national arbitration forum

 

DECISION

 

Haas Automation, Inc. v. Ideas Prototyped LLC

Claim Number: FA1109001405760

 

PARTIES

Complainant is Haas Automation, Inc. (“Complainant”), represented by Farah P. Bhatti of Buchalter Nemer, California, USA.  Respondent is Ideas Prototyped LLC (“Respondent”), Washington, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <haasmill.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.

 

Jonas Gulliksson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 1, 2011; the National Arbitration Forum received payment on September 6, 2011.

 

On September 1, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <haasmill.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 September 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 28, 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@haasmill.com.  Also on September 8, 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.

 

A timely Response was received and determined to be complete on September 26, 2011.

 

A timely additional submission was received from the Complainant on October 3, 2011.

 

On September 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jonas Gulliksson as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant has been using the HAAS mark in association with its computer numerically controlled (“CNC”) machine tools and mills for over twenty-seven years.  Complainant registered and has used the domain name <haascnc.com> since 2001. 

 

In addition to common law rights in the HAAS mark the Complainant owns the following United States Patent and Trademark Office (USPTO) trademark registrations: HAAS and Design (Reg. No. 2,573,776 registered May 28, 2002); HAAS AUTOMATION (Reg. No. 2,573,775 registered May 28, 2002); HAAS FACTORY OUTLET (Reg. No. 3,514,894 registered October 14, 2008); and HAAS FACTORY OUTLET (Reg. No. 3,533,101 registered November 18, 2008).

 

The Respondent acquired the disputed domain name in 2007 without permission to use the Complainant’s mark. The disputed domain name is confusingly similar to the Complainant’s HAAS mark as the domain name contains the Complainant’s mark entirely with the addition of the descriptive term “mill” and the generic top-level domain “.com.”  A portion of the Complainant’s product line is in mills and milling machines, thus making the term “mills” in the domain name descriptive.

 

The Respondent is not commonly known by the disputed domain name and the Complainant has not authorized the Respondent to use its HAAS mark in any way.  The WHOIS information for the disputed domain name identifies “Ideas Prototyped LLC” as the registrant, which does not imply that Respondent is commonly known by the disputed domain name.  Further, the Respondent registered the disputed domain name almost twenty-four years after the Complainant began using its HAAS mark.  The Respondent’s use of the disputed domain name does not confer rights or legitimate interests in the domain name to the Respondent.

 

The Respondent registered and is using the disputed domain name in bad faith with the intent of profiting from Complainant’s HAAS mark.  Respondent is using the domain name to attract Internet users to its website which contains numerous click-through links to Complainant’s competitors in the CNC product market. The Respondent registered the disputed domain name containing the HAAS mark in order to capture more of a web presence, which will drive up Internet user visits and thus produce more click-through fees.  

 

B. Respondent

The Respondent makes no contentions regarding Policy 4(a)(i). 

 

The Respondent is not currently using and has made no past use of the disputed domain name, but is planning to make use of it in the future.

 

The domain name was purchased with the intent to highlight the Respondent’s use of its Haas Milling machine for medical device startup companies and other, non-commercial, projects.  The Respondent has never used or authorized the Registrar, Godaddy.com, Inc., to use the domain name in question for displaying click-through links. Respondent has no control over the content that the Registrar has placed on its website and it is only the Registrar that has used the domain name.  The Respondent has not profited from the Registrar’s use of the domain name.

 

The disputed domain name was registered by the Respondent in good faith to create a website to highlight its use of one of the Complainant’s products.  The Respondent has not profited from the disputed domain name in any way and has not registered or used the disputed domain name in bad faith.

 

C. Additional Submission (Complainant)

Even if the Respondent has not made use of the domain name and if it’s Registrar, GoDaddy.com, is responsible for the use of the website it does not relieve the Respondent of fault and does not provide any evidence that the Respondent did not have bad faith in registering the Domain Name.

 

The Respondent has agreed to GoDaddy’s Parked Page Service Agreement, which allows GoDaddy.com to point the domain name or DNS to GoDaddy or one of its affiliate’s web pages so that advertisements could be placed on the webpage.  The Complainant has during 2010 to the Respondent sent two cease and desist letters informing the Respondent of the issue of the Parked Page Service Agreement and requesting transfer of the domain to the Complainant.  The Respondent has not answered these letters which is evidence of Respondent’s bad faith. In February 2011 the Respondent renewed the domain information for the disputed domain name and the Parked Page Service Agreement.  Respondent’s acquiescence to the Parked Page Service Agreement and its lack of action to remove the sponsored links or cancel the Agreement evidences Respondent’s bad faith.

