Haas Automation, Inc. v. Imachinetools.com / Neal Mckean
Claim Number: FA1106001393128
Complainant is Haas Automation, Inc. (“Complainant”), represented by Farah P. Bhatti of Buchalter Nemer, California, USA. Respondent is Imachinetools.com / Neal Mckean (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <haas-used.com>, registered with ENOM, INC.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 10, 2011; the National Arbitration Forum received payment on June 13, 2011.
On June 13, 2011, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <haas-used.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 June 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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@haas-used.com. Also on June 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 July 11, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Haas enjoys very strong worldwide rights in and recognition of the marks HAAS, HAAS AUTOMATION and HAAS FACTORY OUTLET. The HAAS and HAAS AUTOMATION marks have been associated with computer numerically controlled (or CNC) machines for over twenty-seven (27) years. The HAAS FACTORY OUTLET marks have been associated with CNC machines and services for over thirteen (13) years. In addition to common law rights in the HAAS, HAAS AUTOMATION and HAAS FACTORY OUTLET marks, Haas owns four (4) trademark registrations for goods and services relating to computer numerically controlled machines for marks that incorporate the HAAS mark, including [design mark] Reg. No. 2,573,776, HAAS AUTOMATION (Reg. No. 2,573,775), HAAS FACTORY OUTLET (Reg. No. 3,533,101) and HAAS FACTORY OUTLET (Reg. No, 3,514,894). Haas has developed substantial goodwill in its marks, HAAS, HAAS AUTOMATION, HAAS FACTORY OUTLET and the other various HAAS marks, as well as its official domain name, haascnc.com.
2. Complainant has adopted and has continually used in commerce, since at least as early as 1983, marks incorporating the terms HAAS and HAAS AUTOMATION in connection with computer numerically controlled machines and services related thereto. Complainant has also adopted and has continually used in commerce, since at least as early as 1998, the HAAS FACTORY OUTLET mark. Haas is also the owner of several other domain names which are a variation of the HAAS term along with descriptive wording, which redirect to Haas’ main domain name. Haas considers itself a global leader in the production and manufacturing of computer numerically controlled machines and related services. In fact, Haas is the largest CNC machine tool builder in the Western World. Due to its success in the industry and amongst its competitors, Haas has achieved international recognition in the field of CNC machines and related services and its trademarks have acquired distinctiveness. Haas zealously protects its HAAS marks and enforces its rights in the event the HAAS marks are infringed upon.
3. Complainant’s Marks are famous for use in connection with CNC machines and related services and Complainant has invested substantial monies in these marks. As a result of this widespread, continuous and prominent use, Complainant’s Marks have acquired significant goodwill, wide public recognition, and international fame as a means by which the public identifies Complainant’s CNC machines and related services. In addition, customers can view Complainant’s products and can obtain information regarding authorized service through Complainant’s website at haascnc.com and can also purchase used machines via the website.
V. The Factual and Legal Grounds on Which the Complaint is Made
A. The Domain Name is Confusingly Similar to the Complainant’s Marks
[Rule 3(b)(ix)(1)]
4. The Domain Name is confusingly similar to Haas’ valuable HAAS, HAAS AUTOMATION and HAAS FACTORY OUTLET trademarks. Haas has been an industry leader and is well-known as a provider of CNC machines and related services and has been using the HAAS trademark and company name for over 27 years. In addition, the HAAS FACTORY OUTLET trademark has been used by Haas’ licensees and distributors for many years as well. Haas registered the domain name haascnc.com in 1996. The Domain Name’s incorporation of Haas’ famous name, along with the generic term used, which describes Haas’ goods, is clearly an attempt to create a likelihood of confusion with Complainant’s Marks, as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Respondent’s Domain Name is likely to mislead and divert web users trying to locate legitimate information about Complainant’s products and services, and Complainant’s own website, haascnc.com.
5. Respondent’s Domain Name, Haas-Used.Com, incorporates Complainant’s identical mark, and then merely adds the generic term “used.” The term “used” is commonly utilized to identify previously owned machinery that is resold.
6. Respondent’s registered Domain Name is nearly identical to and confusingly similar to Complainant’s HAAS mark and is likely to mislead, deceive or cause mistake as to the source, sponsorship, affiliation or endorsement of the Domain Name or of the products and services promoted on the site to which the Domain Name resolves.
