Haas Automation, Inc. v.
noKOutmma
Claim Number: FA1005001326071
PARTIES
Complainant is Haas Automation, Inc. (“Complainant”), represented by Farah
P. Bhatti, of Buchalter Nemer,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usedcnchaas.com>, registered with GoDaddy.com,
Inc.
PANEL
The undersigned certifies that she has acted independently and impartially
and to the best of her knowledge has no known conflict in serving as Panelist
in this proceeding.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 24, 2010.
On May 24, 2010, GoDaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <usedcnchaas.com> domain name is
registered with GoDaddy.com, Inc. and
that the Respondent is the current registrant of the name. GoDaddy.com,
Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On May 27, 2010, the Forum served
the Complaint and all Annexes, including a Written Notice of the Complaint,
setting a deadline of June 16, 2010 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@usedcnchaas.com by
e-mail. Also on May 27, 2010, 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 on June 25, 2010.
Complainant submitted an Additional Submission on June 30,
On July 1, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends the following:
1. The
disputed domain name is confusingly similar to Complainant’s marks and official
domain name.
The domain name at issue is confusingly similar to its marks and
official domain name, haascnc.com, because it incorporates Complainant’s
identical HAAS trademark and merely adds generic terms “used” and “cnc”.
2. Respondent
does not have rights or legitimate interests in the domain name at issue.
Respondent does not have rights or legitimate interests in the disputed
domain name because Complainant did not consent to Respondent’s use of the
domain name. Complainant never gave
license or authorization to Respondent to use the HAAS trademark.
Respondent is not making a legitimate, non-commercial or fair use of
the disputed domain name because he is trying to divert Complainant’s customers
to his own website.
3. The
disputed domain name was registered in bad faith.
Respondent registered the domain name to attract Internet users for
financial gain.
Respondent’s website contains Complainant’s trademark and the same
color scheme as the latter’s official website, which creates a likelihood of
confusion as to the affiliation of Respondent’s website.
The fact that Respondent’s website contains a disclaimer, stating that
he is not affiliated with Complainant, is evidence that there would be
confusion between his site and that of Complainant.
B. Respondent
Respondent contends that the following:
Because of the terms “used” and “cnc”, the disputed domain name does
not attract Complainant’s customers. Complainant sells only new CNC machines, while
Respondent sells only used Haas CNC machines.
HAAS is used only for nominal purposes in the domain name at issue, to
describe the products that Respondent is legitimately selling. This bona
fide offering of goods suggests an interest in the domain name at issue.
The disclaimer demonstrates that Respondent did not use the domain name
at issue to create a likelihood of confusion between himself and Complainant,
and did not register or use the Complainant’s HAAS mark in bad faith.
C. Additional Submissions
In response to Respondent’s submission, Complainant contends in its
Additional Submission that it does in fact sell pre-owned Haas machines and
that, because Respondent’s services relate to the sale of used Haas equipment,
Complainant and Respondent can be viewed as competitors.
Respondent’s website incorporates the same color scheme, look and feel
of Complainant’s official website.
Therefore, any disclaimer would be insufficient to dispel initial
interest or confusion, as any Internet user viewing the website would wrongly assume
that Respondent was affiliated with Complainant.
Further, Complainant contends that, under the fair use doctrine, a
reseller does not obtain the right to use another’s trademark in its domain
name where the resulting domain name would imply affiliation or sponsorship
between the trademark owner and the reseller.
Because Respondent is not known by the name HAAS, he cannot
legitimately use this trademark in the domain name at issue.
By registering a confusingly similar domain name, and by creating a
website that would likely confuse the public by incorporating the overall
impression of Complainant’s website, Respondent has acted in bad faith. In registering the disputed domain name and
creating a website that implies that Respondent is affiliated with Complainant,
Respondent intentionally tried to attract consumers.
FINDINGS
Complainant has met its burden to prove, by a
preponderance of the relevant, admissible evidence, that the domain name at
issue is identical or confusingly similar to the HAAS trademark, in which
Complainant has rights. Rule 4(a)(i).
Complainant has met its burden to prove, by a
preponderance of the relevant, admissible evidence, that Respondent has no
rights or legitimate interest in the domain name at issue. Rule 4(a)(ii).
Complainant has met is burden to prove, by a
preponderance of the relevant, admissible evidence, that the domain name at is
issue has been registered and is being used in bad faith. Rule 4(a)(iii).
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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 clearly has rights to the HAAS trademark, as evidenced by
its trade and service mark registrations with the USPTO. Trademark registration is sufficient proof of
rights to a trademark. See Microsoft Corp. v. Burkes, FA 652743
(Nat. Arb. Forum Apr. 17, 2006; see also
The domain name at issue is not identical to Complainant’s HAAS
trademark because it also includes the terms “used” and “cnc”. Respondent contends that, because Complainant
sells only new CNC machines, while Respondent sells only used Haas CNC
machines, the terms “used” and “cnc” in the disputed domain name do not attract
Complainant’s customers.
However, the domain name at issue is confusingly similar to the HAAS
trademark as it is well established that a domain name that contains a
trademark in its entirety, combined with generic terms, is confusingly similar
to the trademark. See Arthur
Guinness Son & Co. (
Further, Complainant has provided evidence that it also sells pre-owned HAAS machines. Therefore, the combination of the words “used” and “Haas” in the disputed domain name could easily confuse Internet users looking to buy pre-owned, CNC machines from Complainant.
