶ 4(b)(iv). See 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); see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products). Accordingly, as the Panel finds that Respondent registered the <haasused.com>, <usedhass.com>, and <usedhaas.info> domain names with the intention of attracting and misleading Internet users away from Complainant and to Respondent for commercial gain shows bad faith use and registration according to Policy ¶ 4(b)(iv).
Complainant claims that Respondent was clearly aware of Complainant’s HAAS mark. Complainant argues that Respondent was using the disputed domain names to sell HAAS products and included the statement “<usedhaas.info> is not affiliated with Haas Automation, Inc.” and also included a link to Complainant’s website. See Complainant’s Exhibit 9. Complainant asserts that such statements made by Respondent and the inclusion of the link to Complainant featured on Respondent’s website shows that Respondent was actually aware of Complainant’s HAAS mark. Accordingly, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <haasused.com>, <usedhass.com>, and <usedhaas.info> domain names be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: April 9, 2014
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