7. By merely adding generic or descriptive terms to Complainant’s famous mark, Respondent does nothing to prevent likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Therefore, Respondent’s Domain Name is likely to misleadingly attract potential consumers of Complainant. See e.g., Haas Automation, Inc. v. Machineworks Inc. c/o WMT Machine Tools (NAF 1305251 Apr. 7, 2010) (finding that inclusion of the terms “used” and “CNC” to HAAS in a domain is a minor alteration to the registered mark and does not negate the confusingly similar aspect of Respondent’s domain name); Caterpillar Inc. v. Stephen R. Vine (NAF 097097 June 21, 2001) (finding that domain name usedcat-auction.com, usedcaterpillarspecialistauction.com, catauctions.com, and usedcaterpillarspecialist.com are confusingly similar to Complainant’s CATERPILLAR mark because “[t]he mere addition of descriptive or generic words to a famous mark…does not eliminate the similarity between the domain name and the trademark.”). Consumers and internet users are likely to believe that the Haas-Used.Com domain is affiliated with, sponsored by, endorsed, or otherwise connected to Complainant as the Domain Name reinforces the association between Complainant’s Marks and its primary line of products.
8. Complainant notes that the Respondent in the afore-mentioned Machineworks case and the Respondent in these proceedings share the same physical address. Moreover, both Respondents share the same technical contact as well. Therefore, it appears that both Respondents are either related or are the same entity.
B. Respondent Has No Rights or Legitimate Interest in the Domain Name
9. Complainant’s Marks are not descriptive words in which the Respondent might have an interest. Complainant’s Marks have acquired distinctiveness through their substantial, continuous and exclusive use for over twenty-seven (27) years in connection with Complainant’s computer numerically controlled machines and related services. Complainant’s Marks have been used and known worldwide to identify Complainant’s goods and services.
10. Complainant has not consented to Respondent’s use of the Domain Name.
11. Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. See Policy 4(c)(i).
12. Respondent is not making a legitimate noncommercial fair use of the Domain Name. See Policy 4(c)(iii).
13. Respondent is not currently using the Domain Name for any purpose. Respondent does not have, and never has had, a license or any other authorization from Haas to use its HAAS Marks. Respondent’s Domain Name does not consist of Respondent’s legal name or a name that is commonly used to identify Respondent. Moreover, Respondent is not making a legitimate, non-commercial or fair use of the disputed domain name. To the contrary, Respondent is trying to steal customers of Haas products and services, especially since Haas itself markets used HAAS machines and provides information regarding authorized services on its official website, haascnc.com.
14. The Domain Name is not owned, affiliated with, or endorsed by Complainant. Respondent is neither affiliated with, nor has it been licensed or permitted to use Complainant’s HAAS mark or any domain name incorporating the mark. See Haas Automation, Inc. v. Machineworks Inc. c/o WMT Machine Tools, (NAF 1305251 Apr. 7, 2010) (where respondent found to have no rights to use the “usedhaas.com” and “usedhaascnc.com” domain names and ordered to transfer the domains to complainant); See Compagnie de Saint Gobain v. Com-Union Corp., (WIPO D2000-020 Mar. 14, 2000) (respondent has no rights or legitimate interests in the domain name because it had not been licensed or received permission to use any of complainant’s trademarks or domain name incorporating those marks); See Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman, (WIPO D2000-0468 July 27, 2000) (where respondent found to have no rights or legitimate interests with respect to the “Revlon.net” domain name and ordered to transfer the domain name to complainant). In addition, Complainant successfully filed a UDRP complaint presumably against an affiliate of or against Respondent with regard to the domains usedhaas.com and usedhaascnc.com in February, 2010. Accordingly, Respondent has no rights or legitimate interests in the Domain Name.
15. Respondent is using the Domain Name to divert Internet traffic from the legitimate Haas website, haascnc.com. Complainant again notes that it is marketing and selling used HAAS machines as well as related services on its official website, haascnc.com.
