Haas Automation, Inc. v. Ling Gao
Claim Number: FA1703001721807
Complainant is Haas Automation, Inc. (“Complainant”), represented by Farah P. Bhatti of Buchalter Nemer, California, USA. Respondent is Ling Gao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gdhaascnc.com>, registered with Xiamen Domains, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 15, 2017; the Forum received payment on March 15, 2017.
On April 3, 2017, Xiamen Domains, Inc. confirmed by e-mail to the Forum that the <gdhaascnc.com> domain name is registered with Xiamen Domains, Inc. and that Respondent is the current registrant of the name. Xiamen Domains, Inc. has verified that Respondent is bound by the Xiamen Domains, 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 23, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 12, 2017 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@gdhaascnc.com. Also on March 23, 2017, 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 April 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in HAAS. Complainant holds a national registration for that trademark. Complainant submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because it has no trademark rights; is not known by the same name; and the domain name has not been used other than for a nefarious purpose.
Complainant alleges that Respondent registered the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the HAAS mark in connection with the sale of machine tools and their parts;
2. Complainant owns United States Patent and Trademark Office (“USPTO”) Reg. No. 4,583,627, registered August 12, 2014 for the word mark, HAAS;
3. the disputed domain name was registered on September 11, 2016;
4. the domain name resolves to a webpage intended to infect an Internet user’s computer with malicious software; and
5. there is no relationship between the parties and Complainant has not authorised Respondent to use the trademark or to register any domain name incorporating the trademark.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)). Complainant therefore has rights since it provides proof of its registration with the USPTO, a national trademark authority.
For the purposes of comparison of the disputed domain name with the trademark the gTLD, “.com”, can be disregarded (see, for example, Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names.”)).
The comparison then reduces to the term, gdhaascnc, with the trademark, HAAS. There is little objective resemblance between those terms. One is likely to be perceived as family name, perhaps Dutch or German; the other an unpronounceable cacophony of letters.
However, the question is whether gdhaascnc is confusingly similar to the trademark. That requires consideration, not simply of the terms compared side-by-side, but also of the nature of the additional matter which may or may not distinguish one term from the other.
Therein lies one of the enduring issues facing UDRP panelists since an unresolved debate exists as to whether the assessment of confusing similarity under paragraph 4(a)(i) of the Policy should take into account a complainant’s reputation in its trademark.
In this case it is Complainant’s submission that what has been added to the trademark is non-distinctive since it is (i) a geographical indicator, and (ii) a generic term. In particular, it is said that the letters “GD” are an abbreviation for Guangdong Province, China, and that “CNC” is an abbreviation for Computerized Numerical Control, a system of instructions for machine tools. Complainant states that it specializes in CNC controlled tools and has offered same for the past 20 years via its website at www.haascnc.com.
The Complaint does not provide any evidence that the letters “GD” are an abbreviation for Guangdong Province. Instead, it relies upon earlier UDRP cases which have held that to be so (see, for example, Assab Pacific Pte. Ltd. v. Zhang Qiangb, HK 1600892 (ADNDRC December 16, 2016); BASF SE v. Liu Jialiang, D2016-1843 (WIPO November 17, 2016); LEGO Juris A/S v. Mcconnell, Linda, D2013-1794 (WIPO December 19, 2013) Aktiebolaget Electrolux v. Linsheng, D2013-1221 (WIPO September 27, 2013)).
Whilst decisions under the UDRP do not follow a strict system of precedent, absent a Response or any contradictory evidence the Panel is satisfied of this claim and so treats the addition of the letters “GD” to the trademark to be non-distinctive and in fact liable to create confusion (see, for example, Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015) finding that as “the ‘usa’ portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.”).
The submission that Internet users would perceive the letters “CNC” as an abbreviation for “Computerized Numerical Control” rather than any other of the myriad expressions those letters might signify rests on Complainant’s unproven claim to reputation as a leader in the field of CNC tools and its promotion and sale of such goods through its website at www.haascnc.com for the past 20 years.
Had a common law reputation in HAAS been proven by the Complainant, then it follows that the letters “CNC” would be understood in the sense claimed and should be regarded as a trivial addition to the trademark.
In short, recognition of Complainant’s reputation in the goods it has sold under the trademark provides a context for the abbreviation “CNC” (and “GD” it should be noted) in which those added terms are of no distinguishing value (see, for example, Thomson Reuters Global Resources v. Richard Marsh / intach / Steven Szybillo / intach / Michael Wilczynski / intach / Gary Clarke / intach / James Saunders / intach / Paul Randolph/ intach / John Geisler / intach, FA 1516146 (Forum Oct. 2, 2013) where the disputed domain names took the complainant’s THOMSON REUTERS mark and added the terms, “scie”, “ahci”, “sci” or “ssci.” The panel in that case stated that “[E]ach of these added terms constitutes an abbreviation of Complainant’s SCIENCE CITATION INDEX EXPANDED, ARTS & HUMANITIES CITATION INDEX, SCIENCE CITATION INDEX, or SOCIAL SCIENCES CITATION INDEX marks,” and held the disputed names to be confusingly similar to the mark under Policy ¶ 4(a)(i)).
This uncontested case is not the place to revisit the larger question of whether reputation plays a part in the assessment of confusing similarity under this aspect of the Policy. The Panel finds that the additions made to the trademark by the domain name do not distinguish the domain name from the trademark; if anything, they compound the likely confusion. Panel finds the terms confusingly similar and therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
The publicly available WhoIs information lists “Ling Gao” as the domain name registrant and so there is nothing that might suggest that Respondent is commonly known by the domain name. There is no evidence that Respondent has any trademark rights and Complainant states that there is no association between the parties.
Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use of the domain name. Complainant provides evidence that the resolving website is used to send harmful software to an Internet user’s computer. There is no other use of the domain name.
A prima facie case has been made (see, for example, Google Inc. v. Gridasov, FA 474816 (Forum July 5, 2005) finding that respondent’s use of a disputed domain name “that attempts to download malicious computer software into the computers of those who visit the website . . . [which] may annoy or harm the users in some way . . . is harmful to Complainant as the users may assume that Complainant has some affiliation with the harmful content. Such use of a website that is presumably intended to jeopardize the goodwill Complainant has created in its mark is not, therefore, a use in connection with a bona fide offering of goods or services or a legitimate or fair use of the domain names pursuant to Policy ¶¶ 4(c)(i) or (iii).”).
The onus shifts to Respondent and in the absence of a Response, Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Complainant argues for the application of paragraph 4(b)(iv) but there is no evidence as to how Respondent might benefit commercially from its behavior. Panel finds paragraph 4(b)(iv) inapt.
Instead, Panel finds evidence of bad faith registration and bad faith use. The bad faith use is manifest. Bad faith registration can reasonably be inferred. Although Complainant has not gone so far as to prove a common law reputation (see discussion above), the evidence as a whole points to Respondent having targeted Complainant’s trademark and the domain name registered in the knowledge of that trademark.
Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gdhaascnc.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: April 26, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page