Caterpillar Inc. v. Wis INC
Claim Number: FA1912001875139
Complainant is Caterpillar Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, United States. Respondent is Wis INC (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <catbenfitscenter.com> and <mycatfinacial.com>, (‘the Domain Names’) registered with Godaddy.Com, Llc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 13, 2019; the Forum received payment on December 13, 2019.
On December 16, 2019, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <catbenfitscenter.com> and <mycatfinacial.com> domain name are 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 December 20, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2020 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@catbenfitscenter.com, postmaster@mycatfinacial.com. Also on December 20, 2019, 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 January 14, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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 names be transferred from Respondent to Complainant.
A. Complainant
The Complainant’s contentions can be summarised as follows:
The Complainant is the owner of the mark CAT registered, inter alia, in the USA for maintenance and repair of industrial and agricultural vehicles with first use recorded as 1951. It owns <catbenefitscenter.com> used for Human Resources activities and also <catfinancial.com> and <mycatfinancial.com> used in relation to its financial services.
The Domain Names registered in 2019 are confusingly similar to the Complainant’s CAT trade mark, including it in its entirety and only adding generic terms and the gTLD “.com” in each case which do not prevent this confusing similarity. The Domain Names are also typosquatted versions of the Complainant’s Human Resources and financial services related domain names referred to above.
Respondent has no rights or legitimate interests in the Domain Names, is not commonly known by the Domain Names and is not authorised by the Complainant.
The Domain Names have been offered for sale generally for sums in excess of domain registration fees. Both have been used for third-party commercial pay-per-click links. <catbenfitscenter.com> has been directed to third-party coupon sites and to Amazon. <mycatfinacial.com> has been pointed to a survey site. These are not a bona fide offering of goods or services or legitimate non commercial or fair use. Typosquatting and the offer to sell the names suggests the Respondent has no rights or legitimate interests in the Domain Names.
The Domain Names have been registered and used in bad faith.
The offers to sell the Domain Names for sums in excess of registration costs is bad faith under Policy ¶ 4(b)(i).
Use for third party commercial pages or links is bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Typosquatting is bad faith registration and use per se.
The Respondent has been the subject of two other unconnected adverse decisions under the UDRP, one for a typosquatting registration and one for a deceptive security check. Together with the two registrations in this Complaint targeting the Complainant this suggests a pattern of conduct under Policy ¶ 4(b)(ii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the mark CAT registered, inter alia, in the USA for maintenance and repair of industrial and agricultural vehicles with first use recorded as 1951. It owns <catbenefitscenter.com> used for Human Resources activities and also <catfinancial.com> and <mycatfinancial.com> used in relation to its financial services.
The Domain Names registered in 2019 have been offered for sale for a sum in excess of registration costs and used for third party commercial pay per click links. <catbenfitscenter.com> has been directed to third-party coupon sites and to Amazon. <mycatfinacial.com> has been pointed to a survey site. The Respondent has been subject to two other unconnected adverse decisions under the Policy.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Domain Names consist of the Complainant’s CAT mark (registered in the USA for maintenance and repair services of industrial and agricultural vehicles with first use recorded as 1951), adding only generic terms which are sometimes misspelled and the gTLD “.com,” which do not prevent such confusing similarity.
Previous panels have found confusing similarity when a respondent merely adds generic terms to a Complainant's mark. See PG&E Corp. v Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). The Panel agrees that the addition of generic terms whether misspelled or not to the Complainant's CAT mark does not distinguish the Domain Names from the Complainant's registered trade mark for the purposes of the Policy.
The gTLD “.com” does not serve to distinguish the Domain Names from the Complainant’s mark, which is the distinctive component of the domain name. See Red Hat Inc v Haecke FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Names are confusingly similar for the purpose to a mark in which the Complainant has rights.
Rights or Legitimate Interests
The Complainant has not authorised the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The Respondent has used the site attached to the Domain Names for links which offer third party services not connected with the Complainant. It does not make it clear that there is no commercial connection with the Complainant. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See ALPITOUR SpA v Albloushi FA 888651 (Forum Feb 26, 2007) (rejecting the Respondent's contentions of rights and legitimate interests because the respondent was merely using the domain name to operate a web site containing links to various competing commercial web sites which the panel did not find to be bona fide use in relation to goods and service under the Policy.) The Domain Names have also been used for coupon sites, to point to Amazon or to point to survey sites, none of which are a bona fide offering of goods or services under the Policy. The uses are all commercial and so cannot be a legitimate non commercial fair use.
