national arbitration forum

 

DECISION

 

Haas Automation, Inc. v. WEB MASTER / FHD International / FHD International LLC

Claim Number: FA1303001490968

 

PARTIES

Complainant is Haas Automation, Inc. (“Complainant”), represented by Farah P. Bhatti of Buchalter Nemer, California, USA.  Respondent is WEB MASTER / FHD International / FHD International LLC (“Respondent”), Idaho, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <haasvalves.co>, <haasballscrews.co>, <haasservos.co>, <haasrentals.co>, <haascables.co>, <haascovers.co>, <haasinverters.co>, <haaslubrication.co>, <haasbearings.co>, <haasmonitors.co>, <haasmotors.co>, <haaspowersupplies.co>, <haaspumps.co>, <haasrotaries.co>, <haashelp.co>, <haassupport.co>, and <haasspindles.co>, registered with GoDaddy.com, LLC.

 

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 March 21, 2013; the National Arbitration Forum received payment on March 22, 2013.

 

On March 25, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <haasvalves.co>, <haasballscrews.co>, <haasservos.co>, <haasrentals.co>, <haascables.co>, <haascovers.co>, <haasinverters.co>, <haaslubrication.co>, <haasbearings.co>, <haasmonitors.co>, <haasmotors.co>, <haaspowersupplies.co>, <haaspumps.co>, <haasrotaries.co>, <haashelp.co>, <haassupport.co>, and <haasspindles.co> domain names is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 March 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 15, 2013 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@haasvalves.co, postmaster@haasballscrews.co, postmaster@haasservos.co, postmaster@haasrentals.co, postmaster@haascables.co, postmaster@haascovers.co, postmaster@haasinverters.co, postmaster@haaslubrication.co, postmaster@haasbearings.co, postmaster@haasmonitors.co, postmaster@haasmotors.co, postmaster@haaspowersupplies.co, postmaster@haaspumps.co, postmaster@haasrotaries.co, postmaster@haashelp.co, postmaster@haassupport.co, and postmaster@haasspindles.co.  Also on March 26, 2013, 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 April 22, 2013, 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 claims rights in the HAAS trademark with the United States Patent & Trademark Office (“USPTO”) (Reg. No. 2,573,776 registered May 28, 2002), as well as the HAAS AUTOMATION (Reg. No. 2,573,775 registered May 28, 2002) and the HAAS FACTORY OUTLET (Reg. No. 3,514,894 registered Oct. 14, 2008) marks.
    2. Respondent registered the <haasvalves.co>, <haasballscrews.co>, <haasservos.co>, <haasrentals.co>, <haascables.co>, <haascovers.co>, <haasinverters.co>, <haaslubrication.co>, <haasbearings.co>, <haasmonitors.co>, <haasmotors.co>, <haaspowersupplies.co>, <haaspumps.co>, <haasrotaries.co>, <haashelp.co>, <haassupport.co>, and <haasspindles.co> domain names on February 24, 2012.
    3. The disputed domain names contain Complainant’s HAAS mark in its entirety, with only the addition of generic or descriptive terms and the country code top-level domain (“gTLD”) “.co.”
    4. Respondent has not been commonly known by the disputed domain names, and Complainant has not authorized Respondent to use its HAAS marks.
    5. Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to divert Internet users to its own websites, which simply feature pictures of Complainant’s products.
    6. Respondent has engaged in a pattern of registering domain names containing Complainant’s HAAS marks.
    7. Respondent is diverting Internet users to its own websites by creating confusion with Complainant’s marks, and presumably profiting.
    8. Respondent is not making an active use of the websites, beyond displaying a picture of Complainant’s products.
    9. Respondent had actual or constructive knowledge of Complainant’s rights in the mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the HAAS marksRespondent’s <haasvalves.co>, <haasballscrews.co>, <haasservos.co>, <haasrentals.co>, <haascables.co>, <haascovers.co>, <haasinverters.co>, <haaslubrication.co>, <haasbearings.co>, <haasmonitors.co>, <haasmotors.co>, <haaspowersupplies.co>, <haaspumps.co>, <haasrotaries.co>, <haashelp.co>, <haassupport.co>, and <haasspindles.co> domain names are confusingly similar to Complainant’s HAAS marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <haasvalves.co>, <haasballscrews.co>, <haasservos.co>, <haasrentals.co>, <haascables.co>, <haascovers.co>, <haasinverters.co>, <haaslubrication.co>, <haasbearings.co>, <haasmonitors.co>, <haasmotors.co>, <haaspowersupplies.co>, <haaspumps.co>, <haasrotaries.co>, <haashelp.co>, <haassupport.co>, and <haasspindles.co>domain names, and that Respondent registered and uses the domain names in bad faith. 

