Haas Automation, Inc. v. Pete Edwards
Claim Number: FA1606001678667
Complainant is Haas Automation, Inc. (“Complainant”), represented by Farah P. Bhatti of Buchalter Nemer, California, USA. Respondent is Pete Edwards (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <haasballscrewrepair.com>, registered with GoDaddy.com, LLC.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 8, 2016; the Forum received payment on June 8, 2016.
On June 9, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <haasballscrewrepair.com> 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 June 9, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 2016 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@haasballscrewrepair.com. Also on June 9, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 6, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
i) Complainant uses the HAAS mark in connection with the manufacture of machine tools and related services. Complainant has registered the H HAAS mark and variations of the HAAS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., “H HAAS,” Reg. No. 2,573,776, registered May 28, 2002), establishing its rights. Respondent has registered a confusingly similar domain name by merely incorporating the descriptive phrase “ball screw repair” and the generic top-level domain (“gTLD”) “.com” to the mark.
ii) Next, Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Respondent has not been making a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). Instead, Respondent has operated its website to divert Internet traffic to its domain name, presumably for financial gain, in an effort to induce them to use click-through hyperlinks which lead to competing websites of Complainant.
iii) Respondent has registered and used the <haasballscrewrepair.com> domain name in bad faith per Policy ¶ 4(a)(iii). Under the language of Policy ¶ 4(b)(iv), Respondent is attempting to profit for commercial gain through its registration and subsequent use of the <haasballscrewrepair.com> domain name because Respondent presumably financially benefits from the inclusion of competing hyperlinks. Further, considering its use, Respondent had actual and/or constructive knowledge of the H HAAS mark and Complainant’s intellectual property rights in the mark.
B. Respondent
Respondent did not submit a Response to the Complaint. The Panel notes that the disputed domain name was registered on December 16, 2010.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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."
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(f), 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 (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 purportedly uses the H HAAS mark in connection with the manufacture of machine tools and related services. Complainant claims it has registered the H HAAS mark and variations of the HAAS mark with the USPTO (e.g., “H HAAS,” Reg. No. 2,573,776, registered May 28, 2002). Complainant argues that its valid USPTO registrations are a sufficient demonstration of its rights under Policy ¶ 4(a)(i).
Panels have found that a complainant’s valid USPTO registration is sufficient in establishing rights in a mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)) Therefore, this Panel agrees that Complainant’s alleged USPTO registration in the H HAAS mark is sufficient to demonstrate that Policy ¶ 4(a)(i) rights exist.
Next, Complainant posits that Respondent has registered a confusingly similar domain name by merely removing an “h” and incorporating the generic phrase “ball screw repair” and the gTLD “.com.” Panels have often seen such alterations as insufficient in overcoming an analysis of Policy ¶ 4(a)(i) confusing similarity. See Bloomberg Finance L.P. v. network admin, FA 1622138 (Forum July 11, 2015) (“The addition, deletion, and switching of . . . numbers in domain names do not remove Respondent’s domain names from the realm of confusing similarity in relation to Complainant’s BLOOMBERG mark pursuant to Policy ¶ 4(a)(i).”); see Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with the complainant’s business); see also, Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). According to available precedent, under an analysis of Policy ¶ 4(a)(i), the Panel finds that the <haasballscrewrepair.com> domain name is confusingly similar to the Complainant's H HAAS mark.
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 (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 (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 urges that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). To begin, Complainant asserts that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). The Panel looks to the relevant WHOIS information in making its determination under this prong and decides that there is in fact a lack of evidence which would substantiate a finding for Respondent under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Further, Complainant argues that Respondent has not been making a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). Instead, Complainant contends that Respondent has operated its website to divert Internet traffic to its domain name, presumably for financial gain, in an effort to induce them to use click-through hyperlinks which lead to competing websites of Complainant. Panels have seen such use as failing to constitute rights and legitimate interests under both paragraphs 4(c)(i) and (iii) of the Policy. See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”). This Panel sees that Respondent’s use of the disputed domain name does not constitute 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), respectively.
Under the language of Policy ¶ 4(b)(iv), Complainant contends that Respondent has clearly attempted to profit for commercial gain through its registration and subsequent use of the <haasballscrewrepair.com> domain name because Respondent presumably financially benefits from the inclusion of competing hyperlinks. The Panel notes that Complainant has submitted evidence of Respondent’s use of the disputed domain name. In discussing such use, the panel in Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) stated, respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv). The Panel sees a connection in the case at hand with Capital One Financial Corp. and finds accordingly that Respondent has registered and used the <haasballscrewrepair.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Lastly, Complainant argues that in light of the fame and notoriety of Complainant's H HAAS mark and Respondent’s inclusion of hyperlinks which compete with Complainant, it is inconceivable that Respondent could have registered the <haasballscrewrepair.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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 Policy."). The Panel infers, however, due to the fame of Complainant's mark and the manner of use of the disputed domain name by Respondent that Respondent had actual knowledge of 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 Univision Comm'cns Inc. v. Norte, FA 1000079 (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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <haasballscrewrepair.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 12, 2016
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