Haas Automation, Inc. v. Machine Tools 24-7 / Jon Beal
Claim Number: FA1201001425055
Complainant is Haas Automation, Inc. (“Complainant”), represented by Farah P. Bhatti of Buchalter Nemer, California, USA. Respondent is Machine Tools 24-7 / Jon Beal (“Respondent”), represented by Jon Beal, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <usedhaascncmachines.info>, <usedhaascncmachine.net>, <usedhaascnc.net> and <usedhaascnc.info>, registered with eNom, Inc., and <usedhaascnc.co>, <usedhaascncmachine.info>, <usedhaascncmachines.co>, and <usedhaascncmachines.net>, registered with GoDaddy.com 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.
Charles A. Kuechenmeister, Panelist
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 17, 2012; the National Arbitration Forum received payment on January 18, 2012.
On January 18, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <usedhaascncmachines.info>, <usedhaascncmachine.net>, <usedhaascnc.net>, and <usedhaascnc.info> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. 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”).
Also on January 18, 2012, GoDaddy.com Inc. confirmed by e-mail to the National Arbitration Forum that the <usedhaascnc.co>, <usedhaascncmachine.info>, <usedhaascncmachines.co>, and <usedhaascncmachines.net> domain names are registered with GoDaddy.com Inc. and that Respondent is the current registrant of the names. GoDaddy.com Inc. has verified that Respondent is bound by the GoDaddy.com Inc. registration agreement and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 25, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 14, 2012 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@usedhaascnc.co, postmaster@usedhaascnc.info, postmaster@usedhaascnc.net, postmaster@usedhaascncmachine.info, postmaster@usedhaascncmachine.net, postmaster@usedhaascncmachines.co, postmaster@usedhaascncmachines.info, and postmaster@usedhaascncmachines.net. Also on January 25, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 February 13, 2012.
A timely Additional Submission by Complainant was received and determined to be complete on February 22, 2012.
On February 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Charles A. Kuechenmeister as Panelist.
A timely Additional Submission by Respondent was received and determined to be complete on February 24, 2012.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
A. Complainant
Haas Automation Inc. (“Haas” “Complainant”) manufactures and sells machine tools, including computer numerically controlled (CNC) machines, and related services worldwide. It has done so for over 27 years under the name and mark HAAS (the HAAS Mark”). In addition to its common law trademark rights in that mark, it registered the HAAS AUTOMATION mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,573,776) on May 28, 2002. The registration states that Haas claims no exclusive use of the term automation included in that trademark apart from its use in connection with the name HAAS.
Haas has sold its new and used machines on its website at <haascnc.com> for the past 15 years or so.
The Domain Names are confusingly similar to the HAAS Mark, as they incorporate the HAAS Mark verbatim. The addition of the descriptive, generic terms “used,” “CNC” and “machines,” and top level domains does not distinguish the Domain Names from the HAAS Mark for the purposes of Policy ¶ 4(a)(i).
Respondent is neither affiliated with, nor has it been licensed or permitted to use the HAAS Mark or any domain names incorporating this mark. Complainant has requested that Respondent cease all use of its mark in registering its Domain Names. Accordingly, Respondent has no rights to or legitimate interests in the Domain Name.
Respondent is using the Domain Names to attract and/or divert customers to a site providing competing goods. On information and belief, Respondent derives benefit from this use of the Domain Names. Such usage does not constitute use in connection with a bona fide offering of goods or making a legitimate noncommercial fair use of the Domain Names for the purposes of Policy ¶ 4(c)(i) and (iii).
Respondent is in the business of selling used machine tools. The Domain Names resolve to his website that offers used HAAS machines and competing products for sale. The site prominently displays Complainant’s HAAS trademark. These goods are identical to the goods of Complainant.
Respondent is not commonly known by the Domain Names, either as a business, individual or other organization. See Policy ¶ 4(c)(ii). Respondent has used the company name Machine Tools 24-7 and the individual name Jon Beal to register the Domain Names and has used this as the administrative contact. Nothing in the Respondent’s WHOIS information implies that Respondent is “commonly known” by the Domain Names.