The Domain Names are misspelled versions of Domain Names used by the Complainant for its Human Resources and financial services sites. Typosquatting can provide additional evidence that a respondent has no rights or legitimate interests in a disputed domain name. See Macy’s Inc. and its subsidiary Macy’s West Stores, Inc. v. chen wenjie c/o Dynadot Privacy, FA1404001552918 (Forum May 21, 2014) (“Respondent’s disputed domain names are typosquatted versions of Complainant’s registered mark. Typosquatting shows a lack of rights or legitimate interests.”).
Both Domain Names have been offered for sale for sums in excess of registration costs which also suggests a lack of rights or legitimate interests. See Enterprise Holdings, Inc. v. Huang Jia Lin, FA1504001614086 (Forum May 25, 2015) (“Accordingly, the Panel finds that Respondent’s general attempt to sell the disputed domain name is further evidence of Respondent’s lack of rights and legitimate interests under Policy ¶ 4(a)(ii).”).
As such the Panel finds that the Respondent does not have rights or a legitimate interest in the Domain Names and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
The Respondent is using the Domain Names to profit by linking or pointing to third party commercial web sites in a confusing manner. Use of a domain name containing a trade mark for pay per click links is bad faith registration and use. See Dovetail Ventures LLC v Klayton Thorpe, FA 1506001625786 (Forum Aug 2, 2015) (holding that the respondent had acted in bad faith under Policy 4(b)(iv) where it used the disputed domain name to host a variety of hyperlinks unrelated to the complainant’s business through which the Respondent presumably gained). Further it has been held that such use is disruptive under Policy 4(b)(iii) of the Policy. See Adriana Inc v Moniker Privacy services, FA 1503001610020 (Forum May 1, 2015) (Using pay per click links redirecting users to competing web sites to disrupt and compete with a Complainant’s business is evidence of bad faith registration and use under Policy 4(b)(iii).). Pointing a domain name containing a mark to unrelated commercial sites such as coupon sites, unconnected retail sites and survey sites is also causing confusion for commercial gain and disruptive.
The fact that the Respondent has registered two Domain Names which are typosquatted versions of domain names used by the Complainant for Human Resources or financial services web sites shows that the Respondent is aware of the Complainant and its business, services and rights.
The Panel holds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his websites by creating likelihood of confusion with the Complainant's trade mark as to the source, sponsorship, affiliation or endorsement of the web site attached to the Domain Names and services on it, thereby disrupting the Complainant’s business.
The Domain Names are typosquatting registrations and misspelled versions of domain names the Complainant uses for its Human Resources and financial services sites. Typosquatting itself is also evidence of relevant bad faith registration and use. See Diners Club int'l Ltd. v Domain Admin ****** It's all in the name ******, FA 156839 (Forum June 23, 2003) (holding that registering a domain name which incorporates a misspelt famous mark in the hope that Internet users will mistype it and be taken to the Respondent’s site is registration and use in bad faith).
Both Domain Names have also been offered for sale generally for sums in excess of out of pocket registration costs. See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”).
The Respondent has registered two domain names targeting the Complainant and has been the subject of two unconnected adverse decisions under the UDRP suggesting a pattern of cybersquatting activity. See NIKE, Inc., and Nike Innovate, C.V. v. Emile Boulanger, FA 1732458 (Forum July 3, 2017) (finding that registration of several infringing domain names in a case satisfies the burden imposed by the Policy ¶ 4(b)(ii)). There is enough evidence that the Respondent is in the habit of registering Domain Names containing the trade marks of others.
As such, the Panel holds that the Complainant has made out its case that the Domain Names were registered and used in bad faith under Policy paragraphs 4(b)(i), (ii), (iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <catbenfitscenter.com>, <mycatfinacial.com> domain names be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: January 14, 2020
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