national arbitration forum

 

DECISION

 

Caterpillar Inc. v. Pixeldot / PD Host

Claim Number: FA0711001109764

 

PARTIES

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 Pixeldot / PD Host (“Respondent”), 71 Bukit Batok Crescent #07-11 Prestige Centre, SG SG 658071, SG.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <caterpillarsparkplugs.com> and <caterpillar-sparkplugs.com>, registered with Tucows, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 16, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 19, 2007.

 

On November 16, 2007, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <caterpillarsparkplugs.com> and <caterpillar-sparkplugs.com> domain names are registered with Tucows, Inc. and that Respondent is the current registrant of the names.  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 November 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 17, 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@caterpillarsparkplugs.com, and postmaster@caterpillar-sparkplugs.com by e-mail.

 

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

 

On December 22, 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <caterpillarsparkplugs.com> and <caterpillar-sparkplugs.com> domain names are confusingly similar to Complainant’s CATERPILLAR mark.

 

2.      Respondent does not have any rights or legitimate interests in the <caterpillarsparkplugs.com> and <caterpillar-sparkplugs.com> domain names.

 

3.      Respondent registered and used the <caterpillarsparkplugs.com> and <caterpillar-sparkplugs.com> domain names in bad faith.

 

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

 

FINDINGS

Complainant, Caterpillar Inc. is a Fortune 100 company and the world’s largest manufacturer of construction and mining equipment.  Complainant is ranked first in this industry.  Complainant registered the CATERPILLAR mark with the Intellectual Property Office of Singapore (“IPOS”) (Reg. No. T3903194G issued July 31, 1939).  Complainant also registered the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 85,816 issued November 18, 1910).

 

Respondent registered the <caterpillar-sparkplugs.com> domain name on July 16, 2007 and the <caterpillarsparkplugs.com> domain name on July 17, 2007.  The disputed domain names disolve to websites that display advertisements for industrial products and display Complainant’s CATERPILLAR mark. 

 

 

DISCUSSION

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 registered the CATERPILLAR mark with the IPOS and the USPTO, therefore establishing rights to the mark pursuant to Policy ¶ 4(a)(i).  Complainant’s filing of the mark with the IPOS and the USPTO before Respondent registered the disputed domain names secures Complainant’s rights to the mark.  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."). 

 

The <caterpillarsparkplugs.com> and <caterpillar-sparkplugs.com> domain names contain Complainant’s entire CATERPILLAR mark and merely adds the generic terms “spark” and “plug.”  These terms do not lessen the confusion between the disputed domain names and Complainant’s mark, as they are terms connected to Complainant’s business.  Also, the addition of a hyphen in one disputed domain name and the top-level domain (“gTLD”) “.com,” in both is insufficient to differentiate the disputed domain names.  The Panel finds that the disputed domain names are confusingly similar to the CATERPILLAR mark under Policy ¶ 4(a)(i).  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”).

 

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

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent has neither rights nor legitimate interests in the disputed domain names.  Complainant has the initial burden of showing that Respondent lacks rights and legitimate interests in the disputed domain names.  The burden then shifts to Respondent to show that it has rights or legitimate interests in the disputed domain names once Complainant has made a prima facie case.  The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii).  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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).

 

Because Respondent failed to respond to the Complaint, the Panel assumes that Respondent lacks all rights and legitimate interests in the <caterpillarsparkplugs.com> and <caterpillar-sparkplugs.com> domain names.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”).  Despite Respondent’s failure to respond, the Panel will examine all evidence in the record to determine if Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).

 

Complainant claims that Respondent has never been authorized to use the CATERPILLAR mark.  Further, the WHOIS information makes no indication that Respondent is commonly known by the disputed domain names.  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).

 

Further, Respondent’s <caterpillarsparkplugs.com> and <caterpillar-sparkplugs.com> domain names resolve to websites that display advertisements for industrial products including those in direct competition with Complainant, and displaying Complainant’s CATERPILLAR mark.  The Panel finds that such use is not 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 Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).

 

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

 

Registration and Use in Bad Faith

 

Respondent’s disputed domain names resolve to websites that offer advertisements that compete with Complainant’s business.  The Panel therefore finds that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Svcs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that displayed commercial links to the websites of the complainant’s competitors); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because the respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).

 

Respondent has registered and is using the <caterpillarsparkplugs.com> and <caterpillar-sparkplugs.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv) because the disputed domain names resolve to websites that host advertisements of various third-party commercial websites, including those in direct competition with Complainant.  The Panel finds that Respondent is benefiting from the likelihood of confusion between Respondent’s domains names and the CATERPILLAR mark, and that such use creates confusion as to Complainant’s source, sponsorship, affiliation, or endorsement of the websites that resolve from the disputed domain names.  The Panel finds that this constitutes evidence of registration and use in bad faith under Policy ¶ 4(b)(iv).  See Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain); see also Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion).

 

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

 

 

DECISION

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

 

Accordingly, it is Ordered that the <caterpillarsparkplugs.com> and <caterpillar-sparkplugs.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Sandra J. Franklin, Panelist

Dated:  January 7, 2008

 

 

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