Caterpillar Inc. v. Iroiran Co
Claim Number: FA0708001059302
Complainant is Caterpillar Inc. (“Complainant”), represented by Christopher
P. Foley, of Finnegan,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <caterpillar-business.com>, registered with Onlinenic, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On August 9, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 29, 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 postmaster@caterpillar-business.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <caterpillar-business.com> domain name is confusingly similar to Complainant’s CATERPILLAR mark.
2. Respondent does not have any rights or legitimate interests in the <caterpillar-business.com> domain name.
3. Respondent registered and used the <caterpillar-business.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Caterpillar Inc., is the world’s largest manufacturer of construction and mining equipment, diesel and natural gas engines, and industrial gas turbines. In addition to Complainant’s manufacturing division, Complainant also provides a number of services to its customers including financial, investment, maintenance and support, logistics, insurance, training, and rental services. In connection with the provision of these various goods and services, Complainant owns several trademark registrations with a number of trademark authorities including the CATEPILLAR mark registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 85,816 issued March 19, 1912).
Respondent registered the <caterpillar-business.com>
domain name on
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.
Complainant asserts rights in the CATEPILLAR mark through
long-standing use and through a trademark registration with the USPTO. The Panel finds that Complainant has
established rights in the CATERPILLAR mark for purposes of Policy ¶
4(a)(i). See Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
Complainant contends that Respondent’s <caterpillar-business.com> domain name is confusingly similar to Complainant’s mark. Respondent’s disputed domain name contains Complainant’s CATERPILLAR mark in its entirety and adds a hyphen along with the generic term “business.” The Panel finds that neither the addition of a generic term or the addition of a hyphen sufficiently distinguish Respondent’s disputed domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Yahoo! Inc. v. Vorot, FA 159547 (Nat. Arb. Forum July 16, 2003) (finding that the addition of the generic term “business” is insufficient to distinguish the respondent’s <yahoobusiness.com> domain name from the complainant’s well-known YAHOO! mark); see also Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark").
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established common law rights in this proceeding and contends that Respondent
lacks any rights to or legitimate interests in the <caterpillar-business.com> domain name. Where
Complainant makes a prima facie case under Policy ¶ 4(a)(ii), the burden
shifts to Respondent to set forth concrete evidence that it does possess rights
to or legitimate interests in the disputed domain name. The Panel finds
that Complainant has successfully established a prima facie case under the Policy.
See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO
Complainant contends that Respondent is using the <caterpillar-business.com> domain name to operate a website that fraudulently holds itself out as Complainant’s website and invites Internet users to invest in a program that promises high net returns. Respondent further seeks to gain access to Internet users’ E-Gold account information, presumably for nefarious purposes. The Panel finds that Respondent’s use of the disputed domain name is not in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
Moreover, Complainant contends that Respondent is neither commonly known by the <caterpillar-business.com> domain name nor authorized to register domain names featuring Complainant’s CATERPILLAR mark in any way. Absent evidence suggesting otherwise, the Panel finds that Respondent has not established rights to or legitimate interests in accordance with Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the <caterpillar-business.com>
domain name to operate a website that mimics Complainant’s legitimate website
for the purpose of gaining access to Internet users’ personal information with
the intention to defraud Complainant’s customers. The Panel finds that Respondent registered
and is using the <caterpillar-business.com>
domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA
156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name
was registered and used in bad faith where the respondent hosted a website that
“duplicated Complainant’s mark and logo, giving every appearance of being
associated or affiliated with Complainant’s
business . . . to perpetrate a fraud upon individual
shareholders who respected the goodwill surrounding the AIG mark”); see also
Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13,
2002) (finding that where the
complainant’s mark was appropriated at registration, and a copy of the
complainant’s website was used at the domain name in order to facilitate the
interception of the complainant’s customer’s account information, the
respondent’s behavior evidenced bad faith use and registration of the domain
name).
Moreover, the Panel finds that Respondent’s use is likely, and intended, to cause confusion as to Complainant’s sponsorship of and affiliation with the <caterpillar-business.com> domain name. The Panel finds that Respondent has further shown bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
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 <caterpillar-business.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 14, 2007
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