Caterpillar Inc. v. David Guthrie
Claim Number: FA0708001064579
Complainant is Caterpillar Inc. (“Complainant”), represented by Christopher
P Foley, of Finnegan Henderson Farabow Garrett &
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <caterpillarinc.net>, <caterpillarinc.biz> and <caterpillarinc.info>, registered with Godaddy.com, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 16, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 17, 2007.
On August 16, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <caterpillarinc.net>, <caterpillarinc.biz> and <caterpillarinc.info> domain names are registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 August 23, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 12, 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 also by e-mail to email@example.com, firstname.lastname@example.org and email@example.com.
A timely Response was received on September 12, 2007. The Response was deficient under ICANN Rule 5 as it was received in electronic format only.
On September 19, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant contends, among other things, that:
Complainant is the world’s largest manufacturer of construction and mining equipment, diesel and natural gas engines and industrial gas turbines.
Complainant owns the trademark CATERPILLAR, which has been in use since 1904.
Complainant has operated a website at: <caterpillar.com> since 1995.
Complainant holds numerous registrations for its CATERPILLAR trademark with the United States Patent and Trademark Office (“USPTO”), including Reg. No. 85,816, issued March 19, 1912.
Respondent registered the disputed domain names in May of 2007.
Respondent’s domain names resolve to pay-per-click websites displaying “sponsored links” to other websites, the contents of some of which compete directly with the business of Complainant.
Each of the contested domain names is confusingly similar to Complainant’s CATERPILLAR mark.
Respondent is not commonly known by any of the disputed domain names.
Respondent’s registration and subsequent use of three substantially identical domain names evidences a pattern of bad faith registration and use of the domains.
Respondent had knowledge of Complainant’s mark when it registered its domain names.
Respondent contends, among other things, that:
The contested domain names were registered lawfully.
The domains are not being used at all, and, in particular, not in a way that is competitive with the business of Complainant.
(1) Each of the domain names registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights or legitimate interests in respect of any of the domain names; and
(3) Each of the same domain names was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. the Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
PRELIMINARY ISSUE: RESPONDENT’S NON-COMPLIANT RESPONSE
Although Respondent’s Response was filed timely, it was not filed fully in compliance with ICANN Rule 5 in that Respondent failed to submit a hard copy as required. We would be justified in declining to consider this non-compliant Response in its entirety and for any purpose. However, in the interests of having the Complaint decided on its merits, and, inasmuch as Complainant has not been prejudiced by this deficiency, we will consider the Response as if it had been filed fully in conformity with the Rule.
asserts rights in the CATERPILLAR mark through its registration with the United
States Patent and Trademark Office (“USPTO”).
Such registration of the mark adequately establishes its rights under
Policy ¶ 4(a)(i).
See VICORP Rests., Inc. v. Triantafillos, FA 485933 (Nat.
Arb. Forum July 14, 2005): “Complainant has established rights in the
Complainant also asserts that the <caterpillarinc.net>, <caterpillarinc.biz> and <caterpillarinc.info> domain names are confusingly similar to its mark under Policy ¶ 4(a)(i) because each of the disputed domains incorporates the mark in its entirety, with the mere addition of the abbreviation “inc” and a generic top-level domain (“gTLD”) (“.net,” “.biz” and “.info,” respectively). These modifications to Complainant’s mark do not adequately distinguish the disputed domain names under Policy ¶ 4(a)(i). This is true in part because the letters “inc” form part of Complainant’s corporate name. See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not defeat confusing similarity). As to the addition of the gTLD’s, see, for example, Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):
[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Once Complainant has made out a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the assertion by a complainant that a respondent has no right or legitimate interest is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
Complainant argues that Respondent uses the <caterpillarinc.net>, <caterpillarinc.biz> and <caterpillarinc.info> domain names to operate websites that display hyperlinks to various third-party websites, some of which are in direct competition with Complainant. Respondent denies that it uses the domains at all. Respondent’s denial is disingenuous. It appears from the evidence or record that the domains are “parked,” and that each resolves to a website offering links to businesses in competition with that of Complainant. This is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Charles Letts & Co. v. Citipublications, FA 692150 (Nat. Arb. Forum July 17, 2006) (finding that a respondent’s use of a domain name that was confusingly similar to a complainant’s mark to display links to that complainant’s competitors did not constitute 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 also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that a respondent’s use of a disputed domain name to redirect Internet users to commercial websites, unrelated to a complainant and presumably with the purpose of earning a commission or pay-per-click referral fee, did not evidence rights or legitimate interests in the domain).
Additionally, Complainant contends that Respondent is not commonly known by the disputed domain names. Respondent does not dispute this allegation. We conclude, therefore, that Respondent is not commonly known by the <caterpillarinc.net>, <caterpillarinc.biz> and <caterpillarinc.info> domain names within the meaning of Policy ¶ 4(c)(ii). See 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"); to the same effect, see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent’s registration of three domain names, each of which incorporates Complainant’s CATERPILLAR entire mark, shows a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). We agree. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that registration of several infringing domain names satisfies the burden imposed by Policy ¶ 4(b)(ii)).
Complainant also alleges that Respondent benefits commercially from the websites that resolve from the <caterpillarinc.net>, <caterpillarinc.biz> and <caterpillarinc.info> domain names through the accrual of click-through fees. The available evidence supports this contention. We are also persuaded that the disputed domain names create a likelihood of confusion as to Complainant’s possible sponsorship, affiliation or endorsement of the domains and corresponding websites. This further demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name confusingly similar to a complainant’s mark to offer links to third-party websites that offered services similar to those offered by that complainant); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where a domain name is connected with a complainant’s well-known marks, thus creating a likelihood of confusion evidently motivated by a respondent’s quest for commercial gain).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <caterpillarinc.net>, <caterpillarinc.biz> and <caterpillarinc.info> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 3, 2007
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