national arbitration forum




Caterpillar Inc. v. Pipetech

Claim Number: FA0706001000030



Complainant is Caterpillar Inc. (“Complainant”), represented by Christopher P. Foley, of Finnegan, Henderson, Farabow, Garrett & Dunner L.L.P., 901 New York Avenue NW, Washington, DC 20001.  Respondent is Pipetech (“Respondent”), 3909 S. Elwood Ave., Tulsa, OK 74107.



The domain name at issue is <>, registered with Tucows Inc.



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.


Sandra J. Franklin as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on June 7, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 8, 2007.


On June 7, 2007, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name.  Tucows Inc. has verified that Respondent is bound by the Tucows Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").


On June 11, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 2, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to by e-mail.


Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.


On July 6, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.


Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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 makes the following assertions:


1.      Respondent’s <> domain name is confusingly similar to Complainant’s CAT mark.


2.      Respondent does not have any rights or legitimate interests in the <> domain name.


3.      Respondent registered and used the <> domain name in bad faith.


B.  Respondent failed to submit a Response in this proceeding.



Complainant, Caterpillar Inc., is a Fortune 100 company and the world’s largest manufacturer of construction and other various related equipment.  Complainant has over 100 manufacturing facilities in 23 countries and more than 1,400 rental service outlets throughout the world.  Complainant has used its CAT mark in connection with these services since at least 1948, and holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the mark (Reg. No. 564,272 issued September 23, 1952; Reg. No. 778,638 issued October 13, 1964).  Complainant uses its CAT mark in connection with a variety of goods, including pipeline equipment.  Complainant also operates a website at the <> and <> domain names.    


Respondent registered the <> domain name on February 9, 2000.  Respondent’s disputed domain name resolves to a website that displays products and services in direct competition with Complainant’s products and services, and even offers used equipment originally produced by Complainant for sale. 



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."


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(e), 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.”).


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.


Identical and/or Confusingly Similar


Complainant asserts rights in the CAT mark through ownership of trademark registrations with the USPTO for the CAT mark.  The Panel finds that these trademark registrations sufficiently establish Complainant’s rights in the mark under Policy ¶ 4(a)(i).  See Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that with the complainant’s registration of the AMERIDREAM mark with the USPTO, the complainant had established rights in the mark pursuant to Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (“Complainant has submitted evidence of its registration of the AOL mark with the USPTO.  The Panel finds that such evidence establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).


Respondent’s <> domain name is confusingly similar to Complainant’s CAT mark under the parameters of Policy ¶ 4(a)(i).  In addition to containing Complainant’s mark in its entirety, the disputed domain name includes a common term directly relating to Complainant’s business, as well as the addition of the generic top-level domain (“gTLD”) “.com.”  These additions do not distinguish the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i) as the term added relates to Complainant’s business and a top-level domain is a required aspect of all domain names.  See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <> from the complainant’s DURACELL mark); see also Disney Enter. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the alterations to the complainant’s DISNEY mark in the respondent’s <> domain name are insufficient to differentiate the domain name from the mark pursuant to Policy ¶ 4(a)(i)).


The Panel finds that Policy ¶ 4(a)(i) has been satisfied.           


Rights or Legitimate Interests


Under Policy ¶ 4(a)(ii), Complainant must present a prima facie case that Respondent lacks rights and legitimate interests with regard to the <> domain name.  If Complainant satisfies this burden, the burden then shifts to Respondent to present evidence that it has rights or legitimate interests in the disputed domain name under the factors of Policy ¶ 4(c).  The Panel finds that Complainant has met its burden, and the Panel chooses to now examine whether there is evidence Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative.  For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.  Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). 


Complainant asserts that Respondent is not commonly known by the <> domain name.  The Panel, after reviewing the evidence presented, concludes that there is no evidence that Respondent is commonly known by the disputed domain name, or that Respondent is authorized to use Complainant’s mark.  Accordingly, the Panel finds that Respondent is not commonly known by the <> domain name under Policy ¶ 4(c)(ii).  See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").


Respondent is using the <> domain name to host a website that sells products and services in competition with Complainant, as well as Complainant’s own equipment.  Such use of Complainant’s mark is presumably for Respondent’s own commercial gain, and does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant).


The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.                     


Registration and Use in Bad Faith


The Panel finds that Respondent’s use of the <> domain name to sell various goods and services, including Complainant’s products without its permission, constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).  See, Inc. v., FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)). 


Moreover, the disputed domain name is capable of creating a likelihood of confusion as to Complainant’s source, sponsorship and affiliation with the <> domain name and resulting website, as the disputed domain name contains Complainant’s mark in its entirety and a word that has a direct relationship to Complainant’s business.  The Panel finds that Respondent’s use of the <> domain name is for its own commercial benefit, and accordingly, such use constitutes bad faith registration and use under Policy ¶ 4(b)(iv).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).


The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.      



Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.


Accordingly, it is Ordered that the <> domain name be TRANSFERRED from Respondent to Complainant.



Sandra J. Franklin, Panelist

Dated:  July 17, 2007



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