 

FINDINGS AND 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."

 

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

 

The Complainant has submitted evidence of the registration of its trademarks HAAS and Design, HAAS AUTOMATION, and two different versions of HAAS FACTORY OUTLET through the United States Patent and Trademark Office (USPTO). Such registrations, regardless of whether they include a design element or not, are sufficient for the Complainant to establish rights in the asserted marks under Policy 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007). The Panel therefore finds that the Complainant holds the rights to the trademark HAAS.

 

A part of the Complainant’s product line is mills and milling machines, which makes the term “mills” descriptive when combined with HAAS. Thus, the addition of the descriptive word MILL to the trademark HAAS in the disputed domain name is insufficient to avoid the finding of confusing similarity as the incorporated trademark constitutes the dominant or principal component of the domain name. See Nintendo of Am., Inc. v. Gutierrez, D2009-0434 (WIPO June 8, 2009).

 

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The first element of the Policy is thus fulfilled.

 

Rights or Legitimate Interests

 

The Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) 

 

The Panel finds, based on the submitted WHOIS information on record, that the Respondent is not commonly known by the disputed domain name. Further, the Complainant’s argument that it has not authorized the Respondent to use its mark has not been disputed by the Respondent.

 

As the registrant of the domain name the Respondent is responsible for the content of a parked domain and how it is used. See St. Farm Mutual Auto. Insr. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007). The Respondent has not shown any preparations to use the domain name in connection with a bona fide offering of goods or services which could indicate a legitimate interest.  See  Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006).

 

In the light of what is stated above the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights and legitimate interest in the disputed domain name and that the Respondent has not shown that it holds the rights or legitimate interests to use the disputed domain name under Policy 4 (a)(ii). Therefore the Panel finds that the second element of the Policy is fulfilled.

 

Registration and Use in Bad Faith

The Complainant has to show that the Respondent has registered and is using the domain in bad faith. The UDRP Policy 4(b)(iv) states that if by using the domain name someone has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on someone’s web site or location, that shall be evidence of the registration and use of a domain name in bad faith.

 

The Respondent has stated that the disputed domain name was registered with the intent of highlighting the Respondent’s commercial and non-commercial use of its Haas Milling machine.  From the information given by the Respondent it is shown that the Respondent was aware of the HAAS trade mark at the time of the registration.

 

The submitted screen shot of the web page of the disputed domain name shows that it features various links to companies that appears to be in competition with the Complainant in the CNC product market.  The use of a website for click-through links to companies in competition with the Complainant is not a legitimate non-commercial fair use under Policy 4(c)(iii). That kind of use is likely to cause confusion to the customers as to source, sponsorship, affiliation or endorsement to the Complainant, exploit the Complainants goodwill and is evidence of bad faith registration and use. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005). The Panel finds that the evidence submitted by the Complainant supports a finding of bad faith as the use of the disputed domain name intends to attract Internet users for commercial gain by the sponsored links.

 

The two submitted cease and desist letters from the Complainant’s counsel to the Respondent in 2010 show that the Respondent was made aware of the fact that the web site provided links to products which directly compete with HAAS.  The Respondent has not commented on the Complainant’s statement that the respondent has not answered the letters, or on the awareness of the use of the web page for click-through links. Further, the Respondent has not presented any preparations to use the domain name for a bona fide purpose after having received the letters. The Panel finds this as evidence of bad faith. See Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006).

 

The Respondent’s statement that the Registrar is responsible for the content of the web page and that it has not received any income from it do not exclude bad faith under paragraph 4(b)(iv). The intention to attract Internet users “for commercial gain” does not necessarily mean the Respondent’s commercial gain. See Villeroy & Boch AG v. Pingerna, D2007-1912, (WIPO Feb.  14, 2008).

 

The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith. The third element of the Policy is thus fulfilled.

 

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

 

 

Jonas Gulliksson, Panelist

Dated:  October 13, 2011

 

 

 

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