Caterpillar Inc. v.
Claim Number: FA0706001008998
Complainant is Caterpillar Inc. (“Complainant”), represented by Christopher
P Foley, of Finnegan,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <aftermarketcat.com>, registered with Wild West Domains.
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.
Complainant submitted a Complaint to the National Arbitration Forum
On June 15, 2007, Wild West Domains confirmed by e-mail to the National Arbitration Forum that the <aftermarketcat.com> domain name is registered with Wild West Domains and that Respondent is the current registrant of the name. Wild West Domains has verified that Respondent is bound by the Wild West Domains 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 19, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 9, 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant asserts that it has
Complainant asserts that the <aftermarketcat.com> domain
name is confusingly similar to its registered
Complainant asserts that Respondent
has no rights or legitimate interests in the domain name. Respondent is not commonly known by the <aftermarketcat.com> domain name
even though it uses “Aftermarket
Complainant asserts that Respondent’s website at the <aftermarketcat.com> domain name
advertises products that compete with Complainant’s products under the
Complainant alleges that Respondent
is offering products for sale on its website established at the <aftermarketcat.com> address in direct competition with
Complainant and is labeling such goods as Complainant’s products. There is an intention to disrupt
Complainant’s business under the
Complainant further alleges that
Respondent is diverting consumers interested in purchasing products from
Complainant to its own website for commercial gain because Respondent is
promoting its products using Complainant’s
The Response commences with an apology from
Respondent to Complainant and states that Respondent regrets its decision to choose and use the <aftermarketcat.com> domain name “to sell aftermarket
While Respondent denies that it “knowingly
intended to infringe on the
Notwithstanding the apology, Respondent is eager to retain ownership of the domain name in dispute and has taken steps to address Complainant’s concerns about Respondent’s use of the domain name.
Respondent argues that the addition of the term “aftermarket”
sufficiently distinguishes the <aftermarketcat.com>
domain name from Complainant’s
While Respondent accepts Complainant’s
concerns regarding its use of the disputed domain name to sell engine rebuild
parts on the website located at the <aftermarketcat.com> address,
Respondent points out that it only sells aftermarket parts, while Complainant
primarily sells original equipment parts. It follows that consumers are not likely to be
confused by Respondent’s website if looking for original
Respondent submits that it has re-branded its website at the disputed domain name and moved the website to another web address to alleviate any confusion, although it still wishes to retain the disputed domain name because it eventually plans to start up an aftermarket automotive parts business for cars and pickup trucks. Respondent alleges that it would never use the disputed domain name to compete with Complainant in any way and invites feedback from Complainant in developing its new website.
Addressing the issue of alleged bad faith registration and use, Respondent argues that it did not intend to confuse Internet users and took precautions not to do so. Its website now contains a prominent disclaimer and redirects Internet users interested in its aftermarket products to another website. If allowed to retain the <aftermarketcat.com> domain name, Respondent would eventually use it to develop a website dedicated to selling only aftermarket automotive parts and products for cars and pickup trucks. Respondent would not sell semi-trucks, tractors, heavy equipment or parts for such units using the <aftermarketcat.com> address. Respondent would also undertake to develop a new logo which would be entirely new and incorporate the image of a cat in the mark and will even allow a representative appointed by Respondent to provide input on the final look of the new brand to show that it will not resemble their own.
Respondent has moved its entire website to a different web address; completely re-branded the previous website; created a new trademark logo for the new website; established a generic (non-branded) web page at the old web address of <aftermarketcat.com> which provides links to both Respondent’s new website and Complainant’s website to ensure that no one will be confused; included a prominent link from its new website to Complainants website; enhanced its website disclaimer page with regard to intellectual properties and Respondent’s non-affiliation with Complainant; addressed issues concerning wording and phrases used on Respondent’s website that Complainant felt was misleading; and remains willing to listen to any other realistic concerns, issues or suggestions that Complainant might have concerning its brand.
While Respondent would like to retain ownership of the domain name, <aftermarketcat.com>, it states that it totally understands that Complainant needs to protect its brand and therefore feels obliged to transfer the domain name to Complainant, if required so to do.
Respondent complains that it has never been contacted informally by Caterpillar® previously (not even by telephone), and states that this whole ordeal could have been completely avoided.
Complainant is the registered owner
of the trademark
Respondent is engaged in the sale of after market spare parts for machinery.
Respondent registered the domain name in dispute on March 21, 2007 and established a website at that address offering for sale spare parts for machinery, including parts manufactured by competitors of Complainant.
For reasons given below, the domain name in dispute is confusingly similar to Complainant’s trademark; Respondent has no rights or legitimate interests in the domain name; and the domain name was registered and is being used by Respondent in bad faith.
The Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) at ¶ 15(a) instruct 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.”
Policy ¶ 4(a) 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;
(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.
