national arbitration forum

 

DECISION

 

Haas Automation, Inc. v. Machine Tools 247 / Machine Tools 24/7 / Jon Beal

Claim Number: FA1202001430918

 

PARTIES

Complainant is Haas Automation, Inc. (“Complainant”), represented by Farah P. Bhatti of Buchalter Nemer, California, USA.  Respondent is Machine Tools 247 / Machine Tools 24/7 / Jon Beal (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <haasbuysell.com>, <haasbuysell.info>, <haasbuysell.net>, <haaslathe.com>, <haasmachine.net>, and <haasmachinetools.net>, registered with Network Solutions, LLC and the <haasvertical.com> domain name registered with eNom, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 22, 2012; the National Arbitration Forum received payment on February 23, 2012.

 

On February 23, 2012, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <haasbuysell.com>, <haasbuysell.info>, <haasbuysell.net>, <haaslathe.com>, <haasmachine.net>, <haasmachinetools.net>, and <haasvertical.com> domain names are registered with Network Solutions, LLC and that Respondent is the current registrant of the names.  Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 23, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <haasvertical.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 February 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 15, 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@haasbuysell.com, postmaster@haasbuysell.info, postmaster@haasbuysell.net, postmaster@haaslathe.com, postmaster@haasmachine.net, postmaster@haasmachinetools.net, and postmaster@haasvertical.com.  Also on February 24, 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 28, 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.   Complainant

 

    1. Complainant registered the HAAS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,573,776 registered May 28, 2002);
    2. Respondent’s <haasbuysell.com>, <haasbuysell.info>, <haasbuysell.net>, <haaslathe.com>, <haasmachine.net>, <haasmachinetools.net>, and <haasvertical.com> domain names are confusingly similar to Complainant’s HAAS mark;
    3. Some of Respondent’s disputed domain names resolve to websites offering used Haas Automation products for sale, while others resolve to a website that sells used Haas Automation Machinery;
    4. Respondent does not have rights or legitimate interests in the disputed domain names;
    5. Respondent registered and is using the disputed domain names in bad faith;
    6. Respondent has engaged in a pattern of bad faith registrations;
    7. Respondent had actual knowledge of Complainant’s rights in the HAAS mark when it registered the disputed domain names.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

Complainant holds a registered trademark for the HAAS mark with the United States Patent and Trademark Office.  Respondent did not submit a Response in this proceeding.

 

 

 

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.

 

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.”).

 

Identical and/or Confusingly Similar

 

Complainant contends that it has established its rights in the HAAS mark by registering it with the USPTO (e.g., Reg. No. 2,573,776 registered May 28, 2002).  Complainant submits trademark certificates for the HAAS mark and other marks that wholly incorporate the mark.  The Panel findS that Complainant has established its rights in the HAAS mark pursuant to Policy ¶ 4(a)(i) by registering it with the USPTO.  See 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).”); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).

 

Complainant also contends that Respondent’s <haasbuysell.com>, <haasbuysell.info>, <haasbuysell.net>, <haaslathe.com>, <haasmachine.net>, <haasmachinetools.net>, and <haasvertical.com> domain names are confusingly similar to its HAAS mark.  All of the disputed domain names include its entire mark, along with a generic top-level domain (“gTLD”).  The disputed domains include different combinations of the following generic and descriptive terms; “buy,” “sell,” “lathe,” “machine,” “tools,” and “vertical.”  The Panel finds that all of Respondent’s disputed domain names are confusingly similar to Complainant’s HAAS mark under Policy ¶ 4(a)(i) because Respondent failed to sufficiently differentiate the domain names from the 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 Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark).   

 

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

 

Rights or Legitimate Interests

 

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 a complainant successfully makes a prima facie case, a 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.

 

Complainant contends that Respondent is not commonly known by the disputed domain names.  Complainant states that the WHOIS information identifies the registrant of the disputed domain names as “Machine Tools 247 / Machine Tools 24/7 / Jon Beal.”  Therefore, based upon the uncontradicted evidence in the record, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See 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); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Complainant also contends that Respondent is not engaging in a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. Based upon the evidence presented regarding the <haasbuysell.com>, <haaslathe.com>, <haasmachine.net>, and  <haasmachinetools.net> domain names, the Panel finds that these specific domain names resolve to websites that offer links to Complainant and its competitors in the machining equipment field.    Accordingly, the Panel finds that the <haasbuysell.com>, <haaslathe.com>, <haasmachine.net>, and  <haasmachinetools.net> domain names are not being used to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

Although the Complainant did not provide documentary evidence of the websites to which the <haasbuysell.info>, <haasbuysell.net>, and <haasvertical.com> domain names resolve, the Complainant claims that these domain names resolve to websites or a website offering used Haas equipment for sale.  As this assertion is not contradicted, the Panel concludes that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of these domain names.  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.”)

 

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

 

Registration and Use in Bad Faith

 

Complainant claims that Respondent has engaged in a pattern of bad faith registrations prior to and throughout the course of this dispute, indicating bad faith registration and use of the <haasbuysell.com>, <haasbuysell.info>, <haasbuysell.net>, <haaslathe.com>, <haasmachine.net>, <haasmachinetools.net>, and <haasvertical.com> domain names.  Complainant submits an e-mail conversation from Respondent that appears to admit that prior UDRP disputes have occurred between these two parties.  Also, the Panel notes that multiple disputed domain names have been registered in this single matter.  Prior adverse UDRP proceedings, as well as multiple registrations in a single dispute, can establish a pattern of bad faith registration.  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 Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)). 

 

Complainant also claims that Respondent’s disputed domain names disrupt its business, demonstrating bad faith registration and use.  Complainant states that the disputed domain names resolve to either websites offering links to its competitors or websites offering Complainant’s used equipment for sale.  Thus, the Panel finds that Respondent registered and is using the <haasbuysell.com>, <haaslathe.com>, <haasmachine.net>, <haasmachinetools.net>, <haasbuysell.info>, <haasbuysell.net>, and <haasvertical.com> domain names in bad faith under Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors). 

 

Complainant also alleges that Respondent had actual knowledge of its rights in the HAAS mark prior to registering the disputed domain names.  Complainant states that the use of the disputed domain names indicates actual knowledge on the part of Respondent because of Respondent’s inclusion of links to Complainant and its competitors on the website to which the disputed domain names resolve.  Also, Complainant submits an e-mail conversation it had with Respondent indicating that Respondent is well-aware of the fact that Complainant had rights in the HAAS mark and that Complainant sells equipment.  Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant’s mark and as a result, registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii).  See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").

 

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

 

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 <haasbuysell.com>, <haasbuysell.info>, <haasbuysell.net>, <haaslathe.com>, <haasmachine.net>, <haasmachinetools.net>, and <haasvertical.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  April 6, 2012

 

 

Click Here to return to the main Domain Decisions Page.

Click Here to return to our Home Page