Respondent registered the disputed domain names (the “Domain Names”) on April 6, 2011. Respondent previously registered the domains <haashachines.net> and <usedhaasmachines.com>. Complainant successfully filed UDRP complaints against Respondent with regard to the <haasmachines.net> and <usedhaasmachines.com> domains, which Respondent was using in a manner identical to the uses being made of the Domain Names in this case. Such domains were ordered to be transferred to Complainant on March 2, 2010 and October 19, 2011 respectively. The Domain Names involved in this case were all registered after the first decision of March 2, 2010 was rendered. Respondent thus had actual knowledge not only of the existence of Complainant and its rights with respect to the HAAS Mark but of the fact that Respondent’s use of the Domain Names for such purposes were in violation of the rights of the Complainant and the provisions of the Policy.
Complainant contacted Respondent via telephone to discuss the registration of the Domain Names and requested that the Domain Names be transferred to Complainant based on the prior UDRP decisions. Respondent agreed to transfer the Domain Names only in exchange for Complainant’s assistance in providing search engine optimization (SEO) services to allow Respondent to continue its market share of customers. When Complainant refused to assist Respondent in this manner, Respondent refused to cooperate. Respondent’s response to Complainant’s refusal to provide financial assistance for SEO services clearly is indicative of Respondent’s bad faith intent in registering the Domain Names and clearly shows Respondent’s awareness that it knowingly registered the Domain Names to profit off the goodwill of Complainant’s Marks.
Respondent is using the Domain Names to redirect Internet users to its commercial website where Respondent purports to sell HAAS machines and the machines of Haas’ competitors. Respondent registered the Domain Names with the intent to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s Marks as to the source, sponsorship, affiliation or endorsement of Respondent’s website, as it has done with its previous registrations of the <haasmachines.net> and <usedhaasmachines.com> domain names. Respondent’s registration of the Domain Names misleadingly diverts Internet traffic from Complainant’s website to Respondent’s for commercial gain and is evidence of bad faith under Policy ¶ 4(b)(iv).
B. Respondent
Complainant is attempting to include eight (8) domain(s) in this action; Respondent contends each domain should be filed as a separate case for review by the National Arbitration Forum, each filing and domain should be held to stand on their own merit.
The parties’ domain names are different in form and function on every level. Respondent chose the Domain Names because it sells used machines and Complainant does not. By incorporating the words Used and Machines Respondent clearly separates the domain and its business activities from that of the Complainant.
Respondent’s web site clearly states “We Are Not Affiliated With Haas Automation.”
The Trademark and/or Service Mark in question is HAAS (all uppercase) in the form of a logo, HAAS AUTOMATION (all uppercase) and HAAS FACTORY OUTLET (all uppercase). The Domain Names do not show or refer to or use the aforementioned Trade or Service Marks.
Respondent has never received any inquiry where the consumer ever confused Respondent with Haas Automation. Complainant has not demonstrated or offered any proof that Respondent’s web site has created confusion of any kind as to the purpose or intention of domain in question.
Respondent has a legitimate interest in the Domain Names as Used Haas Machines are popular with its customers and they request by name (Haas) that Respondent purchase Used Haas Machines, or locate and sell to them Used Haas Machines on a daily basis. Respondent has not received inquiries of any type that were in conflict with Complainant’s business. Respondent has been selling used Haas machines and other machine tools for over fifteen (15) years and has an extensive database of customers looking to buy and sell machines of all types. Respondent’s clientele look towards it to buy and sell Used Haas Machines on their behalf, and Respondent has been known throughout the manufacturing community as a reliable and creditable source for Used Hass Machines, while Hass Automation has not.
Complainant has singled out Respondent and targeted Respondent to restrain its ability to conduct business. Evidence of this is Complainant’s lack of enforcing its stated policy to protect trademark from all violators. Case in point: <usedhaascncmachine.com>. These people are not associated with Complainant in any manner, and even use Complainant stock photos (copied from Complainant’s Site) on their site. Respondent has informed Complainant of this violation of their stated policy and they have chosen to take no action.
