Haas Automation, Inc. v. Mike Morrison
Claim Number: FA1307001511363
Complainant is Haas Automation, Inc. (“Complainant”), represented by Farah P. Bhatti of Buchalter Nemer, California, USA. Respondent is Mike Morrison (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <haascnc.co>, registered with GoDaddy.com, LLC.
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.
Beatrice Onica Jarka as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 24, 2013; the National Arbitration Forum received payment on July 26, 2013.
On July 24, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <haascnc.co> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 July 26, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 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@haascnc.co. Also on July 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.
A timely Response was received and determined to be complete on August 14, 2013.
Complainant submitted an Additional Submission on August 19, which was found to be compliant.
Respondent submitted an Additional Submission on August 26, 2013, which was found to be compliant.
On August 27, 2013 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice Onica Jarka 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant
1. Complainant owns trademark registrations incorporating the HAAS mark through the United States Patent and trademark Office (“USPTO”);
a. HAAS (Reg. No. 2,573,776 registered May 28, 2002)
b. HAAS AUTOMATION (Reg. No. 2,573,775 registered May 28, 2002)
c. HAAS FACTORY OUTLET (Reg. No. 3,533,101 registered November 18, 2008) and (Reg. No. 3,514,894 registered October 14, 2008)
d. Complainant has worldwide recognition for the HAAS mark, which has been associated with Complainant for over 30 years.
e. Complainant owns its official domain name located at <haascnc.com> which was registered in 1996.
2. Respondent’s <haascnc.co> domain name is confusingly similar to Complainant’s registered marks incorporating the HAAS mark.
a. Respondent’s <haascnc.co> domain name contains Complainant’s entire mark with the addition of the generic term “CNC” which stands for “computer numerically controlled”.
b. Respondent’s <haascnc.co> domain name features Complainant’s official website with the “.co” country-code top-level domain (“ccTLD”) in replacement of the “.com” featured in Complainant’s <haascnc.com> official website.
3. Respondent has no rights or legitimate interests in the <haascnc.co> domain name.
a. Complainant has not consented to Respondent’s use of the <haascnc.co> domain name.
b. Respondent is not commonly known by the disputed domain name.
c. Respondent is not using the <haascnc.co> domain name in connection with a bona fide offering of goods or services or making a legitimate noncommercial fair use of the disputed domain name.
d. Respondent’s <haascnc.co> domain name resolves to a website promoting third party commercial websites and click-through links.
4. Respondent has registered and is using the <haascnc.co> domain name in bad faith.
a. Respondent registered the disputed domain name with the intent to attract users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website.
b. Respondent is misleadingly diverting Internet traffic from Complainant’s website to Respondent’s website for commercial gain.
c. Respondent was aware of Complainant , Complainant’s official website, and its registered mark at the time Respondent registered the <haascnc.co> domain name.
Response
B. Respondent
1. Respondent agrees that the <haascnc.co> domain name is confusingly similar to Complainant’s trademark.
2. Respondent has a legitimate interest in the <haascnc.co> domain name because it is an acronym for “Helping All American Senior Citizens Needing Care”
3. Respondent did not register the disputed domain name in bad faith.
a. Respondent has not attempted to sell the domain name.
b. Respondent has neither redirected Internet traffic nor profited from third party links being present in any way.
Additional Submissions
C. Complainant’s Additional Submissions:
1. Complainant sent a cease and desist letter to Respondent on June 6, 2012.
2. Using the disputed domain name as an acronym does not provide Respondent with any rights or legitimate interests in the disputed domain name.
3. Prior to Complainant filing the Complaint, Respondent’s website resolved to a parked webpage providing third party links to Complainant’s competitors.
4. Respondent modified its website after receiving notification that this UDRP complaint was filed.
5. There is no evidence indicating that the “HAASCNC” term is an accepted acronym for Respondent’s use.
6. Respondent fabricated the acronym in order to avoid a finding of no legitimate rights or interests in the domain name.
7. Respondent works for a company which provides software for Complainant’s machines and thus has knowledge of Complainant and its marks.
8. Respondent agreed to have GoDaddy.com set up a parked page in order to generate revenue from websites that are not actively being used.
9. Respondent is responsible for the content on its website, and it failed to take action against the third party links present on its resolving website.
10. Respondent has infringed on the goodwill of Complainant.
D. By its additional submissions, the Respondent:
1. Restates the same arguments and contends that “HAASCNC” is an acronym and that the website to which the disputed domain name resolves does not display links which are directed to a competitor of Complainant
2. Requests that a finding for Reverse Domain Hijacking is made by the Panel
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.
