national arbitration forum

 

DECISION

 

Haas Automation, Inc. v. Rodney Baker

Claim Number: FA1409001578667

PARTIES

Complainant is Haas Automation, Inc. (“Complainant”), represented by Farah P. Bhatti of Baker & Hostetler LLP, California, USA.  Respondent is Rodney Baker (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <usedhaasparts.com>, registered with GoDaddy.com, LLC.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.[1]

Jeffrey M. Samuels, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 8, 2014; the National Arbitration Forum received payment on September 9, 2014.

 

On September 8, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <usedhaasparts.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name.  GODADDY.COM, LLC has verified that Respondent is bound by the GODADDY.COM, LLC 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 September 10, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 30, 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@usedhaasparts.com.  Also on September 10, 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.

 

A timely Response was received and determined to be complete on September 10, 2014.

 

Complainant submitted an Additional Submission which was received and found compliant on September 16, 2014.

 

On September16, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jeffrey M. Samuels 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant Haas Automation is a global leader in the production and manufacture of computer numerically controlled (CNC) machines, machine tools, mills, and related services.  Complainant owns a number of U.S. trademark registrations for marks that incorporate the term HAAS, including HAAS AUTOMATION (Reg. No. 2573775) and HAAS FACTORY OUTLET (Reg. No. 3533101), as used on or in connection with its goods and/or services since at least as early as 1983.  See Complaint, Exhibit 7.  Complainant also owns the domain name haasparts.com, which was first registered in December 1999, and the domain name haascnc.com, which was first registered in 2001.

 

Complainant contends that the disputed domain name, usedhassparts.com, is confusingly similar to its HAAS mark.  It notes that the domain name incorporates the mark in its entirety and that the addition of the generic terms “used” and “parts,” which describe the goods, “is clearly an attempt to create a likelihood of confusion with Complainant’s marks….”

 

Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant points out that the disputed domain name was registered on February 14, 2014, and resolves to a site featuring sponsored links that direct users to third-party commercial sites offering goods that directly compete with Complainant’s goods.  See Complaint, Exhibit 5.  Complainant points out that it has not consented to Respondent’s use of the domain name and that the use of the disputed domain name to run click-through links or to redirect users to sponsored websites does not qualify as a bona fide offering of goods and services.  On information and belief, Complainant further maintains that Respondent is not commonly known by the domain name and “that the sole reason Respondent has chosen the usedhaasparts.com domain name is to trade off the reputation and goodwill associated with Complainant’s HAAS mark and haaascnc.com and haasparts.com domain names and to misleadingly divert Internet traffic from Complainant’s website to Respondent’s website for commercial gain.”

 

With respect to the issue of “bad faith” registration and use, Complainant notes that Respondent is the owner of a business that sells new and used CNC machines and “[t]herefore, it is obvious that Respondent registered the usedhaasparts.com [domain name] in bad faith as Respondent’s business clearly deals with new and used CNC machines and parts therefor.”

 

Complainant asserts that Respondent registered the domain name with the intent to attract users to its website for commercial gain by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of Respondent’s website, thereby misleadingly diverting Internet traffic from Complainant’s website to Respondent’s website for commercial gain.  Complainant contends that “[i]t is inconceivable that Respondent was not aware of Complainant’s trademark HAAS when Respondent registered the Domain Name.  Respondent is in the business of selling new and used CNC machinery and sells Complainant’s machines on its website.” See Complaint, Exhibit 10.

 

B. Respondent

In his Response, Respondent contends that the disputed domain name is not presently being used and “it is not and has not been used to pass through to other sites.”  Respondent further indicates that “Haas does not deal in used parts so by using www.usedhaasparts.com should do absolutely no harm to them but possible help them with more exposure.”  Respondent asserts that he purchased the disputed domain in anticipation of using it in the future when he accumulated enough Haas parts that Haas users cannot buy from Haas.  Respondent notes that he also offered to sell Complainant the disputed domain name “for what I have into it” but that such offer was declined.  “If [Complainant] is willing to pay me for what I have in it along with what GoDaddy charged me for this dispute I have no problem in releasing it.”

 

C. Additional Submissions

In its Additional Submission of September 11, 2014, Complainant asserts that the evidence demonstrates that the disputed domain name resolves to a website that features sponsored links to several other sites, including those of Complainant’s competitors, and that Respondent had the option of terminating the parked page service at any time.  Lastly, Complainant contends that the terms offered by Respondent for transfer of the domain name (e.g., payment of registration fees plus “what [Respondent has] in it”) is evidence of the registration and use of a domain name in bad faith.

 

In an email dated September 16, 2014, Respondent asserts that “[f]or less than $100 we could have avoided all this mess and I would have gladly signed over the www.usedhaasparts.com for what I have into it….”

 

FINDINGS

 

The Panel finds that: (1) the disputed domain name, usedhaasparts.com, is confusingly similar to the mark HAAS and that Complainant has rights to such mark; (2) Respondent has no rights or legitimate interests in the disputed domain name; and (3) the domain name was registered and is being used in bad faith.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The Panel concludes that the disputed domain name, <usedhaasparts.com>, is confusingly similar to the HAAS mark.  The domain name incorporates in full the HAAS mark and the addition of the non-distinctive terms “used” and “parts” does not eliminate the similarity between the mark and the domain name.  See Haas Automation, Inc. v. Machinesworks Inc. c/o WMT Machine Tools, FA 1305251 (Nat. Arb. Forum April 7, 2010) (finding that inclusion of terms “used” and “CNC” to haas in domain name is minor alteration to registered HAAS mark and does not negate the confusingly similar aspect of respondent’s domain name).

 

The Panel further determines that Complainant, through its use and registration of various HAAS-related trademarks, has rights in the HAAS mark. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).

 

Rights or Legitimate Interests

 

The Panel holds that Complainant has sustained its burden of establishing that Respondent has no rights or legitimate interests in the subject domain name.  The evidence clearly establishes that the disputed domain name resolves to a website that features sponsored links to sites that sell goods in competition with that offered for sale by Complainant.   Absent evidence to the contrary, the Panel presumes that revenue is generated every time an Internet user clicks on a sponsored link.  See Victoria’s Secret Stores Brand Management, Inc. v. PabloPalermao , FA 1192651 (Nat. Arb. Forum July 9, 2008).  Such use of a domain name does not constitute bona fide use of a domain name in connection with the offering of goods and/or services.  See, e.g., Homer TLC, Inc. v. Corneliu Ioan, FA 1563639 (Nat. Arb. Forum July 14, 2014 (finding that operation of pay-per-click site at confusingly similar domain name is not a bona fide offering of goods or services or a legitimate noncommercial fair use under the Policy).  There also is no evidence that Respondent is commonly known by the disputed domain name.

 

Registration and Use in Bad Faith

 

The Panel finds that the evidence establishes that the disputed domain name was registered and is being used in bad faith. In view of Complainant’s longstanding use of its HAAS mark and the nature of the parties’ respective businesses, it appears clear that Respondent was aware of Complainant and of its HAAS mark at the time it registered its confusingly similar domain name, which name resolves to a site featuring sponsored pay-per-click links to products that compete with those offered by Complainant.  As such, the Panel finds that Respondent, by using the disputed domain name, intentionally attempted to attract, for commercial gain, Internet users to his site or other on-line location by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of such site or of a product or service on such site or location, within the meaning of paragraph 4(b)(iv) of the Policy.  See Victoria’s Secret Brand Management, Inc. v. PabloPalermao, supra.

 

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 <usedhaasparts.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Jeffrey M. Samuels, Panelist

Dated:  October 2, 2014