Caterpillar Inc. v. Greg Poole d/b/a Industrial Tests, Inc.
Claim Number: FA1001001303230
Complainant is Caterpillar Inc. (“Complainant”), represented by Christopher P. Foley, of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington, D.C., USA. Respondent is Greg Poole d/b/a Industrial Tests, Inc. (“Respondent”), represented by Richard A. Nebb, of Vierra Magen Marcus & DeNiro LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are:
(the “Domain Names”) all of which are 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.
Robert A. Fashler as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 15, 2010. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitted an “opt-in” form available on the Forum’s website.
On January 18, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <caterpillarelectric.com>, <caterpillarelectrical.com>, <caterpillarelectricalservice.com>, <caterpillarelectricalservices.com>, <caterpillarenergy.com>, <caterpillargeneratorservice.com>, <caterpillarpower.com>, <caterpillarpowersystem.com>, <caterpillarservices.com>, <partcaterpillar.com>, <partscaterpillar.com>, and <repaircaterpillar.com> domain names are registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. 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 January 19, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 8, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org. Also on January 19, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on February 8, 2010. Respondent chose to opt-in to the electronic process with its submission and submitted its Response in electronic copy only.
Complainant’s Additional Submission was received on February 16, 2010 in compliance with Supplemental Rule 7.
Respondent did not submit an Additional Submission.
On February 19, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Robert A. Fashler as Panelist.
On March 4, 2010, on its own motion pursuant to Paragraph 15 (c) of the Rules, the Panel issued an Order extending the time period within which the Panel shall be required to render its Decision until March 12, 2010.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant is a “Fortune 100” company. It is the world’s largest manufacturer of construction and mining equipment, diesel and natural gas engines, and industrial gas turbines. It manufactures and sells products and services throughout the world.
Complainant began using the trademark CATERPILLAR (“Complainant’s Mark”) in 1904. Since then, it has used and advertised Complainant’s Mark very extensively in association with a wide range of heavy-industry equipment, such as tractors, track loaders, wheel loaders, excavators, mining shovels, graders, backhoes, paving equipment, engines and gas turbines.
For many decades, Complainant has offered a wide array of services under Complainant’s Mark, including maintenance and support services, financing, logistics, insurance, training and rental. The maintenance and support services include electrical maintenance, diagnostic and emergency services.
For many years, Complainant has offered in association with Complainant’s Mark a complete range of products and services in the field of power plants, including power generation equipment and related parts, project design services, construction services, and plant management services.
Complainant uses and licenses others to use Complainant’s Mark in connection with collateral products, including footwear and apparel.
Complainant has maintained a website on the Internet since 1993. The website is accessed via the domain names <cat.com> and <caterpillar.com>.
Complainant sells billions of dollars worth of products and services under Complainant’s Mark every year. For example, its worldwide revenues exceeded U.S. $51 billion in 2008.
As a consequence of extensive worldwide sales and advertising of products in association with Complainant’s Mark since 1904, Complainant’s Mark has become famous and one of the most valuable trademarks in the world. For example, in an analysis conducted by the organization Interbrand and published in Business Week magazine, Complainant’s Mark was ranked as the 66th most valuable brand in the world in 2009, valued in excess of $5 billion dollars.