 

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.

 

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 claims rights in the HAAS trademark based in its registrations of the mark (e.g., Reg. No. 2,573,776 registered May 28, 2002) with the USPTO for the sale of machine tools and computerized numerical controls. A complainant’s registration of a mark with the USPTO is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Therefore, the Panel finds that Complainant has established rights in the HAAS mark for the purposes of Policy ¶ 4(a)(i).

 

Complainant claims that the <haasvalves.co>, <haasballscrews.co>, <haasservos.co>, <haasrentals.co>, <haascables.co>, <haascovers.co>, <haasinverters.co>, <haaslubrication.co>, <haasbearings.co>, <haasmonitors.co>, <haasmotors.co>, <haaspowersupplies.co>, <haaspumps.co>, <haasrotaries.co>, <haashelp.co>, <haassupport.co>, and <haasspindles.co> domain names are confusingly similar to its HAAS mark. The addition of a gTLD such as “.co” is irrelevant to a Policy ¶ 4(a)(i) confusing similarity comparison. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The disputed domain names each contain Complainant’s HAAS mark in its entirety, with only the addition of descriptive terms such as “cables” and “valves” which describe Complainant’s products. The addition of descriptive words is insufficient to distinguish a domain name from a complainant’s mark. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights.  The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”). Therefore, the Panel finds that the <haasvalves.co>, <haasballscrews.co>, <haasservos.co>, <haasrentals.co>, <haascables.co>, <haascovers.co>, <haasinverters.co>, <haaslubrication.co>, <haasbearings.co>, <haasmonitors.co>, <haasmotors.co>, <haaspowersupplies.co>, <haaspumps.co>, <haasrotaries.co>, <haashelp.co>, <haassupport.co>, and <haasspindles.co>  domain names are confusingly similar to Complainant’s HAAS mark for the under Policy ¶ 4(a)(i).

 

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 names. 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 argues that Respondent has not been commonly known by the disputed domain names and has therefore not demonstrated rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). The WHOIS information identifies “WEB MASTER / FHD International / FHD International LLC” as the registrant of the disputed domain names. Complainant states that it is not affiliated with Respondent and has not authorized Respondent to use the HAAS mark. Nominally unsupportive WHOIS information and a lack of authorization constitute strong evidence that a respondent is not commonly known by a domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names and has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).

 

Complainant also argues that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus fails to establish rights under Policy ¶¶ 4(c)(i) and 4(c)(iii). Rather, Complainant contends that Respondent uses the disputed domain names to divert Internet users to its own websites, which simply feature pictures of Complainant’s products. These type of diversion of internet users does not represent a bona fide offering or legitimate use under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Accordingly, the Panel finds that Respondent has not established rights or legitimate interests under Policy ¶¶ 4(c)(i) and 4(c)(iii).

 

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

Registration and Use in Bad Faith

Complainant contents that Respondent has established a pattern of bad faith registration and use of domain names containing the HAAS mark. Complainant notes that it has previously been involved in UDRP decisions against Respondent, including one which involved domain names that are identical to those disputed in this proceeding, but with the gTLD “.com” instead of “.co.” Haas Automation, Inc. v. CNCLISTINGS, LLC / Brian Denny, FA 1385849 (Nat. Arb Forum June 15, 2011). Although the listed Respondent name is different than here, Complainant argues that Respondent has used different names and entities to register infringing domain names, and that each name has the same listed address. Because the Panel finds Respondent has demonstrated a pattern of bad faith registration, the Panel finds find bad faith registration and use in this case under Policy ¶ 4(b)(ii). See TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).

 

Complainant also claims that Respondent is diverting Internet users to its own websites by creating confusion with Complainant’s marks, and presumably profiting. The deliberate diversion of Internet users in such circumstances represents bad faith registration and use under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Therefore, the Panel finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv).

 

Finally, Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the HAAS mark. Complainant argues that Respondent’s previous registrations and UDRP decisions involving the HAAS mark, as well as its display of pictures of Complainant’s products, indicates that Respondent had actual knowledge of Complainant's mark and rights. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore that Respondent registered 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)(ii).

 

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 <haasvalves.co>, <haasballscrews.co>, <haasservos.co>, <haasrentals.co>, <haascables.co>, <haascovers.co>, <haasinverters.co>, <haaslubrication.co>, <haasbearings.co>, <haasmonitors.co>, <haasmotors.co>, <haaspowersupplies.co>, <haaspumps.co>, <haasrotaries.co>, <haashelp.co>, <haassupport.co>, and <haasspindles.co> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  May 1, 2013

 

 

 

 

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