Haas Automation, Inc. v. ICAR TEAM / Icarteam.com
Claim Number: FA1505001620547
Complainant is Haas Automation, Inc. (“Complainant”), represented by Farah P. Bhatti of Baker & Hostetler LLP, California, USA. Respondent is ICAR TEAM / Icarteam.com (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <haas-cnc.us>, registered with GODADDY.COM, INC..
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 20, 2015; the Forum received payment on May 21, 2015.
On May 22, 2015, GODADDY.COM, INC. confirmed by e-mail to the Forum that the <haas-cnc.us> domain name is registered with GODADDY.COM, INC. and that Respondent is the current registrant of the name. GODADDY.COM, INC. has verified that Respondent is bound by the GODADDY.COM, INC. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On May 26, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 2015 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@haas-cnc.us. Also on May 26, 2015, 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 June 17, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 owns multiple registrations for the HAAS design mark with the United states Patent and Trademark Office (“USPTO”) (see, e.g., Reg. No. 2,573,776, registered May 29, 2002; see also Reg. No. 4,583,626, registered Aug. 12, 2014). The mark is used on or in connection with the manufacture and sale of computer controlled machinery. Complainant uses the acronym “cnc,” standing for computer numerically controlled machines. The <haas-cnc.us> domain name is confusingly similar to the HAAS mark because the domain name contains the entire mark and adds a hyphen along with the descriptive term “cnc,” as well as the country code top-level domain (“ccTLD”) “.us.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known as the domain name, nor is Respondent a licensee of Complainant. Further, the domain name resolves to a webpage that sells competing goods and services and displays the HAAS mark.
Respondent has engaged in bad faith registration or use. Respondent registered the domain name with the intent of disrupting Complainant business. Respondent is also attempting to commercially profit from a likelihood of confusion. Also, Respondent had actual and/or constructive knowledge of Complainant’s trademark rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Haas Automation, Inc., owns multiple registrations for the HAAS design mark with the United states Patent and Trademark Office (“USPTO”) (see, e.g., Reg. No. 2,573,776, registered May 29, 2002; see also Reg. No. 4,583,626, registered Aug. 12, 2014). The mark is used on or in connection with the manufacture and sale of computer controlled machinery. Complainant uses the acronym “cnc,” standing for computer numerically controlled machines.
Respondent, ICAR TEAM / Icarteam.com, registered the <haas-cnc.us> domain name on November 1, 2014. Respondent sells Complainant’s machines and competing machines and uses the HAAS logo.
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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 (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 has rights in the HAAS design mark under Policy ¶ 4(a)(i) through registration with the USPTO. 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.”).
Respondent’s <haas-cnc.us> domain name is confusingly similar to the HAAS mark under Policy ¶ 4(a)(i). The domain name contains the entire mark and adds a hyphen along with the descriptive term “cnc,” as well as the ccTLD “.us.”
Rights or Legitimate Interests
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).
Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). Complainant has not licensed or authorized Respondent to use the HAAS mark. The WHOIS information lists “ICAR TEAM” as the registrant of record for the <haas-cnc.us> domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <haas-cnc.us> domain name under Policy ¶ 4(c)(ii) and Policy ¶ 4(c)(iv), respectively. Respondent is using the domain name to host a webpage that sells competing goods and contains Complainant’s HAAS mark. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iii) by disrupting Complainant’s business. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Respondent has displayed bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Because the resolving webpage contains the HAAS mark as well as the same or similar goods and services as those offered under the HAAS mark, Internet users are likely to believe that the website is sponsored by or affiliated with Complainant and its HAAS mark. Prior panels have found bad faith under Policy ¶ 4(b)(iv) where the respondent created a likelihood of confusion for commercial gain by advertising competing goods or services. See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. Actual knowledge is 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).
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <haas-cnc.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 1, 2015
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page