Respondent has just as much right to use the name “Used Haas . . .” in any fashion, in the pursuit of machine tools sales as does Haas Automation. Respondent is in the business of buying and selling all types and manufacturers machines, Haas just happens to be one of the machines it sells.
Respondent obtained the Domain(s) in questions for the purpose of promoting an individual it will be hiring with the last name of “Haas”. It would be inconceivable that the Complainant or the National Arbitration Forum would limit this individual from using his name to sell (Haas) machine tools.
Respondent did not register the Domain Names in bad faith toward Haas or any other entity. Quite the contrary, it promotes Haas machines in a very positive light and thinks they make an excellent line of products.
Respondent has never purchased a Domain Name then attempted, nor will it ever attempt to sell, rent or transfer domain to the Complainant or any other entity in a manner which would lead someone to believe we purchase Haas domain(s) strictly to sell.
Respondent did not obtain any Domain Name in an effort to prevent owner of a trademark from obtaining said domain. In fact Complainant has not made an effort to secure many common domains relative to its trade mark or business, See Exhibit 2. It appears the Complainant is more interested in some form of Restraint of Trade. For the money and time spent filing a complaint against the Respondent, it might be better served to secure its mark on the web by purchasing the domains it wants.
Respondent has not limited Complainant’s use of trademark on its web site(s). If Complainant wishes Respondent to place Complainant’s trademark on Respondent’s site Respondent would be happy to comply. If Complainant desires to register a web site that reflects its intention to sell Used Haas Machines Respondent would not have any objection.
The Complainant has not demonstrated any disruption in its business as a result of said domain. In fact, Respondent’s promotion of Haas Automation is done in such a manner as to promote Haas Automation Products.
C. Complainant’s Additional Submission
Paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name if the names are registered by the same domain name holder.
The dominant portion of Complainant’s HAAS AUTOMATION trademark is HAAS, which is incorporated verbatim into the Domain Names. Moreover, this is a typed mark, in addition to the logo mark to which Respondent refers.
Complainant does sell used machines on its website.
Respondent’s use of a disclaimer (that it is not affiliated with Haas) is not sufficient to avoid confusion.
The fact that Complainant has not registered every single domain name containing its trademark is immaterial.
Respondent’s business of selling Haas machines does not give it any right to use the HAAS Mark in the Domain Names.
Respondent’s denial of intent to sell the Domain Names does not negate its bad faith registration and use thereof based upon other grounds.
Respondent’s operation of a website resolving from the Domain Names which competes directly with Complainant’s website evidences bad faith. At that website, Respondent sells not only Haas products but those of other manufacturers as well. Respondent has registered the Domain Names to attract consumers for its own commercial gain and has created a website which implies that Respondent is affiliated with, sponsored by, or associated with Complainant, which is not true.
Respondent has not offered any evidence that it is known by the name HAAS or any variation thereof.
D. Respondent’s Additional Submission
The precedents cited by Complainant are not applicable to this case.
Complainant was not selling used machines on its website at the time the Domain Names were registered. This is important because all of the Domain Names incorporate the term and concept of used machines. This in turn precludes or eliminates any possibility of confusion arising out of Respondent’s use of the Domain Names because the manufacturing community associates used Haas machines with Respondent’s business, not Complainant’s.
Respondent’s website does not compete with that of Complainant.
Respondent has a legitimate interest in and should be able to use the Domain Names because it sells Haas machines on its website.
Respondent makes additional allegations and assertions which essentially repeat those made in its Response.
Preliminary Matter
Respondent asserts that Complainant must file a separate complaint addressing each of the Domain Names individually. The Panel concurs with Complainant on this point. Rule 3(c) is clear that a complaint may relate to more than one domain name if the names are registered by the same domain name holder. That rule is applicable in this case and controls. All of the Domain Names may properly be addressed in this proceeding, and the Panel will do so.
