national arbitration forum

 

DECISION

 

Haas Automation, Inc. v. 520 Machinery Sales

Claim Number: FA1105001387937

 

PARTIES

Complainant is Haas Automation, Inc. (“Complainant”), represented by Farah P. Bhatti of Buchalter Nemer, California, USA.  Respondent is 520 Machinery Sales (“Respondent”), Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <usedhaasspecialist.com>, registered with GoDaddy.com, Inc.

 

PANEL

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.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 9, 2011; the National Arbitration Forum received payment on May 10, 2011.

 

On May 11, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <usedhaasspecialist.com> 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On May 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 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@usedhaasspecialist.com.  Also on May 11, 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 June 2, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <usedhaasspecialist.com> domain name is confusingly similar to Complainant’s HAAS AUTOMATION mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, Haas Automation, Inc., has sold computer numerically controlled (“CNC”) machines for over 27 years. Complainant owns a trademark registration for the HAAS AUTOMATION mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,573,775 issued May 28, 2002).

 

Respondent, 520 Machinery Sales, registered the <usedhaasspecialist.com> domain name on April 19, 2009. The disputed domain name resolves to a commercial website selling Complainant’s machines and services without Complainant’s authorization, as well as competing products.

 

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 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.

 

Identical and/or Confusingly Similar

 

Complainant owns a trademark registration for the HAAS AUTOMATION mark with the USPTO (Reg. No. 2,573,775 issued May 28, 2002). The Panel finds that this USPTO trademark registration conclusively establishes Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). 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 Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).

 

Complainant alleges that Respondent’s <usedhaasspecialist.com> domain name is confusingly similar to Complainant’s HAAS AUTOMATION mark because the mark is merely combined with the generic terms “used” and “specialist” and the generic top-level domain (“gTLD”) “.com” after omitting the term “automation.” The Panel finds that neither omitting a term from Complainant’s mark nor combining Complainant’s mark with generic terms alleviates confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark). The Panel also determines that a gTLD does not change the essential nature of the disputed domain name to prevent confusing similarity. 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). The Panel thus concludes that Respondent’s <usedhaasspecialist.com> domain name is confusingly similar to Complainant’s HAAS mark pursuant to Policy ¶ 4(a)(i).

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain name. Policy ¶ 4(a)(ii) requires that Complainant first establish a prima facie case before the burden to demonstrate rights and legitimate interests transfers to Respondent. The Panel finds Complainant has adequately established a prima facie case in these proceedings. Respondent’s failure to respond to the Complaint allows the Panel to infer that Complainant’s allegations are true in that Respondent lacks rights and legitimate interests in the disputed domain name. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth . . . as true.”); 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.”). The Panel elects, however, to consider the evidence in the record according to the Policy ¶ 4(c) factors to determine whether Respondent has any rights or legitimate interests in the disputed domain name.

 

Complainant asserts that it has not consented to Respondent’s use of the disputed domain name and that Respondent is not affiliated with or licensed by Complainant to use Complainant’s HAAS AUTOMATION mark. The WHOIS information for the <usedhaasspecialist.com> domain name lists the registrant as “520 Machinery Sales,” which shows no facial association to Complainant’s mark. The Panel accordingly holds that Respondent is not commonly known by the disputed domain name and consequently does not possess rights and legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

Complainant contends that Respondent uses the <usedhaasspecialist.com> domain name to host a commercial website offering the same products and services sold by Complainant, although Respondent’s offered products are used. Complainant also alleges that Respondent sells non-HAAS AUTOMATION machines that compete with Complainant’s products at the disputed domain name. The Panel finds that competing sales of Complainant’s and competitors’ products and services at a domain name misappropriating Complainant’s mark does not constitute a bona fide offering of goods or services according to Policy  ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Universal Protein Supplements Corp. v. Dalech, LLC, FA 1278030 (Nat. Arb. Forum Sept. 8, 2009) (finding that Respondent’s attempt to profit by redirecting consumers to Respondent’s commercial website selling Complainant’s goods is not consistent with Policy ¶ 4(c)(i) or ¶ 4(c)(iii)); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use).

 

The Panel finds Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s sale of used versions of Complainant’s machines and competing CNC machines at the <usedhaasspecialist.com> domain name facilitates competition with Complainant, thereby disrupting Complainant’s business. The Panel holds that this intentional disruption reveals Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).

 

Complainant contends that Respondent’s intention in registering the <usedhaasspecialist.com> domain name was to lure Internet users and consumers of Complainant’s products to Respondent’s competing commercial website. Complainant asserts that Respondent’s use of Complainant’s mark in the disputed domain name and its offering of Complainant’s products creates confusion among consumers as to the affiliation or sponsorship of Respondent’s website. Complainant argues that Respondent uses Complainant’s mark and creates this confusion in order to increase its profits from its sale of Complainant’s used products and competing products. The Panel finds these facts are consistent with an intent to attract and create confusion for commercial gain which demonstrates bad faith registration and use according to Policy          ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).

 

The Panel finds Policy ¶ 4(a)(iii) has been satisfied.

 

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

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  June 16, 2011

 

 

 

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