Haas Automation, Inc. v. Josh Butz
Claim Number: FA1202001429189
Complainant is Haas Automation, Inc. (“Complainant”), represented by Farrah P. Bhatti of Buchalter Nemer, California, USA. Respondent is Josh Butz (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <usedhaascncmachine.com>, registered with Go Daddy.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 10, 2012; the National Arbitration Forum received payment on February 14, 2012.
On February 13, 2012, Go Daddy confirmed by e-mail to the National Arbitration Forum that the <usedhaascncmachine.com> domain name is registered with Go Daddy and that Respondent is the current registrant of the name. Go Daddy has verified that Respondent is bound by the Go Daddy 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 February 15, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 6, 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@usedhaascncmachine.com. Also on February 15, 2012, 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 March 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
Complainant alleges that it has been associated with computer numerically controlled (“CNC”) machines and machine tools for over 27 years. In connection with this business, Complainant asserts that it has registered the HAAS and related marks with the United States Patent and Trademark Office (“USPTO”), including the following:
HAAS AUTOMATION Reg. No. 2,573,775 registered May 28, 2002 &
HAAS mark & Design Reg. No. 2,573,776 registered May 28, 2002.
Complainant argues that it has been using the HAAS mark to identify its business and machine tools since 1982 and operates a website under the mark at the <haascnc.com> domain name.
Complainant alleges that Respondent registered the <usedhaascncmachine.com> domain name on January 31, 2011, and uses the disputed domain name to resolve to a website that advertises used HAAS machines and other competing products for sale and also displays copyrighted images of Complainant’s products. Complainant argues that the disputed domain name is confusingly similar to Complainant’s mark and that Respondent’s use of the disputed domain name does not indicate rights and legitimate interests. Complainant contends that Respondent has offered to sell the disputed domain name to Complainant and that Respondent’s actions in connection with the disputed domain name indicate bad faith registration and use. Complainant also alleges that Respondent had notice of Complainant’s mark at the time it registered the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has been associated with computer numerically controlled (“CNC”) machines and machine tools for over twenty-seven years. In connection with this business, Complainant has registered the HAAS and related marks with the United States Patent and Trademark Office (“USPTO”), including the following:
HAAS AUTOMATION Reg. No. 2,573,775 registered May 28, 2002 &
HAAS mark & Design Reg. No. 2,573,776 registered May 28, 2002.
Complainant has been using the HAAS mark to identify its business and machine tools since 1982 and operates a website under the mark at the <haascnc.com> domain name.
The Respondent registered the <usedhaascncmachine.com> domain name on January 31, 2011, and uses the disputed domain name to resolve to a website that advertises used HAAS machines and other competing products for sale and also displays copyrighted images of Complainant’s products.
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.
(4) 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.”).
Complainant asserts that it has registered the HAAS and related marks with the USPTO, including the following:
HAAS AUTOMATION Reg. No. 2,573,775 registered May 28, 2002; &
HAAS mark & Design Reg. No. 2,573,776 registered May 28, 2002.
Based on prior UDRP decisions holding that USPTO trademark registrations are conclusive proof of rights in a mark, such as Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), and Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005), the Panel holds that Complainant has proven it owns rights to the HAAS AUTOMATION mark for the purposes of Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <usedhaascncmachine.com> domain name is confusingly similar to Complainant’s HAAS mark. Complainant argues that Respondent’s disputed domain name incorporates the mark, along with the generic or descriptive terms “used,” “cnc,” and “machine,” and the generic top-level domain (“gTLD”) “.com.” Complainant contends that merely adding generic or descriptive terms to the mark does nothing to prevent confusing similarity. The Panel finds that neither adding generic or descriptive terms nor attaching a gTLD has any distinguishing significance and thus the <usedhaascncmachine.com> domain name is confusingly similar to Complainant’s HAAS mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. MachineTools 24 7, FA 1304352 (Nat. Arb. Forum Mar. 12, 2010) (finding the <haasmachines.net> domain name confusingly similar to the HAAS AUTOMATION mark despite the addition of the descriptive term “machines” and the gTLD); see also 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)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After Complaint successfully makes a prima facie case, Respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“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 on to the shoulders of 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.”). The Panel holds that Complainant has made a prima facie case.