16. On information and belief, Respondent is not commonly known by the Domain Name, either as a business, individual or other organization. See Policy 4(c)(ii). Respondent is using the company name Imachinetools.com or its own name, Neal McKean for registration purposes. Nothing in the Respondent’s WHOIS information implies that Respondent is “commonly known” by the Domain Name. See Tercent Inc. v. Lee Yi, (NAF 139720 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). Additionally, it appears that Respondent in this proceeding is the same entity as the Respondent in Haas Automation, Inc. v. Machineworks Inc. c/o WMT Machine Tools, (NAF 1305251 Apr. 7, 2010). In the previously mentioned case, the National Arbitration Forum found that Respondent has no rights or interests in the HAAS domain names. Additionally, Respondent registered the Domain Name almost seventeen (17) years after Complainant began using its HAAS mark. Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
17. Respondent is not making a legitimate noncommercial fair use of the Domain Name. On information and belief, the sole reason Respondent has chosen the haas-used.com domain name is to trade off the reputation and goodwill associated with Complainant’s HAAS mark and haascnc.com domain. Respondent’s use of the Domain Name misleadingly diverts Internet traffic from Complainant’s website to Respondent’s websites for commercial gain. See Policy 4(c)(iii).
18. Respondent intends to use the Domain Name to divert Internet traffic from the legitimate Haas website, haascnc.com.
C. The Domain Name Was Registered in Bad Faith
19. Complainant’s counsel sent a letter via Certified Mail to Respondent regarding the Domain Name on April 27, 2011 addressed to Imachinetools.com, Neal McKean. Complainant’s counsel also sent a copy of the letter via E-Mail (to the technical contact jon@internection.com) and via Facsimile on April 28, 2011. Complainant’s counsel did not receive a response to the letters.
20. Respondent has previously filed a domain complaint, NAF Case. No. 1305251 against Machineworks Inc. c/o WMT Machine Tools with regard to the domain names usedhaas.com and usedhaascnc.com. The domain registrant’s address and the technical contact for these domains is identical to the information provided in the registration details for the Domain Name at issue in these proceedings. It thus appears that just as the domain names usedhaas.com and usedhaascnc.com were registered in bad faith, the subject Domain Name was also registered in bad faith by Respondent.
21. Respondent is neither affiliated with, nor has it been licensed or permitted to use Complainant’s HAAS mark or any domain names incorporating the mark.
22. Respondent’s intention was to use the Domain Name to redirect Internet users to a commercial website were Respondent would sell used Haas machines, much as Respondent was doing with regard to the usedhaas.com and usedhaascnc.com domain names. Had Complainant not filed the previous UDRP complaint against the domain names, Respondent would be using the haas-used.com domain name in the same manner. Respondent, just as in the case of the usedhaas.com and usedhaascnc.com domain names, registered the subject Domain Name with the intent to attract users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s websites, which would thereby mislead and divert Internet traffic from Complainant’s website to Respondent’s website for commercial gain. See Policy 4(b)(iv).
23. Respondent’s usedhaas.com and usedhaascnc.com domain names were active websites that lead to online shopping sites. Respondent presumably planned to do the same with the haas-used.com website. Having a primary purpose of stealing customers using almost identical domain names constitutes bad faith. The distinctiveness and fame of the HAAS marks in connection with new and used machines fully supports the inference that Respondent’s primary purpose in registering and using the haas-used.com domain name was to lure Internet users and consumers of Haas’ products and services to Respondent’s competing website.
24. It is inconceivable that Respondent was not aware of Complainant’s trademark HAAS and its official domain, haascnc.com, when Respondent registered the Domain Name. Respondent’s other websites, usedhaas.com and usedhaascnc.com were being used to sell Haas products and included the statement “UsedHaas.com is not affiliated with Haas Automation, Inc.” and also included a link to the Haas Automation website. Such statement and inclusion of the link to Haas’ website on Respondent’s other websites indicates that Respondent was aware of actual confusion between its domains and the domain of Haas Automation.
25. Given the well-known status of Complainant’s Marks, and given the fact that Respondent was clearly aware of Complainant’s Marks, Complainant’s ownership of the Marks, the domain haascnc.com and the fact that Respondent’s use of the earlier domains usedhaas.com and usedhaascnc.com was causing confusion in the marketplace (as evidenced by Respondent’s inclusion of a disclaimer on those websites), there is no reason for Respondent to have registered the Domain Name other than to trade off the reputation and goodwill of Complainant’s Mark. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that the domain name in question is “so obviously connected with Complainant suggesting opportunistic bad faith”); see also National Rifle Association of America v. FMA (NAF Oct. 13, 2006). At a minimum, the existence of Complainant’s numerous trademark registrations charged Respondent with constructive knowledge of those registered marks. See 15 U.S.C. §1072; see also Encyclopedia Brittanica, Inc. v. Sheldon.com, No. D2000-0755 (WIPO Sept. 6, 2000). Therefore, Respondent clearly registered and used the Domain Name in bad faith. See Policy 4(b)(iv).