Lastly, the gTLD “.com” does nothing to distinguish the disputed domain
name from Complainant’s trademark. Jerry Damson, Inc. v.
For the aforementioned reasons,
the Panel finds that the disputed domain name is confusingly similar the HAAS
trademark, in which Complainant has rights.
First, Complainant must make a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). If the Complainant makes a prima facie case, the burden of proof then shifts to Respondent to show that he does have rights and legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006)
Complainant claims that Respondent does not have rights or
legitimate interests in the disputed domain name because Complainant has not
authorized Respondent to use the HAAS trademark. Also, the WHOIS information identifies
Respondent as “noKOutmma”, and therefore, he is not commonly known by
the disputed domain name.
Complainant also claims that Respondent is not using the
disputed domain name in connection with a bona
fide offering of goods or services because he is diverting Internet users
seeking Complainant’s products to his own website and profiting from this
activity.
The Panel finds that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the domain name at issue. Where the complainant has not authorized the respondent to use its marks, and where the WHOIS information does not indicate that the respondent is known by the disputed domain name, the respondent is not commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007).
Further, the Panel finds that if Respondent had not intended to redirect or attract Internet users to his own website for financial gain, he would not have included the HAAS trademark in the disputed domain name. Further, redirecting Internet users to Respondent’s own website for commercial gain does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). ). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006).
Respondent claims that the HAAS
trademark is used only for nominative purposes in the disputed domain name, to describe
the products that Respondent is legitimately selling and this bona fide offering of goods suggests an
interest in the disputed domain name.
Although reselling products may be a legitimate and bona fide offering of goods and
services, this does not give the reseller the right to use the original
manufacturer or supplier of the product’s trademarks. Under the fair use doctrine of
Nominative fair use requires that a
party use only so much of the mark as is reasonably necessary to identify the
product and do nothing that would, in addition to the mark, suggest sponsorship
or endorsement by the trademark holder. New Kids on the Block v. News
America Publishing, Inc.,
Respondent uses more than reasonably necessary of the HAAS trademark. Not only does he use the name HAAS in the disputed domain name, but uses the same color scheme and font as the HAAS trademark and official website. In addition, Respondent does not need to include Complainant’s HAAS trademark in the disputed domain name in order to sell Complainant’s pre-owned products.
The Panel finds that Respondent has not met his burden of proof, and therefore, concludes that he does not have rights or legitimate interests in the disputed domain name.
Although Complainant did not make a Policy ¶ 4(b)(iii) argument, it is important to note that the use of the disputed domain name to sell Complainant’s used machines is a disruption of Complainant’s business because it diverts Internet users to Respondent’s website and possibly causes a loss of business for Complainant. This constitutes registration and use of the disputed domain name in bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006).
Not only would the
disputed domain name create confusion amongst Internet users, but Respondent’s
website itself creates a likelihood of confusion. Respondent’s website incorporates
Complainant’s HAAS trademark in similar font, and has the same color scheme as on
Complainant’s official website. This is
further evidence of registration and use of the disputed domain name in bad
faith. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles,
D2000-1306 (WIPO Jan. 24, 2001); see also
Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003).
The use of the HAAS trademark, with similar font and color
scheme as on Complainant’s official website, is also evidence that Respondent
was aware of Complainant’s rights at the time he registered the disputed domain
name and/or while using the disputed domain name for his website. Actual or constructive knowledge of
Complainant’s rights to the HAAS trademark is evidence of bad faith. See
Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000);
see also Yahoo! Inc. v.
Respondent’s
website also contains a disclaimer, which states “[t]he words Haas, H Haas, Haas Automation Inc, Haas Factory
Outlet, HFO, Haas CNC are used solely to identify the make and model of used
CNC machine tool and does not imply or indicate any affiliation or relation
with the manufacturer or distributor Haas Automation Incorporated.” Below the disclaimer there is a link to
Complainant’s official website.
Respondent contends that the disclaimer demonstrates that he did not use the disputed domain name to create a likelihood of confusion between himself and Complainant, and did not register or use the Complainant’s HAAS mark in bad faith. However, a disclaimer does not always mitigate a finding of bad faith. See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007). The sufficiency of disclaimers must be decided on a case-by-case basis. Pliva, Inc. v. Eric Kaiser, D2003-0316 (WIPO June 9, 2003).
In the current case, the disclaimer is in small print at the very bottom of the page, after a display of Respondent’s products and services. It is quite possible that Internet users would not see the disclaimer. Under these circumstances, the disclaimer is insufficient to prevent a likelihood of confusion. See AltaVista Company v. Astavista.com, FA 095251 (Nat. Arb. Forum Aug. 17 2000).
Furthermore, a disclaimer posted on a website to which a disputed domain name resolves comes too late. The domain name attracts the Internet user’s initial interest, and the Internet user is misdirected before he/she sees the disclaimer. See Dell, Inc. v. Biosunlockers, D2008-0879 (WIPO July 30, 2008); see also AltaVista Company v. Astavista.com, FA 095251 (Nat. Arb. Forum Aug. 17 2000).
Finally, the
disclaimer is evidence of Respondent’s actual knowledge of Complainant’s rights
in the HAAS trademark before it registered the disputed domain name. Such knowledge is evidence that Respondent
registered and used the disputed domain name in bad faith. See
Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000);
see also Yahoo! Inc. v.
For all of the aforementioned reasons, the Panel concludes that disputed domain name was registered and being used in bad faith.
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 <usedcnchaas.com> domain name be TRANSFERRED
from Respondent to Complainant.
Dated: July 14, 2010
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