Merits of the Case
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
The Panel makes the findings and determinations set forth below with respect to the Domain Names at issue between the parties.
Complainant has established its rights in the HAAS mark for the purposes of Policy ¶ 4(a)(i) under common law by using it in commerce for at least 27 years and also by registering it with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,573,776 registered May 28, 2002). 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, Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
The Domain Names are confusingly similar to Complainant’s HAAS Mark. All of them include the entire HAAS Mark, adding the descriptive term “used,” various combinations of the terms “cnc,” “machine,” and/or “machines,” and a generic top-level domain (“gTLD”), like “.net” or “.info,” or the country code top-level domain (“TLD”) “.co.” Even with these changes made to Complainant’s mark by Respondent to create the Domain Names, the Panel finds that the Domain Names are confusingly similar to Complainant’s HAAS Mark for the purposes of Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Disney Enter. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the alterations to the complainant’s DISNEY mark in the respondent’s <finestdisneyhomes.com> domain name are insufficient to differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i)); see also Weeby Inc. v. Goldstein, FA 1385237 (Nat. Arb. Forum May 20, 2011) (stating that “adding a ccTLD to a registered mark does not result in a unique domain name”).
Respondent’s claim that the concept of “used” machines being offered for sale on its website as opposed to only new machines being offered on Complainant’s is likewise immaterial, even if true. Addition of the term “used” to Complainant’s HAAS Mark in the Domain Names is insufficient to distinguish them from the HAAS Mark for the purposes of Policy ¶ 4(a)(i). Confusing similarity is determined by comparing a disputed domain name to the complainant’s mark, on their respective faces, not based upon an analysis of the details of their respective business operations.
Respondent contends that there is no confusing similarity between the Domain Names and the HAAS Mark because the latter is registered with the USPTO in uppercase letters, and as a logo. The Panel notes that while one of Complainant’s registrations is indeed for a stylized logo the others, and particularly that registered as No.2,573,775 on May 28, 2002, is a typed name, HAAS AUTOMATION, and the registration itself states that Complainant disclaims any exclusive right to “automation” apart from the mark as shown. See Exhibit 9 to Amended Complaint. HAAS is the dominant component of that trademark, and it is incorporated exactly as written into all of the Domain Names. The distinction between uppercase and lower case is immaterial for the purposes of Policy ¶ 4(a)(i).
Respondent also asserts that it has received no indication from its customers of actual confusion on their part between Complainant and Respondent, and that Complainant has not demonstrated any actual confusion either. These assertions likewise are not sufficient to negate the confusing similarity between the HAAS Mark and the Domain Names that appears on their face.
Finally, Respondent contends that the disclaimer appearing in its website, stating that it is not affiliated with Complainant, is sufficient to prevent any confusion. The Panel rejects this as well. The use of a disclaimer on a website does not mitigate initial interest confusion and thus, does not obviate a finding of confusion. See AltaVista Co. v. AltaVisa, FA 95480 (NAF Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer.”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant).
Based upon the foregoing, the Panel finds that the Domain Names are confusingly similar to the HAAS Mark for the purposes of Policy ¶4(a)(i), and that Complainant has substantial and demonstrated rights in that mark.
If a complainant makes a prima facie case that the respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii), 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) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interest in the disputed domain name under UDRP ¶ 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 AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant asserts that Respondent’s lack of right or legitimate interest in the Domain Name is demonstrated by several circumstances present in this case: (1) Respondent has not been licensed or permitted to use the HAAS Mark or any domain names incorporating that mark, (2) Respondent is not commonly known by the Domain Names or any variation thereof, and (3) Respondent’s practice of using the Domain Names to operate a website that directly competes with Complainant is not a bona fide offering of goods and services. On these facts it appears that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the Domain Name. It is thus incumbent upon Respondent to demonstrate that it does.