Complainant owns many registrations for Complainant’s Mark in over 150 countries. Complainant’s US registrations go back as far as 1912, and include the following registrations:
(a) Registration No. 552,361, which issued in 1951 for CATERPILLAR in stylized letters, in association with SERVICE, MAINTENANCE, AND REPAIR OF INTERNAL COMBUSTION ENGINES, TRACTORS, SCRAPERS, WAGONS, MOTOR GRADERS, SCARIFIERS, BULLDOZERS, RIPPERS, CABLE-CONTROL UNITS, HYDRAULIC-CONTROL UNITS, [ ELECTRIC GENERATORS, DIESEL ] ELECTRIC GENERATOR SETS; [ AGRICULTURAL EQUIPMENT-NAMELY, HARVESTERS, COMBINE HARVESTERS, MOWERS, PUSH RAKES, WINDROWHEADERS AND WINDROWPICK-UPS, THRESHING MACHINES, ] PLOWS, TOOL BARS, AND PARTS, TOOLS, ATTACHMENTS, ACCESSORIES AND EQUIPMENT ASSOCIATED WITH ALL OF SAID PRODUCTS; AND INSTALLATION OF REPAIR PARTS FOR SAID PRODUCTS;
(b) Registration No. 1,579,438, which issued in 1990 for CATERPILLAR and Design, in association with MAINTENANCE AND REPAIR SERVICES IN THE FIELD OF INTERNAL COMBUSTION ENGINES, VEHICLES AND POWER EQUIPMENT; NAMELY TRUCKS, TRACTORS, ENGINES, EARTHMOVING EQUIPMENT, MATERIAL HANDLING EQUIPMENT, PAVING EQUIPMENT AGRICULTURAL EQUIPMENT, GENERATORS, AND CONTROL UNITS FOR THE AFOREMENTIONED; and
(c) Registration No. 832,440, which issued in 1967 for CATERPILLAR in block letters, in association with ELECTRIC STORAGE BATTERIES, ELECTRIC GENERATORS AND DIESEL ELECTRIC GENERATOR SETS, AND PARTS FOR THESE PRODUCTS.
Respondent registered the Domain Name <caterpillarservices.com> (the “Primary Domain Name”) on July 22, 2009.
On October 15, 2009, Complainant’s counsel sent Respondent a cease and desist letter demanding that Respondent transfer the Primary Domain Name to Complainant. Respondent did not reply to that letter.
After receiving Complainant’s cease and desist letter, Respondent registered all of the other Domain Names (the “Undefended Domain Names”). The evidence tendered by Complainant shows that Respondent registered the Undefended Domain Names in three groups, four on October 25, 2009, two on October 28, 2009, and five on November 26, 2009.
Respondent uses all of the Domain Names to redirect Internet users to Respondent’s website at www.industrialtests.com where Respondent advertises the directly competing services of electrical testing, inspection, and maintenance services, and related products, such as replacement parts.
Complainant has rights in Complainant’s Mark by virtue of its many registrations and extensive use throughout the world since 1904. The Domain Names are confusingly similar to Complainant’s Mark because each Domain Name contains Complainant’s Mark together with a generic term and the top level domain .com. The addition of descriptive or generic words to a domain name that features another’s trademark does not avoid confusing similarity. Rather, combining another party’s trademark with descriptive or generic terms that relate directly to the trademark owner’s business increases the likelihood of confusion.
Respondent has no rights or legitimate interests in the Domain Names because:
(a) registering and using a domain name that contains the trademark of another for a commercial website advertising services that directly compete with the services offered by the trademark owner does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name under the UDRP; and
(b) Complainant has not authorized Respondent to use Complainant’s Mark and nothing in the record (such as the WHOIS information for the Domain Names) indicates that Respondent is commonly known by any of the Domain Names.
Respondent registered and is using the Domain Names in bad faith:
(a) under Paragraph 4 (b) (iv) of the Policy, because Respondent is using the Domain Names intentionally to attract, for commercial gain, Internet users to its commercial website by creating a likelihood of confusion with Complainant and Complainant’s Mark;
(b) under Paragraph 4 (b) (iii) of the Policy, because Respondent’s use of the Domain Names to advertise services that compete directly with Complainant’s services disrupts Complainant’s business and unfairly competes with Complainant;
(c) under Paragraph 4 (b) (ii) of the Policy, because Respondent’s registration of all 12 Domain Names constitutes a bad faith pattern of registering trademark-related domain names; and
(d) because Respondent registered the Domain Names with knowledge of Complainant’s rights in Complainant’s Marks, which were famous and registered for many years before the Domain Names were registered.
