Haas Automation, Inc. v. none / Christenson, John
Claim Number: FA1101001366189
Complainant is Haas Automation, Inc. (“Complainant”), represented by Farah P. Bhatti of Buchalter Nemer, California, USA. Respondent is none / Christenson, John (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <haascncused.com> and <haasfactoryused.com>, registered with Directnic, Ltd.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 5, 2011; the National Arbitration Forum received payment on January 11, 2011«DateHardCopy».
On January 5, 2011, Directnic, Ltd confirmed by e-mail to the National Arbitration Forum that the <haascncused.com> and <haasfactoryused.com> domain names are registered with Directnic, Ltd and that Respondent is the current registrant of the name. Directnic, Ltd has verified that Respondent is bound by the Directnic, Ltd 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 January 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 3, 2011 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@haascncused.com and postmaster@haasfactoryused.com. Also on January 14, 2011, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 4, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <haascncused.com>and <haasfactoryused.com> domain names are confusingly similar to Complainant’s HAAS mark.
2. Respondent does not have any rights or legitimate interests in the <haascncused.com> and <haasfactoryused.com> domain names.
3. Respondent registered and used the <haascncused.com> and <haasfactoryused.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Haas Automation, Inc., owns the HAAS mark and has used the mark in association with computer numerically controlled (“CNC”) machines and related services for over 27 years. Complainant holds trademark registrations for its HAAS mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,573,776 issued May 28, 2002).
Respondent, none / Christenson, John, registered the disputed domain names on April 20, 2009. The <haascncused.com> and <haasfactoryused.com> domain names resolve to directory websites featuring third-party commercial links, some of which directly compete with Complainant’s manufacturing business.
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 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 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.
Complainant asserts that it has established rights in its HAAS mark. Previous panels have come to the conclusion that a complainant can establish rights in a mark through federal trademark registration. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Here, Complainant has a trademark registration for its HAAS mark with the USPTO (e.g. Reg. No. 2,573,776 issued May 28, 2002). The Panel finds that Complainant has demonstrated its rights in the HAAS mark through its trademark registration according to Policy ¶ 4(a)(i).
Complainant contends that Responden’ts <haascncused.com> and <haasfactoryused.com> are confusingly similar to its HAAS mark. The disputed domain names incorporate Complainant’s entire mark and differ simply by adding the descriptive words “factory used” and “cnc used,” and adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of descriptive words which relate to Complainant’s business in the manufacture of CNC machines are not enough to sufficiently distinguish the disputed domain name from Complainant’s mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business). The Panel also finds that the addition of a gTLD does not properly distinguish the disputed domain name from Complainant’s mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s HAAS mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant maintains that Respondent lacks rights and legitimate interests in the <haascncused.com> and <haasfactoryused.com> domain names. Previous panels have determined that once a complainant presents a prima facie case in support of its allegations, then the burden shifts to Respondent to demonstrate that it does have rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). Complainant has established a prima facie showing in support of its allegations against Respondent. Given Respondent’s failure to submit a response to the Complaint, the Panel may assume that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel will first look to the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c) before reaching a decision.
Complainant argues that Respondent is not commonly known by the disputed domain names. The WHOIS information names Respondent as “none/Christenson, John,” which is not similar to the disputed domain names. Complainant asserts that Respondent is neither affiliated with, nor has been licensed or permitted to use Complainant’s HAAS mark within the disputed domain names. The Panel finds that Respondent is not commonly known by the <haascncused.com> and <haasfactoryused.com> domain names under Policy ¶ 4(c)(ii) as no information in the record would support such a finding. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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).
Respondent uses the disputed domain names to operate a directory website featuring sponsored links to third-party sites, some of which offer goods and services in competition with Complainant’s manufacturing business. Respondent likely receives click-through fees from these links. The Panel finds that Respondent’s use of the confusingly similar disputed domain names to host a directory website which redirects Internet users to Complainant’s competitors within the industry is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a noncommercial legitimate use under Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did 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 Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
The Panel concludes that Policy 4(a)(ii) has been met.
Complainant alleges that Respondent’s use of the <haascncused.com> and <haasfactoryused.com> domain names disrupt its business. Respondent uses the disputed domain names to operate a website featuring sponsored links, some of which compete with Complainant’s business. Internet users intending to purchase machinery and related services from Complainant may find Respondent’s website due to the confusingly similar disputed domain names and purchase similar goods and services from a competitor instead. The Panel finds that Respondent’s use of the disputed domain names does disrupt Complainant’s business and is evidence of bad faith use and registration under 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 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 Policy ¶ 4(b)(iii)).
The Panel infers that Respondent receives click-through fees from the previously mentioned sponsored links. Internet users searching for Complainant’s official website may instead find Respondent’s website due to the confusingly similar disputed domain names. Users may then be under the impression that Complainant sponsors, or is affiliated with, the disputed domain names, resolving website, and sponsored links. Respondent attempts to capitalize off this confusion by receiving click-through fees. The Panel finds that Respondent’s use of the <haascncused.com> and <haasfactoryused.com> domain names constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See 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).”); see also 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).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <haascncused.com> and <haasfactoryused.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: February 17, 2011
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