Complainant provides evidence of its registrations with the USPTO for the marks featuring the HAAS mark including the HAAS mark itself (Reg. No. 2,573,776 registered May 28, 2002). As previous panels have found the evidence of a registration with a recognized authority is sufficient to indicate rights in a given mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”) In this sense, the Panel concludes that Respondent has rights in the HAAS mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <haascnc.co> domain name is confusingly similar to Complainant’s HAAS trademark and Complainant’s <haascnc.com> domain name. Complainant argues that Respondent’s <haascnc.co> domain name features Complainant’s entire HAAS mark with the addition of the descriptive term “CNC” standing for “computer numerically controlled.” Complainant also asserts that Respondent adds the ccTLD “.co,” which is an abbreviation for “Columbia.” The Panel notes that the Respondent
concedes in its Response that the disputed domain name is confusingly similar to Complainant’s mark. Previous panels have found that adding generic terms and a ccTLD is insufficient to differentiate a disputed domain name from a given mark. See Microsoft Corp. v. patel, FA 1398287 (Nat. Arb. Forum Aug. 9, 2011) (finding that the addition of the country-code top-level domain (“ccTLD”) “.co” renders a disputed domain name confusingly similar to a complainant’s mark); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element).
Despite the fact, that the Respondent further argues that no case law exists indicating that a complainant is entitled to a domain name merely because the domain name is identical or confusingly similar to a trademark in which a complainant has rights, the Panel considers that it is sufficient for the Complainant to satisfy Policy ¶ 4(a)(i), and that the disputed domain name is confusingly similar with a trademark in which the Complainant holds rights. Any other contention of the Respondent has no standing in analyzing the first element of the Policy as long as both parties agree that the disputed domain name is confusingly similar with a trademark in which the Complainant holds rights.
Under this element the Panel has to analyze only the risk of confusion between the Complainant’s trademarks and the disputed domain name, which in this case exists.
As a consequence, the Panel finds that the Complainant satisfied the requirements of Policy ¶ 4(a)(i)).
Under Policy’s practice, 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) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests 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 contends that Respondent has no rights or legitimate interests in the <haascnc.co> domain name because it is not commonly known by the domain name. Complainant also argues that Complainant is not affiliated with Respondent’s disputed domain name and Complainant has not sponsored or endorsed Respondent in any way. Complainant claims that the WHOIS information for Respondent’s disputed domain name lists “Mike Morrison” as registrant. Complainant also asserts that Respondent registered the disputed domain name 28 years after Complainant started using the HAAS mark. Complainant further contends in its Additional Submission that, using an allegedly fabricated acronym does not provide Respondent with rights or legitimate interests in the disputed domain name. Previous panels have found that a respondent is not commonly known by a disputed domain name if there is no evidence on the record or in the WHOIS information indicating a relationship between respondent and the disputed domain name. 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name because it does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant contends that Respondent uses the disputed domain name to resolve to a website featuring third-party click through links that direct Internet users to third-party commercial websites. Complainant also points out that the goods offered by the third-parties compete directly with Complainant’s goods. The Panel notes Complainant’s Exhibit 5 to the Complaint which displays the website resolving from Respondent’s <haascnc.co> domain name, featuring links such as, “Vaughan’s Industrial,” “Advertising on YouTube,” “CNC Plasma Dust Collector,” “Milwaukee Machine Tool,” and “Sharnoa CNC machines.” Previous panels have found that using a confusingly similar domain name to resolve to a website featuring competing links and advertisements and commercially profiting is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Respondent contends that it has a legitimate interest in the <haascnc.co> domain name because it represents the business “Helping All American Senior Citizens Needing Care.” Respondent provides the Panel with a screen shot of the website resolving from the <haascnc.co> domain name, which represents Exhibit B to the Respondent’s Response. The words featured on the website resolving under the disputed domain name state, “Helping All American Senior Citizens Needing Care, This is the Future site of Helping All.”
On the other side, the Complainant asserts in its Additional Submission that Respondent changed the content of the website resolving from the <haascnc.co> domain name after receiving notification of the filing of the UDRP complaint. Complainant contends that changing the website after having notice of the Complaint does not provide Respondent with any legitimate rights or interests in the resolving website. Complainant also claims that there is no evidence to support Respondent’s claim that the disputed domain name is an acronym for “Helping All American Senior Citizens Needing Care.” Complainant argues that Respondent could have picked a different acronym to represent its website.
