NATIONAL ARBITRATION FORUM

 

DECISION

 

Haas Automation, Inc.  v. CNCPros.net a/k/a Brian Denny

Claim Number: FA0905001263151

 

PARTIES

 

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

 

REGISTRAR AND DISPUTED DOMAIN NAME 

 

The domain name at issue is <haascnc.us>, registered with Godaddy.com, Inc.

 

PANEL

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 15, 2009; the Forum received a hard copy of the Complaint on May 18, 2009.

 

On May 15, 2009, Godaddy.com, Inc. confirmed by e-mail to the Forum that the <haascnc.us> domain name is registered with Godaddy.com, Inc. and that 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 the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On May 26, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 15, 2009 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On June 19, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the 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.

 

RELIEF SOUGHT

 

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

 

PARTIES’ CONTENTIONS

 

A. Complainant

 

1.      Respondent’s <haascnc.us> domain name is confusingly similar to Complainant’s HAAS mark.

 

2.      Respondent does not have any rights or legitimate interests in the <haascnc.us> domain name.

 

3.      Respondent registered and used the <haascnc.us> domain name in bad faith.

 

B. Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

Complainant, Haas Automation, Inc., has been active in the market of computer numerically controlled (CNC) machines for over twenty-five years.  Complainant is the owner of the HAAS mark, registered with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 2,579,776 issued May 28, 2002). 

 

Respondent registered the <haascnc.us> domain name on February 24, 2008.  The disputed domain name resolves to a website that displays commercial links which further resolve to websites of Complainant’s competitors.  Complainant has submitted evidence that Respondent and Complainant have been in e-mail correspondence; the most recent e-mail from Respondent after notification of the commencement of these proceedings states, “Haas is exactly correct.  I am fine with them controlling or taking this web domain.  Let’s call it done.”  However, Respondent has not formally responded to the Complaint and has not taken any steps to transfer the disputed domain name to Complainant. 

 

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.”

 

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the 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.  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.”).

 

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; and

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant’s registration of the HAAS mark with the USPTO adequately confers sufficient rights in the mark upon Complainant pursuant to Policy ¶ 4(a)(i).  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of [UDRP] ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). 

 

Complainant argues that Respondent’s <haascnc.us> domain name is confusingly similar to its HAAS mark.  The disputed domain name contains Complainant’s HAAS mark in its entirety with the addition of the descriptive acronym “cnc” and the country-code top-level domain (“ccTLD”) “.us.”  The Panel finds that the addition of the acronym “cnc” to Complainant’s mark, which has an obvious relationship to Complainant’s business in computer numerically controlled machinery, fails to sufficiently differentiate Respondent’s domain name from Complainant’s HAAS mark.  Additionally, the Panel finds that the addition of the ccTLD “.us” is irrelevant under Policy ¶ 4(a)(i).  See Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”).  Thus, the Panel concludes that Respondent’s <haascnc.us> domain name is confusingly similar to Complainant’s HAAS mark under Policy ¶ 4(a)(i). 

 

Complainant has satisfied Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

 

Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain name.  Once Complainant presents its prima facie case that Respondent has no rights or legitimate interests with respect to the disputed domain name, the burden shifts to Respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue.” See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”).  Because the Panel finds Complainant’s submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.  Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).  See American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).  However, the Panel will review the record to determine whether Respondent has any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 

 

There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <haascnc.us> domain name.  Therefore the Panel finds that Respondent does not have rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(i).  See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).

 

Moreover, nothing in the record indicates that Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(iii).  The WHOIS information lists the registrant as “CNCPros.net a/k/a Brian Denny.”  Because Respondent failed to respond to the Complaint, there is no evidence in the record to the contrary.  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).  Therefore, the Panel finds that Respondent is not commonly known by the <haascnc.us> domain name under Policy ¶ 4(c)(iii).     

 

Respondent is using the disputed domain name to resolve to a website featuring click-through links which further resolve to websites of Complainant’s competitors.  Respondent presumably receives referral fees from the advertisers listed on its website.  Thus, the Panel finds that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(ii) or (iv), respectively.  See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii)); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under UDRP ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark). 

 

Moreover, Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name based on Respondent’s willingness to transfer the disputed domain name.  The Panel finds that Respondent’s acquiescence to Complainant’s request to transfer the disputed domain name, despite the fact that Respondent did not submit a formal Response to the Complaint, indicates that Respondent lacks rights or legitimate interests in the <haascnc.us> domain name under Policy ¶ 4(a)(ii).  See Global Media Group, Ltd. v. Kruzicevic, FA 96558 (Nat. Arb. Forum Mar. 7, 2001) (finding that the respondent’s willingness at the onset of the complaint to transfer the domain names shows it lacks any legitimate interest or rights in the names); see also Gassan Diamonds B.V. v. Van Etten Bernardus Jacobus, AF-0149b (eResolution May 25, 2000) (finding that the respondent’s willingness to transfer is evidence of its lack of legitimate rights/interests in the name).

 

Complainant has satisfied Policy ¶ 4(a)(ii). 

 

Registration and/or Use in Bad Faith

 

Complainant contends that Respondent has engaged in bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii).  Respondent is using a domain name, which is confusingly similar to Complainant’s HAAS mark, to attract Internet users to a website containing click-through links that further resolve to websites of Complainant’s competitors.  The Panel finds that appropriating Complainant’s HAAS mark to divert Internet users seeking Complainant to Respondent’s <haascnc.us> domain name is likely disrupting Complainant’s business and constitutes bad faith use under Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under UDRP ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iii).”).   

 

Respondent is presumably generating revenue from the click-through links on the website resolving from the <haascnc.us> domain name.  Complainant asserts that Respondent is attempting to attract Internet users who are seeking out Complainant’s website, diverting them to resolving websites of Complainant’s competitors, and profiting from this diversion scheme.  The Panel finds that such use constitutes bad faith pursuant to Policy ¶ 4(b)(iv).  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to UDRP ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).

 

Complainant has satisfied Policy ¶ 4(a)(iii).   


 

DECISION

 

Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

 

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

 

 

 

Bruce E. Meyerson, Panelist

Dated: June 30, 2009

 

 

 

 

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