Respondent’s principal contention in this regard is that it is known in the manufacturing community as a reliable and creditable source for used Haas machines, as distinguished from Complainant, which (according to Respondent, disputed by Complainant) is not. Respondent may well be known in the community as a vendor of used Haas equipment, but it has not shown that it is known as such by the name HAAS. The relevant evidence presented consists exclusively of the WHOIS information, which demonstrates that Respondent, which admittedly does sell used Haas equipment, is known by its own corporate name, Machine Tools 24-7 and by the name of its individual principal, Jon Beal. Not HAAS or even “used Haas.” The only entity present here which has demonstrated that it is known by the name HAAS is Complainant. The Panel finds that Respondent is not commonly known by the disputed domain name 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent also asserts that because it offers Haas machines for sale on its website, it is using the Domain Names in connection with a bona fide offering of goods or services, within the meaning of Policy ¶ 4(c)(i). It is well settled, however, that using the tradename of a competitor to sell products manufactured by that competitor, in competition with that entity, does not qualify as such. Complainant never authorized Respondent to use its mark on the Internet to sell its products, used or otherwise. This use does not qualify as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
The Panel notes further in this connection that Policy ¶ 4(c)(i) provides that any purported bona fide offering of goods or services under a domain name must begin before any notice to respondent of the dispute, i.e., in this case Complainant’s claims to the HAAS mark. Given the prior UDRP proceedings involving these same parties over similarly-infringing domain names, Respondent’s claim of bona fide offering of goods or services under the Domain Names involved here can have no possible merit. See, Haas Automation, Inc. v. MachineTools 247 (NAF 1304352 Mar. 12, 2010), and Haas Automation, Inc. v. MachineTools 247, FA 1405779 (Nat. Arb. Forum Oct. 19, 2011). The first of these cases was decided before Respondent registered the Domain Names involved in this case.
Based upon the foregoing, the Panel concludes that the Respondent has no right or legitimate interests in respect of any of the Domain Names.
By incorporating the HAAS Mark into its Domain Names as it has, Respondent is clearly attempting to make Internet users believe that the Respondent either is the Complainant or is selling Complainant’s “used Haas cnc machines” pursuant to some kind of dealership or other authorized relationship with Complainant, neither of which is true. This is not a new concept for Respondent. These same parties were involved in two separate UDRP proceedings within the past year on facts which are virtually indistinguishable from the facts in this case. Respondent had registered and was using multiple domains that included Complainant’s HAAS Mark and resolved to a website owned by Respondent that sold used HAAS equipment. In both of those cases the disputed domain names were ordered transferred from Respondent to Complainant. See, Haas Automation, Inc. v. MachineTools 247 (NAF 1304352 Mar. 12, 2010), and Haas Automation, Inc. v. MachineTools 247, FA 1405779 (Nat. Arb. Forum Oct. 19, 2011). As noted above, the first of these cases was decided before Respondent registered the Domain Names involved in this case.
This conduct is compelling evidence of bad faith registration and use in several respects. First of all Respondent is clearly using the Domain Names to attract, for its commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s HAAS Mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. This falls within one of the indicia of bad faith registration and use explicitly set out in the Policy. See, Policy ¶ 4(b)(iv). Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant).
Further, Respondent’s Domain Names disrupt Complainant’s competing business, which also demonstrates bad faith registration and use under Policy ¶ 4(b)(iii). See 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).”); see also Caterpillar Inc. v. Vine, FA 97097 (Nat. Arb. Forum June 22, 2001) (“Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant's business of authorizing dealers to sell its CATERPILLAR equipment.”).
Finally, Respondent’s pattern of infringing on Complainant’s mark and attempting thereby to prevent Complainant from reflecting its own mark in a domain name, is evidence of bad faith registration and use under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)).
For the reasons set forth above, the Panel concludes that the Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
It is Ordered that the <usedhaascnc.co>, <usedhaascnc.info>, <usedhaascnc.net>, <usedhaascncmachine.info>, <usedhaascncmachine.net>, <usedhaascncmachines.co>, <usedhaascncmachines.info>, and <usedhaascncmachines.net> domain names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: February 29, 2012
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