Caterpillar Inc. v. Wangxiaoqin
Claim Number: FA2011001920091
Complainant is Caterpillar Inc. (“Complainant”), represented by Stephanie H Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is Wangxiaoqin (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <caterpillar.xyz>, registered with Xiamen ChinaSource Internet Service Co., Ltd.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 10, 2020; the Forum received payment on November 10, 2020.
On November 10, 2020, Xiamen ChinaSource Internet Service Co., Ltd confirmed by e-mail to the Forum that the <caterpillar.xyz> domain name is registered with Xiamen ChinaSource Internet Service Co., Ltd and that Respondent is the current registrant of the name. Xiamen ChinaSource Internet Service Co., Ltd has verified that Respondent is bound by the Xiamen ChinaSource Internet Service Co., Ltd 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 November 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 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@caterpillar.xyz. Also on November 17, 2020, 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 December 10, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING
In this proceeding, the language of the registration agreement is Chinese and accordingly paragraph 11(a) of the Rules applies and the proceedings are to be conducted in Chinese. However, the same Rule also provides that the Panel may determine otherwise, having regard to the circumstances of the administrative proceeding.
In that regard Complainant has submitted as follows :”Complainant respectfully requests that this UDRP proceeding be conducted in English because the record shows that Respondent has knowledge of or proficiency in English as established by (a) its selection and registration of the Domain Name that contains Complainant’s English-language mark CATERPILLAR in its entirety, (b) its registration of the Domain Name under the English-language gTLD “.xyz,” and (c) its use of the Domain Name for an English-language website. (See Complaint, Exhibit 7.) In addition, Complainant does not have any information or evidence that Respondent does not have knowledge of or proficiency in English. Finally, Complainant would be prejudiced by a Chinese-language proceeding because the translation costs are burdensome and unnecessary. See, e.g., Caterpillar v. Liu Yuan (Forum FA1805001789384) (allowing Caterpillar’s request to conduct the proceeding against the domain names <caterpillarcredi.com> and <caterpillarcredicard.com> in English because CATERPILLAR is “the trademark of a famous American company,” respondent used English on its websites, and “. . . it would be unduly burdensome to require Complainant to proceed in Chinese under these circumstances . . .”); Caterpillar v. Cagatay Matura (WIPO D2016-2559) (allowing Caterpillar’s request to conduct the proceeding against the domain name <cat-turkiye.com> in English).”
The Panel agree with the submission of Complainant and finds that the evidence in that regards supports its contentions.
Accordingly, the Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be English.
A. Complainant
Complainant made the following contentions.
Complainant is the world’s largest manufacturer of construction and mining equipment, diesel, and natural gas engines, industrial gas turbines, and diesel-electric locomotives. Complainant has rights in the CATERPILLAR mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 85,816, registered March 19, 1912). See Compl. Ex. 6. Respondent’s <caterpillar.xyz> domain name is identical to Complainant’s CATERPILLAR mark as Respondent incorporates the mark in its entirety and adds the “xyz” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <caterpillar.xyz> domain name as Respondent is not commonly known by the disputed domain name nor did Complainant authorize Respondent to use the CATERPILLAR mark. Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to a webpage that offers pay-per-click links to competing webpages.
Respondent registered and used the <caterpillar.xyz> domain name in bad faith as Respondent attempts to create a likelihood of confusion by referring Complainant’s CATERPILLAR mark. Respondent attempts to disrupt Complainant’s business by resolving to a webpage that offers links to competing webpages. Respondent had actual knowledge of Complainant’s rights in the CATERPILLAR mark due to the long standing use and fame of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that is the world’s largest manufacturer of construction and mining equipment, diesel, and natural gas engines, industrial gas turbines, and diesel-electric locomotives.
2. Complainant has established its trademark rights in the CATERPILLAR mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 85,816, registered March 19, 1912).
3. Respondent registered the <caterpillar.xyz> domain name on September 8, 2020.
4. Respondent has caused the disputed domain name to resolve to a webpage that offers pay-per-click links to competing webpages.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the CATERPILLAR mark through its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in the mark per Policy ¶ 4(a)(i). 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.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for the CATERPILLAR mark (e.g. Reg. No. 85,816, registered March 19, 1912). See Compl. Ex. 6. Therefore, the Panel finds that Complainant has adequately shown rights in the CATERPILLAR mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s CATERPILLAR mark. Complainant argues that Responent’s <caterpillar.xyz> domain name is confusingly similar and virtually identical to Complainant’s CATERPILLAR mark as it contains the enitre mark and merely adds the “.xyz” gTLD. The addition of a gTLD to a mark does not significantly distiguish the disputed domain name from a mark per Policy ¶ 4(a)(i). See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”). Therefore, the Panel finds that the disputed domain name is identical to Complainant’s CATERPILLAR mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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), then 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CATERPILLAR trademark and to use it in its domain name, containing the entire mark;
(b) Respondent registered the <caterpillar.xyz> domain name on September 8, 2020;
(c) Respondent has caused the disputed domain name to resolve to a webpage that offers pay-per-click links to competing webpages;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent lacks rights or legitimate interest in the <caterpillar.xyz> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the CATERPILLAR mark or register domain names using Complainant’s mark. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name 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). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See 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)”). The WHOIS information for the disputed domain name lists the registrant as “Wangxiaoqin” and there is no other evidence to suggest that Respondent was authorized to use the CATERPILLAR mark or was commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s domain name resolves to a webpage that offers pay-per-click links to competing webpages. Use of a disputed domain name that offers pay-per-click links to competing webpages is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). 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.”). Here, Complainant provides the Panel with screenshots of Respondent’s <caterpillar.xyz> domain name’s resolving webpage that shows links to related products and services associated with Complainant. See Compl. Ex. 7. Therefore, the Panel finds that Respondent fails to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and used the <caterpillar.xyz> domain name in bad faith as Respondent attempts to create a likelihood of confusion by referring Complainant’s CATERPILLAR mark. Use of a disputed domain name to create a likelihood of confusion may be evidence of bad faith per Policy ¶ 4(b)(iv). See BBY Solutions, Inc. v. Grant Ritzwoller, FA 1703389 (Forum Dec. 21, 2016) (finding bad faith because the <bestbuyus.com> domain name was obviously connected with the complainant’s well-known BEST BUY mark, thus creating a likelihood of confusion strictly for commercial gain). Here, Complainant argues that Respondent makes use of the prominence of the CATERPILLAR mark in the disputed domain name to confuse internet users and create a likelihood of confusion. Therefore, the Panel agrees and finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Secondly, Complainant argues that Respondent attempts to disrupt Complainant’s business by resolving to a webpage that offers links to competing webpages. Use of a disputed domain name to disrupt a complainant’s business by offering links to competitors may be evidence of bad faith per Policy ¶ 4(b)(iii). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”). Here, Complainant provides the Panel with screenshots of Respondent’s <caterpillar.xyz> domain name’s resolving webpage that shows links to related products and services associated with Complainant. See Compl. Ex. 7. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
Thirdly, Complainant argues that Respondent had knowledge of Complainant’s rights in the CATERPILLAR mark at the time of registering the <caterpillar.xyz> domain name. The Panel will disregard arguments of bad faith based on constructive notice as prior UDRP decisions generally decline to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). However, the Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant to further a fraudulent scam. As such, the Panel finds that Respondent had actual knowledge of Complainant’s rights in its mark, which supports a finding of bad faith under Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the CATERPILLAR mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <caterpillar.xyz> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 14, 2020
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