Caterpillar Inc. v. Int Bus a/k/a Intermediate in Business Inc
Claim Number: FA0801001140855
Complainant is Caterpillar Inc. (“Complainant”), represented by Christopher
P. Foley, of Finnegan Henderson Farabow Garrett &
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <caterpillardealer.info>, registered with Enom, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On February 6, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 26, 2008 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 <caterpillardealer.info> domain name is confusingly similar to Complainant’s CATERPILLAR mark.
2. Respondent does not have any rights or legitimate interests in the <caterpillardealer.info> domain name.
3. Respondent registered and used the <caterpillardealer.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Caterpillar Inc., is a Fortune 500 company and
the world’s largest manufacturer of construction and mining equipment, diesel
and natural gas engines, and industrial gas turbines. Complainant manufacturers and sells a wide
array of heavy-industrial equipment including: tractors, track loaders, wheel
loaders, integrated tool loaders, paving products, agricultural equipment,
forest machines, telescopic handlers, other engines and gas turbines. Complainant owns a number of trademark
registrations for the CATERPILLAR mark with the United States Patent and
Trademark Office (“USPTO”) (i.e. Reg. No. 85,816 issued
Respondent registered the <caterpillardealer.info> 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.
Through registration with the USPTO, Complainant has
established rights in the CATERPILLAR mark pursuant to Policy ¶ 4(a)(i). See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
Complainant contends that Respondent’s <caterpillardealer.info> domain name is confusingly
similar to Complainant’s CATERPILLAR mark.
Respondent’s disputed domain name contains Complainant’s mark, adds a
generic term relating to Complainant’s business and adds the generic top-level
domain name (“gTLD”) “.info.” The Panel
finds that a disputed domain name that contains a complainant’s mark and adds a
generic term with a direct relationship to a complainant’s business is confusingly
similar pursuant to Policy ¶ 4(a)(i). See L.L. Bean, Inc. v.
ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that
combining the generic word “shop” with the complainant’s registered mark
“llbean” does not circumvent the complainant’s rights in the mark nor avoid the
confusing similarity aspect of the ICANN Policy); 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).
In addition, the Panel holds that a gTLD is insufficient in
distinguishing a disputed domain name. See Busy Body, Inc. v. Fitness Outlet
Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic
top-level domain (gTLD) name ‘.com’ is . . . without legal
significance since use of a gTLD is required of domain name registrants . . .
."); see also Gardline
Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks all rights and
legitimate interests in the <caterpillardealer.info>
name. When Complainant makes a prima facie case in support of its
allegations, the burden is shifted to Respondent to prove that it does have
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii). The Panel finds that in this
case, Complainant has established a prima
facie case. See Compagnie Generale des Matieres Nucleaires v.
Greenpeace Int’l, D2001-0376 (WIPO
Due to Respondent’s failure to respond to the Complaint, the
Panel assumes that Respondent does not have rights or legitimate interests in
the disputed domain name. See CMGI,
Inc. v. Reyes, D2000-0572 (WIPO
Complainant asserts that Respondent has not been and is not
commonly known by the disputed domain name, and is not currently authorized to
use the CATERPILLAR mark. In addition,
the WHOIS information identifies Respondent as “Intermediate in Business Inc.,”
and therefore gives no indication that Respondent has been or is commonly known
by the <caterpillardealer.info> domain name. Therefore, the Panel finds that Respondent is
not commonly known by the disputed domain name pursuant to Policy ¶
4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
Complainant contends that Respondent is using the <caterpillardealer.info> domain name to redirect Internet users to a website containing various third-party advertisements offering products in competition with Complainant. The Panel finds that intentionally diverting Internet users to a competing website by using a domain name which is confusingly similar to a complainant’s mark is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the <caterpillardealer.info>
to advertise websites in direct competition with Complainant is evidence of bad
faith. The Panel finds that a registered
domain name used primarily to disrupt the business prospects of a competitor is
a demonstration of bad faith registration and use pursuant to Policy ¶
4(b)(iii). See Disney Enters., Inc. v.
Noel, FA 198805 (Nat. Arb. Forum
Respondent is using the <caterpillardealer.info> domain name in order to intentionally attract Internet users to its website by creating a strong possiblity of confusion with Complainant’s CATERPILLAR mark and offering third-party links to competing websites. The Panel infers that Respondent receives click-through fees for diverting Internet users to such websites. Therefore, pursuant to Policy ¶ 4(b)(iv), the Panel finds such use of the disputed domain name constitutes bad faith registration and use. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”).
In addition, Respondent’s
engagement in a pattern of previous registrations for domain names with
registered trademarks is further evidence of bad faith. On two prior occasions, Respondent has been the
subject of UDRP disputes in which panels have ordered the infringing disputed
domain names to be transferred to the respective complainants. See F.
Hoffmann-La Roche AG v. Intermediate in Business Inc., D2006-0592 (WIPO
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 <caterpillardealer.info> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: March 12, 2008
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