Caterpillar Inc. v. Maike Cintra
Claim Number: FA1912001875478
Complainant is Caterpillar Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, United States. Respondent is Maike Cintra (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <bootcaterpillar.com>, <botacaterpillar.com>, <caterpillarloja.com>, and <lojacaterpillar.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 16, 2019; the Forum received payment on December 16, 2019.
On December 17, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bootcaterpillar.com>, <botacaterpillar.com>, <caterpillarloja.com>, and <lojacaterpillar.com> domain names 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 17, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 6, 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@bootcaterpillar.com, postmaster@botacaterpillar.com, postmaster@caterpillarloja.com, postmaster@lojacaterpillar.com. Also on December 17, 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 8, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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
1. Respondent’s <bootcaterpillar.com>, <botacaterpillar.com>, <caterpillarloja.com>, and <lojacaterpillar.com> domain names are confusingly similar to Complainant’s CATERPILLAR mark.
2. Respondent does not have any rights or legitimate interests in the <bootcaterpillar.com>, <botacaterpillar.com>, <caterpillarloja.com>, and <lojacaterpillar.com> domain names.
3. Respondent registered and uses the <bootcaterpillar.com>, <botacaterpillar.com>, <caterpillarloja.com>, and <lojacaterpillar.com> domain names in bad faith.
B. Respondent failed to file a Response in this proceeding.
Complainant, Caterpillar, is a Fortune 100 company and a leading manufacturer of construction and mining equipment, diesel and natural gas engines, industrial gas turbines, and diesel-electric locomotives. Complainant holds a registration for the CATERPILLAR mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 85,816, registered March 19, 1912).
Respondent registered the <bootcaterpillar.com> and <botacaterpillar.com> domain names on July 10, 2019, and the <caterpillarloja.com> and <lojacaterpillar.com> domain names on October 9, 2019. Respondent use the four disputed domain names to pass off as Complainant by offering unauthorized, counterfeit products.
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 Panel finds that Complainant has established rights in the CATERPILLAR mark under Policy ¶ 4(a)(i) through its registration with the USPTO. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s <bootcaterpillar.com>, <botacaterpillar.com>, <caterpillarloja.com>, and <lojacaterpillar.com> domain names all use Complainant’s CATERPILLAR mark, along with a generic term and gTLD. These additions do not distinguish the disputed domain name from the mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Accordingly, the Panel finds that Respondent’s <bootcaterpillar.com>, <botacaterpillar.com>, <caterpillarloja.com>, and <lojacaterpillar.com> domain names are confusingly similar to Complainant’s CATERPILLAR mark.
The Panel finds that complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent lacks rights or legitimate interest in the <bootcaterpillar.com>, <botacaterpillar.com>, <caterpillarloja.com>, and <lojacaterpillar.com> domain names as Respondent is not commonly known by the domain names. Respondent has no license or consent to use the CATERPILLAR mark or register domain names using Complainant’s mark. The WHOIS information for the disputed domain names lists the registrant as “Maike Cintra.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names, and thus has no rights under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name); see also Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
Complainant further argues that Respondent fails to use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant contends that Respondent attempts to pass off as Complainant by offering unauthorized, counterfeit products and displaying Complainant’s marks to suggest that Respondent is affiliated with Complainant. The use of a disputed domain name to pass off as a complainant by offering counterfeit, unauthorized products is not a bona fide offering goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (“The respondent’s use of the disputed domain name to pass itself off as the complainant to advertise and sell unauthorized products of the complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).”). Complainant provides screenshots of the webpages at <bootcaterpillar.com>, <botacaterpillar.com>, <caterpillarloja.com>, and <lojacaterpillar.com> showing Complainant’s CATERPILLAR mark and offering unauthorized versions of Complainant’s products. Therefore, the Panel finds that Respondent fails to use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus has no rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s registration of four disputed domain names shows a pattern of bad faith registration. The registration of multiple domain names in a case may be evidence of bad faith per Policy ¶ 4(b)(ii). 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)). Respondent is the owner of all four disputed domain names in this case. Therefore, the Panel finds that Respondent registered and used the <bootcaterpillar.com>, <botacaterpillar.com>, <caterpillarloja.com>, and <lojacaterpillar.com> domain names in bad faith under Policy ¶ 4(b)(ii).
Complainant further argues that Respondent registered and used the <bootcaterpillar.com>, <botacaterpillar.com>, <caterpillarloja.com>, and <lojacaterpillar.com> domain names in bad faith because it is disrupting Complainant’s business by offering unauthorized, counterfeit products in an attempt to pass off as Complainant. The use of a disputed domain name to pass off as complainant in an attempt to disrupt their business constitutes evidence of bad faith under Policy ¶ 4(b)(iii). See Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods). Accordingly, the Panel finds that Respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the CATERPILLAR mark before registering the disputed domain names, due to the demonstrated worldwide fame of the mark. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain names, which constitutes further evidence of bad faith under Policy ¶ 4(a)(iii). See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous).
The Panel finds that complainant has satisfied Policy ¶ 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 <bootcaterpillar.com>, <botacaterpillar.com>, <caterpillarloja.com>, and <lojacaterpillar.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 9, 2020
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