Caterpillar Inc. v. Edward Cho
Claim Number: FA2208002008669
Complainant is Caterpillar Inc. ("Complainant"), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is Edward Cho ("Respondent"), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <caterpiillar.com>, registered with NameCheap, 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 16, 2022; the Forum received payment on August 16, 2022.
On August 16, 2022, NameCheap, Inc. confirmed by email to the Forum that the <caterpiillar.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 August 17, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 6, 2022 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@caterpiillar.com. Also on August 17, 2022, the Written Notice of the Complaint, notifying Respondent of the email 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 September 9, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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
Complainant is the world's largest manufacturer of construction and mining equipment, diesel and natural gas engines, industrial gas turbines, and diesel-electric locomotives, with worldwide sales and revenues of $51 billion in 2021. Complainant has used the CATERPILLAR mark in connection with its products and services since at least as early as 1904. Complainant owns longstanding United States trademark registrations for CATERPILLAR in standard character form and variations thereof, along with similar registrations in more than 150 other countries. Complainant asserts that its CATERPILLAR mark is famous worldwide.
Respondent registered the disputed domain name <caterpiillar.com> via a privacy registration service in March 2022. The domain name is being used for a website that prominently displays Complainant's full corporate name and logo, along with copyright-protected content copied from Complainant's website. Complainant states that Respondent's website offers a fraudulent online job interview in an attempt to phish for users' personal and confidential information. The domain name is also being used in email messages in connection with similar fraudulent activity. Complainant alleges that Respondent is the same individual or entity that was the respondent in a separate proceeding involving a similar domain name and essentially identical circumstances. See Caterpillar Inc. v. Edward Cho / Hyster Yale, FA 2002569 (Forum July 28, 2022) (ordering transfer of <careerscaterpillar.com>). Complainant states that Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <caterpiillar.com> is confusingly similar to its CATERPILLAR mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <caterpiillar.com> corresponds to Complainant's registered CATERPILLAR trademark, inserting an additional letter "i" and appending the ".com" top-level domain. These alterations do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Caterpillar Inc. v. Hulmiho Ukolen / Poste restante, FA 1835991 (Forum Apr. 30, 2019) (finding <catterpillar.com> confusingly similar to CATERPILLAR); Caterpillar Inc. v. Transure Enterprise Ltd a/k/a Host Master, FA 1326349 (Forum July 5, 2010) (finding <caterpilllar.com> confusingly similar to CATERPILLAR). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
For essentially the same reasons as those set forth in Caterpillar Inc. v. Edward Cho / Hyster Yale, FA 2002569, supra, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name.
For essentially the same reasons as those set forth in Caterpillar Inc. v. Edward Cho / Hyster Yale, FA 2002569, supra, the Panel finds that Respondent registered and is using the disputed domain name in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <caterpiillar.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: September 15, 2022
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