Caterpillar Inc. v. Mike Pazzi
Claim Number: FA0805001191536
Complainant is Caterpillar Inc. (“Complainant”), represented by Christopher
P Foley, of Finnegan Henderson Farabow Garrett &
Dunner L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <caterpillarkidz.info>, <caterpillarkidz.net>, and <caterpillarkidz.biz>, registered with Godaddy.com, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 19, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 20, 2008.
On May 20, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <caterpillarkidz.info>, < caterpillarkidz.net>, and <caterpillarkidz.biz> domain names are registered with Godaddy.com, Inc. and that 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 May
28, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 17, 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 postmaster@caterpillarkidz.info, postmaster@caterpillarkidz.net, and postmaster@caterpillarkidz.biz by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 24, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <caterpillarkidz.info>, <caterpillarkidz.net>, and <caterpillarkidz.biz> domain names are confusingly similar to Complainant’s CATERPILLAR mark.
2. Respondent does not have any rights or legitimate interests in the <caterpillarkidz.info>, <caterpillarkidz.net>, and <caterpillarkidz.biz> domain names.
3. Respondent registered and used the <caterpillarkidz.info>, <caterpillarkidz.net>, and <caterpillarkidz.biz> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is the world’s largest manufacturer of construction and mining equipment, diesel and natural gas engines, and industrial gas turbines. Complainant registered the CATERPILLAR mark with the United States Patent and Trademark Office (“USPTO”) on March 19, 1912 (Reg. No. 85,816). Complainant had worldwide sales and revenue in excess of $36 billion in 2005 and $41 billion in 2006.
Respondent registered the <caterpillarkidz.net> domain name on November 29, 2007. Respondent registered the <caterpillarkidz.info> and <caterpillarkidz.biz> domain names on November 30, 2007. The disputed domain names resolve to websites featuring links to third-party websites that compete with Complainant’s business.
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.
The Panel finds that Complainant has established rights in
the CATERPILLAR mark for purposes of Policy ¶ 4(a)(i)
through its trademark registration with the USPTO. See
Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
2002) (“Under
Complainant contends that Respondent’s <caterpillarkidz.info>, <caterpillarkidz.net>,
and <caterpillarkidz.biz> domain names are confusingly
similar to its CATERPILLAR mark. The disputed domain names
differ from Complainant’s mark in two ways: (1) the generic term “kidz” has
been added to end of the mark; and (2) a generic top-level domain (“gTLD”),
such as “.net,” “.biz,” and “.info,” has been added to each disputed domain
name. The addition of a generic term to
a mark does not sufficiently distinguish a domain name from the mark for the
purposes of Policy ¶ 4(a)(i). The addition of a gTLD also does not reduce
the likelihood of confusion between the domain name and the mark, because every
domain name must contain a gTLD.
Therefore, the Panel finds that these changes do not minimize or
eliminate the resulting likelihood of confusion, and so Respondent’s disputed
domain names are not sufficiently distinguished from Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See
Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the
registration and use of multiple domain names incorporating the distinctive and
famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words
such as ‘chat’ and ‘financial’ to be confusingly similar to the complainant’s
marks and likely to mislead Internet users into believing that products and
services offered by the respondents are being sponsored or endorsed by YAHOO!
or GeoCities, given the similarity of the names and products and services
offered); see also Am. Online,
Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11,
2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark
and merely added the descriptive terms “traffic school,” “defensive driving,”
and “driver improvement” did not add any distinctive features capable of
overcoming a claim of confusing similarity); see also 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 finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <caterpillarkidz.info>, <caterpillarkidz.net>, and <caterpillarkidz.biz> domain names. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Complainant contends that Respondent is not commonly known
by the <caterpillarkidz.info>, <caterpillarkidz.net>,
and <caterpillarkidz.biz> domain names nor has it ever been
the owner or licensee of the CATERPILLAR mark.
Respondent has been identified as “Mike
Pazzi,” and nothing in the WHOIS records for the disputed domain names
lists Respondent as any variant on CATERPILLAR.
This evidence, along with the fact that Respondent has failed to show
any evidence contrary to Complainant’s contentions, compels the Panel to find
that Respondent is not commonly known as <caterpillarkidz.info>, <caterpillarkidz.net>,
or <caterpillarkidz.biz> pursuant to Policy ¶
4(c)(ii). See 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); see
also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interest where the respondent was not commonly known by the mark and
never applied for a license or permission from the complainant to use the
trademarked name); see also 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").
Respondent maintains websites
at the <caterpillarkidz.info>, <caterpillarkidz.net>,
and <caterpillarkidz.biz> domain names; these websites feature links to third-party websites that compete with
Complainant’s business. The Panel finds that this use of the disputed domain names
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 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
Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002)
(finding that the respondent’s use of a confusingly similar domain name to
operate a pay-per-click search engine, in competition with the complainant, was
not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the disputed
domain names to divert Internet customers from Complainant’s website to
Respondent’s websites that resolve from the disputed domain names, through the
confusion caused by the similarity between the CATERPILLAR mark and the disputed domain names. Complainant also contends that Respondent
intended to disrupt Complainant’s business by diverting confused customers to
Complainant’s competitors. The Panel
finds that Respondent’s use of the disputed domain names disrupts Complainant’s
business, and is evidence of registration and use in bad faith pursuant to
Policy ¶ 4(b)(iii).
Complainant also contends that Respondent is gaining
commercially through this diversion, both through click-through fees and
through the competing goods and services that Respondent is advertising. The Panel finds that this is an intentional
use of the disputed domain names for commercial gain through a likelihood of
confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(b)(iv), this use is also evidence of registration and use in
bad faith. See Associated Newspapers Ltd. v. Domain Manager, FA 201976
(Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”); see also Kmart
v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the
respondent profits from its diversionary use of the complainant's mark when the
domain name resolves to commercial websites and the respondent fails to contest
the complaint, it may be concluded that the respondent is using the domain name
in bad faith pursuant to Policy ¶ 4(b)(iv)).
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 <caterpillarkidz.info>, <caterpillarkidz.net>, and <caterpillarkidz.biz> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: July 9, 2008
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