The proper Respondent is Industrial Tests, Inc., and not the individual Greg Poole.
Respondent does not contest transfer or cancellation of the Undefended Domain Names. The balance of Respondent’s submissions relate exclusively to the Primary Domain Name.
Respondent resides in California, U.S.A., and carries on the business of providing services comprising electrical inspection and testing and maintenance of electrical equipment and systems in the Western United States.
For many years, Respondent has provided aftermarket electrical services for CATERPILLAR branded equipment, and in particular electrical power generator installations.
To Respondent’s knowledge and experience, Complainant does not appear to provide any electrical services in the field to support new installations or maintain existing installations. In Respondent’s experience, those who have purchased Complainant’s power generation systems rely exclusively on independent service providers, such as Respondent, to integrate, test, and perform checkout of the power generation systems supplied by Complainant. Hence, Respondent’s services do not appear to be directly competing with those of Complainant.
Respondent makes no use at all of Complainant’s Mark or its other trademark CAT on Respondent’s website.
Respondent has made use of the Primary Domain Name to attract Internet customers looking for service for their CATERPILLAR branded equipment. Respondent uses brand names of other third parties in a descriptive manner to identify some of the brands of electrical equipment that Respondent services.
Respondent does not use <caterpillarservices.com> as a trademark, but as a domain name to direct traffic to its web site, where it advertises its specialized electrical services, although the web site does not advertise any services for Caterpillar branded electrical equipment.
It is clear upon viewing any page of Respondent’s website that there is no possibility of confusion in the minds of relevant consumers between the maker or seller of any brand of electrical equipment with Respondent’s services. Respondent’s website clearly advertises Respondent’s independent services for electrical inspection, testing, and maintenance of many different brands of electrical equipment.
Respondent has routinely used Complainant’s Mark for many years to describe one brand of electrical products serviced by Respondent.
The Primary Domain Name is not confusingly similar to Complainant’s Mark because the addition of the word “services” to the CATERPILLAR mark distinguishes the Primary Domain Name from the Complainant’s Mark. The words that make up the Primary Domain Name constitute a nominative description of Respondent’s products and services and therefore the Primary Domain Name is not confusingly similar to Complainant’s Mark.
Respondent has rights and legitimate interests in the Primary Domain Name because that domain name constitutes an accurate description of Respondent’s business – providing services and replacement parts for products branded CATERPILLAR. This is a nominative fair use expressly permitted by U.S. trademark law and the UDRP.
Respondent has not registered or used the Primary Domain Name in bad faith. The bulk of Respondent’s submission on this issue is quoted below:
Respondent has not registered the disputed domain name <caterpillarservices.com> in bad faith. It was not registered “primarily for the purpose of selling, renting, or otherwise transferring the domain name;” nor was it registered “in order to prevent Complainant from reflecting the mark in a corresponding domain name;” nor was it was registered “primarily for the purpose of disrupting the business of a competitor.” Respondent acknowledges that the domain was registered “to attract, for commercial gain, Internet users to Respondent’s web site” but not by creating a likelihood of confusion as to source, affiliation, or endorsement.
Caterpillar’s famous brands are CATERPILLAR and CAT, and their products and equipment are well known by either of these marks. Further, Complainant owns and uses the domain names <caterpillar.com> and <cat.com> to reflect its brands in domain names. It is unlikely that a consumer looking for Complainant on the internet would type in the address bar the domain name <caterpillarservices.com>. Much more likely, given the fame of Complainant’s mark, a user would readily type <caterpillar.com> or simply <cat.com>, and lo and behold, they would be successful in locating the Complainant.
Complainant does not own a trademark registration anywhere for the term “caterpillar services,” and this phrase is properly construed as a nominative fair use of Complainant’s famous mark for one who renders such services, such as Respondent.