Because Respondent has failed to submit a response to these proceedings, the Panel may infer that Respondent admits to having no rights or legitimate interests in the domain name. In Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002), the panel held similarly, stating that “Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.” See also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). The Panel will, however, determine if Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c) based on evidence provided in the record.
Complainant asserts that it has not consented to Respondent’s use of the <usedhaascncmachine.com> domain name or the HAAS mark. Complainant also contends that Respondent is not affiliated with Complainant and is not licensed or permitted to use the HAAS mark or any of Complainant’s copyrighted materials. Complainant alleges that the WHOIS information for the disputed domain name lists the registrant as “Josh Butz,” which implies that Respondent is not commonly known by the disputed domain name. The Panel agrees with Complainant and finds that Respondent therefore lacks rights and legitimate interests according to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO March 14, 2000) (determining that the respondent lacked rights and legitimate interests in the disputed domain name because the complainant had not licensed or permitted the respondent to use the complainant’s mark and the respondent had not ever been commonly known by the disputed domain name); see also Haas Automation, Inc. v. Machine Tools 24 7, FA 1405779 (Nat. Arb. Forum Oct. 19, 2011 (holding that the respondent was not commonly known by the disputed domain name based on the WHOIS information’s failure to reveal a nominal connection between the respondent and the disputed domain name and the lack of other evidence).
Complainant alleges that Respondent’s <usedhaascncmachine.com> domain name resolves to a website that offers used HAAS machines and competing products for sale while displaying HAAS copyrighted product images and the HAAS logo. Complainant asserts that using the disputed domain name to divert consumers to a competing commercial website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel concludes that Respondent’s use of the domain name to sell both Complainant’s goods and other competing products has not satisfied Policy ¶ 4(c)(i) or 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 Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
Complainant claims that Respondent offered to sell the disputed domain name to Complainant. The Panel finds that such an offer to sell the domain name indicates that Respondent lacks rights and legitimate interests in the <usedhaascncmachine.com> domain name under Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent offered to sell the disputed domain name to Complainant after receiving Complainant’s cease and desist letter. Complainant argues that Respondent’s willingness and offer to sell the disputed domain name indicates bad faith registration and use under Policy ¶ 4(b)(i). The Panel agrees. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
Complainant contends that Respondent registered and uses the <usedhaascncmachine.com> domain name and prominently displays Complainant’s logo and copyrighted pictures in order to intentionally attract Complainant’s consumers to the resolving website and create a likelihood of confusion as to Complainant’s sponsorship of, or affiliation with, Complainant’s HAAS mark. As Complainant asserts that the disputed domain name redirects Internet users to a commercial website where Respondent purportedly sells used HAAS machines and competitors’ products, Complainant argues that Respondent’s use of the disputed domain name is intended to produce commercial gain for Respondent, which is evidence of bad faith. Using a confusingly similar disputed domain name to attract consumers to a website selling Complainant’s products, along with others’ products, is evidence of bad faith registration and use. See 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); see also 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). The Panel therefore finds that Respondent’s attempt to commercially gain, as a result of attracting consumers with its use of Complainant’s mark and creating a likelihood of confusion, indicates bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv).
Complainant asserts that it is inconceivable that Respondent was not aware of Complainant’s trademark when it registered the disputed domain name given the well-known status of Complainant’s mark. Complainant also argues that Respondent’s combination of the HAAS mark with the terms “CNC” and “machine” indicates that Respondent was aware of Complainant and its primary products. While past panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel holds that, due to the fame of Complainant’s mark and the content of the resolving website, Respondent had actual knowledge of Complainant’s rights at the time it registered the disputed domain name. The Panel thus determines that Respondent registered the <usedhaascncmachine.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See The Way Int’l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) (“As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Complainant’s rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii)); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware of the complainant’s YAHOO! mark at the time of registration”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <usedhaascncmachine.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: March 23, 2012
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