National Arbitration Forum




Haas Automation, Inc. v. ASI Machine and Supply a/k/a Brian Denny a/k/a

Claim Number: FA0904001256423



Complainant is Haas Automation, Inc. (“Complainant”), represented by Farah P. Bhatti, of McDermott Will & Emery LLP, California, USA.  Respondent is ASI Machine and Supply a/k/a Brian Denny a/k/a (“Respondent”), Idaho, USA.




The domain name at issue is <>, (“the disputed domain name”) which is registered with, Inc. (“Godaddy”).



The undersigned David H Tatham, 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.



Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”)  electronically on April 7, 2009; the Forum received a hard copy of the Complaint on April 8, 2009.


On April 7, 2009, Godaddy confirmed by e-mail to the Forum that the domain name <> was registered with it and that the Respondent is the current registrant of the name.  Godaddy has verified that Respondent is bound by its 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 April 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of May 6, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to by e-mail.


E-mail Responses were received electronically on April 19 and April 20, 2009, however, they were deemed to be deficient as neither was in compliance with ICANN Rule 5.


On May 15, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Mr. David H Tatham as Panelist.



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



A. Complainant

Complainant has four U.S. registrations all of which consist of or contain the word HAAS namely:

HAAS (Logo) No. 2,573,776 “Power tools, namely vertical drilling and milling machines, horizontal drilling and milling machines, and lathes, equipped with numerical controls” in Class 7.

HAAS AUTOMATION No. 2,573,775 “Machine tools, namely computer controlled vertical drilling and milling machines, horizontal drilling and milling machines, and lathes, equipped with numerical controls” in Class 7.

HAAS FACTORY OUTLET No. 3,533,101 “Distributorships in the field of CNC machines” in Class 35. 

HAAS FACTORY OUTLET No. 3,514,894 “Repair, service and installation of CNC machines” in Class 37. 

The two earliest of these marks both claim July 1983 as their date of first use, and Complainant contends that it enjoys long and very strong worldwide rights in, and recognition of, the mark HAAS and that this mark has been associated with computer numerically controlled (or CNC) machines for over twenty-five years. Complainant also contends that it has developed substantial goodwill in its names HAAS AUTOMATION and the other HAAS marks, as well as in its official domain name <>. Complainant considers itself to be a global leader in the production and manufacturing of computer numerically controlled machines and related services, and claims that it is the largest CNC machine tool builder in the Western World; that it has achieved international recognition in the field of CNC machines and related services; and that its name has acquired distinctiveness so that, as a result of the widespread, continuous, and prominent use of Complainant’s Marks they have acquired significant goodwill, wide public recognition, and international fame.

Complainant contends that the disputed domain name is confusingly similar to its HAAS trademark, as well as to its official domain <> which has been registered and used since 2001.  The disputed domain name incorporates Complainant’s name and trademark Haas along with its domain name, <> and then merely adds the generic term “online.” This, Complainant contends, is a clear attempt to create a likelihood of confusion with its trademarks as to the source, sponsorship or affiliation, or endorsement of Respondent’s website. Complainant contends that the disputed domain name is likely to mislead and divert web users trying to locate legitimate information about its products, and from its website.

Complainant also contends that Respondent has no rights or legitimate interest in the disputed domain name inter alia because:

·        Complainant’s trademarks have been used and known worldwide to identify Complainant’s goods and services.

·        Complainant has not consented to Respondent’s use of the disputed domain name.

·        Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial fair use of the name.

·        Respondent is using the disputed domain name for a website that promotes other commercial websites. The name currently resolves to a site that provides various sponsored click-through links, which direct Internet users to third-party commercial websites offering goods that compete with Complainant’s goods.

·        Respondent is using the disputed domain name to divert Internet traffic from Complainant’s legitimate website.

·         Respondent’s use of the disputed domain name to run click-through links or to redirect users to sponsored web sites does not qualify as a bona fide offering of goods and services, and it is presumed that Respondent receives compensation for each misdirected user.