The Panel observes and compares the information provided in Respondent’s Exhibit B and Complainant’s Exhibit 5 in order to make a finding regarding Respondent’s rights and legitimate interests in the <haascnc.co> domain name. The Panel thus finds that there is no date displayed on the Respondent’s website screenshots presented as exhibits by the Respondent in its Response.
Considering the two exhibits and the contentions of both parties in this respect in particular and under this Policy element in general, the Panel is inclined, based on the balance of probabilities, which is the standard of proof under UDRP, to consider the following. The Panel finds that before any notice regarding the Complaint, the Respondent had used or allowed to use the disputed domain name to resolve to a website featuring third party click through links that direct Internet users to third party commercial websites and this cannot be considered a bona fide offering of goods.
Moreover, the display of the words on the website resolving under the disputed domain name state, “Helping All American Senior Citizens Needing Care, This is the Future site of Helping All.”, for which the Respondent asserts that the disputed domain name stands as an acronym cannot, by itself, be considered as demonstrable preparations for bona fide offering of services. The Respondent has to provide evidence of any kind documenting such preparations for its services targeted to Helping All American Senior Citizens Needing Care. In these proceedings the Respondent has provided none and moreover no concrete proof that the acronym is a known and recognizable one for these activities. Pursuant to a simple search on the internet, the only reference to Helping All American Senior Citizens Needing Care seems to be only on the website under the disputed domain name. This represents for the Panel an indication that the Respondent actually fabricated the services envisioned, as well as the alleged acronym. This further indicates that Respondent registered the domain name with the intent of holding the disputed domain name with no grounding.
For all above, the Panel concludes that the Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policies ¶¶ 4(c)(i) or 4(c)(iii) and has not demonstrated persuasive preparations to use the disputed domain name for a bona fide offering of goods or services, and that correspondingly, the Respondent has no rights or legitimate interests in the disputed domain name .
Complainant argues that Respondent registered and uses the <haascnc.co> domain name in bad faith under Policy ¶ 4(b)(iv). Complainant asserts that Respondent is using the disputed domain name to redirect Internet users to a commercial website featuring third-party pay-per-click links offering goods that compete with Complainant’s products. Complainant contends that Respondent attempts to attract Internet users to its website for profit by creating a likelihood of confusion with Complainant’s HAAS marks as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Previous panels have found bad faith use and registration when a respondent uses a disputed domain name to resolve to a website featuring links competing with a complainant’s business. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant contends in its Additional Submission that Respondent’s website resolving from the disputed domain name is a parked page. Complainant claims that Respondent agreed to GoDaddy’s agreement when it registered the disputed domain name agreeing to allow a parked page designed to generate revenue. Complainant claims that this is the default setting and when a domain name is registered it becomes Respondent’s responsibility to change the default setting. Previous panels have found that domain name registrants are responsible for content appearing on a website at its domain name, even if the registrant is not exercising direct control over such content. Previous panels have also found that even though a respondent does not receive revenue from the links present on its website, a respondent still registered and used the domain name in bad faith because respondent allowed the parking service to access the domain name. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding bad faith registration and use even where the “respondent [was] adamant that he [was] not receiving click-through referral fees generated from the websites at which the Disputed Domains [were] ‘parked’ . . . for a number of reasons, the panel [found] that it [was] irrelevant whether or not respondent [was] personally receiving any of those click-through referral fees . . .”)
On the other side, the Respondent claims that it never redirected Internet traffic away from Complainant’s website. Respondent presents a letter in Exhibit A indicating that Respondent never profited from the links being on the resolving website.
The Panel agrees with the Complainant that while Respondent agreed to GoDaddy’s agreement when it registered the disputed domain name agreeing to allow a parked page designed to generate revenue, the change of such a default setting therefore changes and becomes Respondent’s responsibility when a domain name is registered.
Moreover, the lack of evidences regarding Respondent’s preparations to launch services targeted towards Helping All American Senior Citizens Needing Care, as analyzed under the second element of the Policy does not contribute to a change of interpretation of the bad faith registration and use of the disputed domain name. For the Panel, the facts indicates that, until the Respondent did actually received the notice of the dispute, he registered a domain name using a known trademark of the Complainant and used it to be parked and generate revenues for him or third parties. The Panel agrees with Complainant, that Respondent had actual knowledge of Complainant's rights in the HAAS mark prior to registering the disputed domain name, considering the notoriety connected with Complainant’s mark, and finds that this actual knowledge together with the Respondent’s conduct within these proceedings is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Considering all above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith which is sufficient to establish UDRP ¶ 4(a)(iii)).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <haascnc.co> domain name be TRANSFERRED from Respondent to Complainant
Beatrice Onica Jarka Panelist
Dated: September 10, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page