Both parties accept that
Complainant is the owner of and has rights in the
The domain name in
dispute contains Complainant’s
Respondent has argued
that the disclaimer will in some way distinguish the domain name and
Complainant’s trademark. According to
the WIPO Overview of WIPO Panel Views on
Selected UDRP Questions, the consensus view among UDRP panellists is that
the “content of a website (whether it is similar or different to the business
of a trademark owner) is irrelevant in the finding of confusing similarity. This is because trademark holders often suffer
from ‘initial interest confusion,’ where a potential visitor does not
immediately reach their site after typing in a confusingly similar domain name,
and is then exposed to offensive or commercial content. The test for confusing similarity should be a
comparison between the trademark and the domain name to determine the
likelihood of confusion.” The relevant
decisions cited are: Arthur Guinness Son
& Co. (
In Oki Data Americas Inc. v.
In the view of this Panel
the domain name is confusingly similar to Complainant’s mark. Respondent has acknowledged that it was chosen
because of its reference to Complainant’s
It follows that the domain name in dispute is confusingly similar to Complainant’s trademark and Complainant has succeeded in establishing the first element of the test in Policy ¶ 4(a).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the <aftermarketcat.com> domain name, and then the burden shifts to Respondent to show that it does have rights or legitimate interests once a prima facie case has been made out. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant under Policy ¶ 4(c), the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (finding that Policy ¶ 4(a)(ii) requires that the complainant must show that the respondent has no rights to or legitimate interests in the subject domain name and that once the complainant makes this showing, the burden of production shifts to the respondent to rebut the complainant’s allegations).
The core issue here is: can a seller of spare parts have a right or legitimate interests to use a manufacturer’s mark in a domain name?
While the issue in this case relates to sales of third-party spare parts, some guidance can be taken from the body of UDRP cases dealing with the rights of resellers of goods. Referring for guidance once again to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, there is a minority view that without the express permission of the trademark holder the right to resell the trademark holder’s own products does not create a right to use the trademark as the basis for a domain name. It follows that such a view would certainly not permit the use of a domain name to sell third-party products.
The majority view of panellists is that a reseller of goods “can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits certain requirements. These requirements include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods and the site accurately disclosing the registrant’s relationship with the trademark owner. The respondent must also not try to corner the market in domain names that reflect the trademark.”
In Oki Data Americas Inc. v.
Previous panels have
considered the issue of whether an authorized sales or service agent of
trademarked goods can use the trademark at issue in its domain name. In Oki Data Americas, Inc. v.
1. Respondent must actually be offering the
goods or services at issue. E.g., World
Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO
Case No. D2000-1306 (
2. Respondent must use the site to sell
only the trademarked goods; otherwise, it could be using the trademark to bait
Internet users and then switch them to other goods. Nikon, Inc. v. Technilab, WIPO Case No.
The site must accurately disclose the
registrant’s relationship with the trademark owner; it may not, for example,
falsely suggest that it is the trademark owner, or that the website is the
official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. The
Weatherman, Inc., WIPO Case No. D2001-0211 (April 17, 2001); R.T. Quaife Engineering v.
4. The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525 (January 29, 2001).
Respondent in the present case is not a reseller of Complainant’s goods only. In OKI, the registrant was “an authorized sales or service agent of trademarked goods.”
Applying the above principles, Respondent has been using the domain name to offer competing goods and so would not come within the circumstances set out in OKI.
In the circumstances this Panel is satisfied that Respondent has no rights or legitimate interest in the domain name at issue.
Complainant has succeeded in establishing the second element of the test in Policy ¶ 4(a)
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on its web site or location.
This Panel accepts
Complainant’s submission that Respondent is diverting consumers interested in
purchasing products from Complainant to its own website for commercial gain
because Respondent is promoting its products using Complainant’s
Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on its web site or location. Respondent has used the domain name and consequently taken predatory advantage of Complainant’s goodwill to attract Internet users to its website on which it offers competitors goods. The domain name was registered by Respondent with that intention in mind and the fact that Respondent denies that it had any knowledge that such use was unlawful is no defence to this action.
While Respondent has apologised to Complainant for such use of the domain name and has endeavoured to take remedial steps, such steps are not sufficient. The use of the domain name retains a bad faith character. The fact that Respondent has now added a more prominent disclaimer on its site is also irrelevant. See Vide Universal City Studios, Inc. v. G.A.B. Enters., D2000-0416 (WIPO June 29, 2000) (refusing to consider a disclaimer added after Respondent’s receipt of the Complaint "because the appropriate behavior to consider is Respondent’s behavior prior to its receipt of notice from the Complainant.").
In the circumstances Complainant has succeeded in establishing the third element of the test in Policy ¶ 4(a)
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aftermarketcat.com> domain name be TRANSFERRED from Respondent to Complainant.
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