national arbitration forum

 

DECISION

 

Haas Automation, Inc. v. Hu Li

Claim Number: FA0909001282915

 

PARTIES

Complainant is Haas Automotion, Inc. (“Complainant”), represented by Farah P. Bhatti of Buchalter Nemer, California, USA.  Respondent is Hu Li (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <haasmachinetool.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically September 3, 2009; the National Arbitration Forum received a hard copy of the Complaint September 8, 2009.

 

On September 4, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <haasmachinetool.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name.  Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On September 14, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 5, 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 postmaster@haasmachinetool.com by e-mail.

 

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

 

On October 12, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:

 

1.      The domain name that Respondent registered, <haasmachinetool.com>, is confusingly similar to Complainant’s HAAS mark.

 

2.      Respondent has no rights to or legitimate interests in the <haasmachinetool.com> domain name.

 

3.      Respondent registered and used the <haasmachinetool.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, HAAS Automation, Inc., manufactures, markets, and sells computer numerically controlled (“CNC”) machines and machine tools.  Complainant has operated under the HAAS AUTOMATION mark since 1983 as a CNC machine and machine tools builder.  Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its HAAS AUTOMATION mark (e.g., Reg. 2,573,775 issued May 28, 2002). 

 

Respondent, Hu Li, registered the <haasmachinetool.com> domain name January 15, 2009.  The disputed domain name resolves to a website featuring a search engine and hyperlinks to Complainant’s competitors.  Respondent also offered to sell the disputed domain name to Complainant for $999.00, and to the general public, after receiving Complainant’s cease-and-desist letter.

 

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."

 

Given 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(e), 14(a) and 15(a) of the Rules and will 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 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.

 

Identical and/or Confusingly Similar

 

Complainant contends it has established rights in the HAAS AUTOMATION mark.  Previous panels have found that a trademark registration with a federal trademark authority is sufficient to establish rights in a mark.  Prior panels have also found that a complainant is not required to register its mark within the country of the respondent.  See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).  Complainant holds multiple trademark registrations of the HAAS AUTOMATION mark with the USPTO (e.g., Reg. 2,573,775 issued May 28, 2002).  Therefore, the Panel finds Complainant has established rights in the HAAS AUTOMATION mark through Complainant’s trademark registration with the USPTO under Policy ¶ 4(a)(i).

 

Complainant claims Respondent’s <haasmachinetool.com> domain name is confusingly similar to Complainant’s HAAS AUTOMATION mark.  The disputed domain name subtracts the word “automation,” adds the descriptive terms “machine” and “tool,” which describe Complainant’s machine tool business, and adds the generic top-level domain (“gTLD”) “.com.”  The Panel finds the subtraction of a word and the addition of descriptive terms fail to adequately distinguish the disputed domain name from Complainant’s mark.  See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”).  The Panel further finds the addition of a gTLD is irrelevant under a Policy 4(a)(i) analysis.  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).  Therefore, the Panel finds Respondent’s <haasmachinetool.com> domain name is confusingly similar to Complainant’s HAAS AUTOMATION mark under Policy ¶ 4(a)(i).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant alleges that Respondent lacks rights to and legitimate interests in the <haasmachinetool.com> domain name.  Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds that Complainant made a prima facie case.  Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <haasmachinetool.com> domain name.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).

 

Respondent is using the <haasmachinetool.com> domain name to resolve to a website featuring a commercial search engine and links to Complainant’s competitors in the CNC machines and machine tools industry.  The Panel finds this use of the confusingly similar disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).  See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also 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 Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

Respondent offered no evidence, and no evidence in the record suggests that Respondent is commonly known by the <haasmachinetool.com> domain name.  Complainant has not consented to Respondent’s use of the disputed domain name.  Complainant asserts that Respondent is not authorized to use the HAAS AUTOMATION mark.  The WHOIS information identifies Respondent as “Hu Li.”  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name and has not established rights or legitimate interests in the <haasmachinetool.com> domain name pursuant to Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Respondent has also offered the disputed domain name for sale.  Respondent replied to Complainant’s cease-and-desist letter with an offer to sell the disputed domain name for $999.00.  The WHOIS information also contains an offer to sell the disputed domain name to the general public.  The Panel finds that Respondent’s attempt to sell the disputed domain name also is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).  See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

After Complainant submitted a cease-and-desist letter to Respondent, Respondent replied with an offer to sell the domain name for $999.00.  The WHOIS information also contains a general offer to sell the domain name for the same amount to the public.  The Panel finds that Respondent’s use of the <haasmachinetool.com> domain name in an attempt to sell the disputed domain name to Complainant or the general public for an amount in excess of Respondent’s out-of-pocket registration costs constitutes bad faith registration and use under Policy ¶ 4(b)(i).   See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).

 

Respondent’s <haasmachinetool.com> domain name resolves to a website featuring a commercial search engine and hyperlinks relating to Complainant’s competitors in the CNC machines and machine tools business.  Complainant claims that Respondent’s use of the disputed domain name disrupts Complainant’s CNC machines and machine tools business because Internet users looking to buy products from Complainant may be redirected to Complainant’s competitors through Respondent’s confusingly similar website.  The Panel finds that Respondent’s use of the <haasmachinetool.com> domain name does disrupt Complainant’s CNC machines and machine tools business and constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).

 

Under such use, the Panel is permitted to draw and inference that Respondent receives click-through fees from the links relating to Complainant’s CNC machines and machine tools competitors.  Internet users may become confused as to Complainant’s affiliation and sponsorship of the competing hyperlinks and website resolving from the disputed domain name.  The Panel finds that Respondent’s attempt to profit from this confusion supports findings of bad faith registration and use under 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 Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

 

The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).

 

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 <haasmachinetool.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: October 28, 2009.

 

 

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