26. In addition, Respondent’s registration of the Domain Name violates the Anticybersquatting Consumer Protection Act, 15 U.S.C. §43(d), et seq.
B. Respondent failed to submit a Response in this proceeding.
Complainant Haas Automation, Inc. owns the HAAS mark which it uses in connection with its computer numerically controlled (“CNC”) services and products, both new and used. Complainant has registered the HAAS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,573,776 issued May 28, 2002).
Respondent Imachinetools.com / Neal Mckean registered the <haas-used.com> domain name on March 17, 2000. The disputed domain name resolves to a website which is inactive.
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 registered the HAAS mark with the USPTO (Reg. No. 2,573,776 issued May 28, 2002). Trademark registration with a federal trademark authority is sufficient to establish rights in a mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶4(a)(i) through registration of the mark with the USPTO); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶4(a)(i).”).
The Panel finds Complainant has submitted sufficient evidence to prove its rights in the HAAS mark under Policy ¶4(a)(i).
The disputed domain name must not be confusingly similar to Complainant’s mark. Panels have found the addition of a generic top-level domain (“gTLD”) does not have an effect on changing a mark. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶4(a)(i) analysis.”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”). Additionally, punctuation, including hyphens, make no difference in a Policy ¶4(a)(i) analysis. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Finally, the addition of a term which describes all or part of a complainant’s business does not negate a finding of confusing similarity of a domain name. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶4(a)(i) because the appended term related directly to the complainant’s business). Respondent simply fully incorporated Complainant’s mark, added a gTLD and a hyphen, and added the descriptive term “used.” Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s HAAS mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
The burden shifts to the respondent to prove rights and legitimate interests in a domain name after the complainant makes a prima facie case to the contrary. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted to Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also 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). The Panel finds Complainant has made a prima facie case in support of its claim Respondent lacks rights and legitimate interests in the disputed domain name. Respondent failed to submit a response to the Complaint. Therefore, the Panel may infer Respondent does not have rights or legitimate interests in the disputed domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). The Panel will now review the evidence on the record to determine if Respondent has rights or legitimate interests in the <haas-used.com> domain name.
Complainant claims Respondent is not commonly known by the disputed domain name. Panels find the WHOIS information as well as the complainant’s alleged affiliation (or lack thereof) to determine whether a respondent is commonly known by a domain name. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”). The WHOIS listing for the <haas-used.com> domain name states “Neal McKean” is the domain name registrant. Complainant has stated Respondent is in no way associated with Complainant or the HAAS mark. Additionally, Complainant has never given Respondent permission to use the HAAS mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name.
Complainant contends the inactive use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Panels have found the failure to use a domain name does not amount to either (i) a bona fide offering of goods or services nor (ii) a legitimate noncommercial or fair use. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶4(a)(ii).”) Respondent has made no active use of the disputed domain name for more than 11 years. The Panel finds Respondent’s inactive use of the <haas-used.com> domain name over such a long period of time is neither a Policy ¶4(c)(i) bona fide offering of goods or services nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant must demonstrate Respondent registered and used the disputed domain name in bad faith. While Policy ¶4(b) provides a list of factors for the Panel to consider in this analysis, the list is not exhaustive. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”). The Panel may consider the totality of the circumstances to determine if bad faith existed.
Panels have previously found the inactive holding of a domain name is enough for a finding of bad faith registration and use. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith). This Panel will not go so far, but is very concerned the domain name has been registered for more than 11 years apparently without being used. Respondent has made not effort to refute Complainant’s contentions.
Respondent is not currently using the disputed domain name for any purpose. Respondent registered very similar domain names which offered used computer numerically controlled machines for sale. While it might not have been a problem if Respondent limited itself to machines properly manufactured by Complainant, Respondent did not do so. Respondent sold used machines that competed with Complainant’s machines while using Complainant’s mark. This domain name looks surprisingly similar to those domains. This shows a sufficient pattern or nexus for this Panel when considered with the 11 year period of inactivity. Therefore, this Panel finds Respondent registered and used the disputed domain name in bad faith.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <haas-used.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: July 15, 2011
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