·        Respondent is not commonly known by the disputed domain name, either as a business, individual or other organization.

·        Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, and Complainant believes that the sole reason Respondent has chosen the disputed domain name is to trade off its own reputation and goodwill that is associated with its trademark HAAS and its <> domain name and misleadingly divert Internet traffic from Complainant’s website to Respondent’s website for commercial gain.

Complainant also contends that the disputed domain name was registered in bad faith and notes that Respondent is the registrant of two infringing domain names.  The first being the subject of this Complaint, and the second being <>. 

Complainant’s counsel engaged in an e-mail correspondence with Respondent between December 2008 and March 2009, when Respondent asked whether Complainant might be interested in buying both of the disputed domain names, at the same time alleging that the demand to transfer the domain was “completely ridiculous” and that he would be “truly interested in battling” over this issue and “will enjoy taking Haas’s [sic] money for my attorneys’ and whatever else I can get when it’s done.

Complainant contends that using Complainant’s trademark HAAS and its official domain name, <> in a domain name that resolves to a web page displaying various third party commercial links, many of whom offer products in direct competition with those offered under Complainant’s mark, is recognized under the Policy as evidence of bad faith registration and use, and refers to Victoria’s Secret Stores Brand Mgmt., Inc. v. PabloPalermao, FA 1191651 (Nat. Arb. Forum July 9, 2008).

Complainant concludes that, given the well-known status of its name and trademark, and given the fact that Respondent is clearly aware of its name and mark and its ownership of them as well as the domain <>, there is no reason for Respondent to have registered the disputed domain name other than to trade off the reputation and goodwill of Complainant’s Mark. 

Finally, Complainant contends that the registration of the disputed domain name violates the Anticybersquatting Consumer Protection Act, 15 U.S.C. §43(d), et seq.


B. Respondent

On April 19, 2009, Respondent, Mr. Denny, sent the following e-mail to the Forum –


“I have consulted an attorney and Haas is exactly correct. I am fine with them controlling or taking this web domain. Let’s call it done.


The Forum replied pointing out that this message did not comply with ICANN’s or its own requirements but that if Respondent were to reply before May 6, 2009, with a copy to Complainant, confirming that the Response was complete, the Forum would continue with the proceedings and the document would be included in the file and treated as a non-compliant response.


On April 20, 2009, Mr. Denny, sent the following e-mail –


“I retained an internet attorney and have decided the cause is not worth the fight. Haas can have and



Complainant is a substantial and long-established manufacturer of computer numerically controlled (CNC) machines for which it uses and has registered the trademarks HAAS, HAAS AUTOMATION and HAAS FACTORY OUTLET.


Respondent, Mr. Denny, has indicated that he is willing to cede the disputed domain name to Complainant.



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.


Respondent does not contest any of Complainant’s allegations regarding the disputed domain name, and indeed has indicated that he will consent to a judgment in favour of Complainant for its transfer. In similar circumstances, Panels in several earlier Decisions have foregone the traditional UDRP analysis and ordered the immediate transfer of the domain names, namely Boehringer Ingelheim International GmbH v. Modern Ltd. – Cayman Web Development, FA 133625 (NAF January 9, 2003) (transferring the domain name registration where the Respondent stipulated to the transfer); Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (NAF January 13, 2004) in which it was said “In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.; and Disney Enterprises, Inc. v. Elmer Morales, FA 475191 (NAF June 24, 2005) in which it was said: “[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.


In this case, the Panel sees no reason why it should depart from the course adopted in all three of the above Decisions, or why it should deny the requests of both Complainant and Respondent.



Having established that Complainant’s request for a transfer of the disputed domain name <> is not seriously contested by Respondent, the Panel concludes that relief shall be GRANTED.


Accordingly, it is Ordered that the <> domain name be TRANSFERRED from Respondent to Complainant.





David H Tatham, Panelist
Dated: May 29, 2009







Click Here to return to the main Domain Decisions Page.


Click Here to return to our Home Page


National Arbitration Forum