Haas Automation, Inc. v. Paul Zimmer / Machinery Marketing International, LLC
Claim Number: FA1502001602918
Complainant is Haas Automation, Inc. (“Complainant”), represented by Farah P. Bhatti of Baker & Hostetler LLP, California, USA. Respondent is Paul Zimmer / Machinery Marketing International, LLC (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <haasauction.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 2, 2015; the Forum received payment on February 3, 2015.
On February 2, 2015, GODADDY.COM, LLC confirmed by e-mail to the Forum that the <haasauction.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 February 4, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 2015 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@haasauction.com. Also on February 4, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 2, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant owns the HAAS mark through its trademark registration of such mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,573,776, registered May 28, 2002).
Complainant uses the HAAS mark in connection with computer numerically controlled and machine tools.
The <haasauction.com> domain name is confusingly similar to Complainant’s HAAS mark because Respondent has simply added the generic term “auction” to the mark.
Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the <haasauction.com> domain name. Respondent is neither licensed nor authorized to use the HAAS mark. Respondent has not provided any bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent uses the disputed domain name to auction off Complainant’s own goods or products that directly compete with Complainant.
Respondent uses the disputed domain name to redirect Internet users to its own website where it auctions off Complainant’s own goods and goods of Complainant’s competitors. Respondent clearly profits off such a use. Due to the well-known status of Complainant’s marks and the fact that Respondent prominently displays Complainant’s logos throughout its website, it is inconceivable that Respondent registered the disputed domain name without either actual or constructive knowledge of Complainant’s rights in the HAAS mark.
B. Respondent
Respondent failed to submit a formal Response in this proceeding, but instead responded via an email to the arbitration provider stating:
We do not intend to renew this domain, which expires on March 29, 2015, and do not plan to attempt to keep this domain. We hope this eliminates the need for arbitration or carrying out a hearing.
Complainant has rights in the HAAS mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain name to address a website where Complainant’s own goods, and goods of Complainant’s competitors, are auctioned.
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 substantive 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.”).
As a preliminary matter, the Panel finds Respondent’s email response to be irrelevant to the proceeding as it is neither a rebuttal of the allegations made by Complainant, nor Respondent’s express or implied unequivocal consent to allow the domain name to be transferred to Complainant; the email response merely announces Respondent’s future intent with regard to the <haasauction.com> domain name.
The at-issue domain names are each confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its HAAS mark with the USPTO establishes Complainant’s rights in such mark for the purposes of Policy 4(a)(i).See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
In forming the at-issue domain name Respondent adds the descriptive term “auction” to Complainant’s trademark and then appends the top-level domain name “.com” to the resulting string. The domain name’s differences from Complainant’s HAAS trademark are insufficient to distinguish the at-issue domain name from Complainant’s trademark for the purposes of the Policy. Indeed, the use of the suggestive term “auction” in the domain name adds to any confusion between the two. Therefore, the Panel finds that the <haasauction.com> domain name is confusingly similar to Complainant’s HAAS mark. See Disney Enterprises, Inc. v. na a/k/a Garret Hodson (NAF 0158165 July 1, 2003) (finding that the term “auction” is descriptive and when combined with Complainant’s trademark will cause consumers to believe that there is an affiliation between Complainant and Respondent where no such relationship exists); see also, Mead Johnson & Company, LLC v. Chau, FA 1497581 (Nat. Arb. Forum Jun. 18, 2013) (concluding that the addition of the generic term “coupons” and a gTLD did not remove the disputed domain name from the realm of confusing similarity).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “Paul Zimmer” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <haasauction.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent uses the at-issue domain name to auction off Complainant’s own goods and the goods of Complainant’s competitors. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant).
Given the forgoing and considering Respondent’s failure to submit any evidence supporting its having rights or interests in respect of the domain name, Complainant satisfies its initial burden under Policy ¶4(a)(ii) and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the <haasauction.com> domain name.
The domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
First as mentioned above Respondent uses the at-issue domain name to address a website that auctions off Complainant’s goods as well as those of Complainant’s competitors. Using the domain name in this manner disrupts Complainant’s business and demonstrates Respondent’s bad faith registration and use of the domain name 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).”).
Additionally, Respondent’s use of the domain name is intended to attract Internet users to its <haasauction.com> website for commercial gain. Again as mentioned above, Respondent is operating an auction website where it markets Complainant’s products and the products of Complainant’s competitors. Respondent exploits, and thereby profits from, the augmented Internet traffic it receives from Internet users seeking Complainant who inadvertently land on Respondent’s <haasauction.com> website or who upon landing erroneously believe that the website is affiliated with, or sponsored by, Complainant. Such deceptive use of Complainant’s trademark demonstrates bad faith under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Respondent registered the <haasauction.com> domain name knowing that Complainant had trademark rights in the HAAS mark. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark, from Respondent’s use of the suggestive term “auction” in forming the at-issue domain name and from Respondent’s use of Complainant’s logos on its <haasauction.com> website. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain name precisely to improperly exploit its trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademark further indicates that Respondent registered and used the <haasauction.com> domain name in bad faith pursuant to 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 had "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 <haasauction.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: March 4, 2015
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