The fact that Complainant's trademark CATERPILLAR is well-known is irrelevant to the question of bad faith registration in this case….Respondent does not use <caterpillarservices.com> as a trademark, but as a domain name to direct traffic to its web site, where it advertises its specialized electrical services, although the web site does not advertise any services for Caterpillar branded electrical equipment.
…. More recently, and certainly slowly compared with Complainant and others, Respondent has established an online presence. As part of that online presence, Respondent has actively sought and registered available domain names that describe its services, such as <caterpillarservices.com>. Although Respondent initially registered many domains of a descriptive nature, on the advice of counsel, Respondent is paring down the list of domains to focus on domains of the form <”brand”service.com>, where the “brand” is Caterpillar or any other brand that offers electrical systems. The fair use of brand names in a nominative, descriptive format is not prohibited by ICANN rules.
C. Complainant’s Additional Submissions
There is no meaningful difference between the Primary Domain Name and the Undefended Domain Names or the manner in which the Domain Names have all been used by Respondent.
Respondent’s admissions (both express and implicit as a consequence of failure to deny) support Complainant’s case. Respondent registered the Primary Domain Name with actual knowledge that Complainant had rights in Complainant’s famous and registered CATERPILLAR trademark and without authorization. Respondent registered and uses the Primary Domain Name to attract Internet users for commercial gain to promote its services.
There is no support under the UDRP or past UDRP decisions for the proposition that the generic or descriptive term “services” distinguishes the Primary Domain Name from Complainant’s Mark. Caterpillar uses the term “services” to identify many of its offerings and divisions, such as Caterpillar Logistics Services and Caterpillar Financial Services. Hence, the inclusion of “services” in the Primary Domain Name increases the confusing similarity of the Primary Domain Name to Complainant’s Mark.
Respondent’s services are competing with the products and services listed in Complainant’s trademark registrations and with those identified in Complainant’s evidence.
The Primary Domain Name is not a nominative fair use sanctioned by U.S. trademark law or the UDRP.
Use of a trademark in a domain name communicates information as to the source of the website, not the source of the products being offered on the site. Hence, the presence of Complainant’s Mark in the Primary Domain Name communicates that Complainant is the source of Respondent’s website.
The critical issue in the case is not whether Respondent’s services related to CATERPILLAR products are legitimate; it is whether Respondent’s use of Complainant’s Mark in the Primary Domain Name is legitimate.
D. Respondent’s Additional Submissions
Respondent did not make any Additional Submissions.
The Panel finds that Complainant has proven all three elements set out in Paragraph 4 (a) of the Policy in relation to all the Domain Names. The Panel orders the transfer of all the Domain Names to Complainant.
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:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Respondent expressly confirmed that it does not contest transfer or cancellation of the Undefended Domain Names. In accordance with that position, Respondent did not make any submissions in relation to the Undefended Domain Names.
Paragraph 5 (b) (i) of the Rules requires the Respondent to submit a response that responds specifically to the statements and allegations contained in the complaint and includes any and all bases for the Respondent to retain registration and use of the of the disputed domain name.
Paragraph 14 (b) of the Rules directs panels to draw such inferences from a disputant’s failure to comply with the Rules as the panels consider appropriate.
The Panel considers Respondent’s express decision not to contest transfer of the Undefended Domain Names, and Respondent’s failure to respond to Complainant’s allegations about the Undefended Domain Names, to constitute an admission of all such allegations. As well, the Panel finds that the analysis set out below in relation to the Primary Domain Name applies equally to the Undefended Domain Names.
Accordingly, the Panel finds that Complainant has satisfied all the requirements of Paragraph 4 of the Policy in relation to Undefended Domain Names and orders that the Undefended Domain Names be transferred to Complainant.
Complainant has established that it has held rights in the trademark CATERPILLAR worldwide for many years, going back as far as 1904. Those rights are founded in registrations in many countries and common law rights in the United States (and likely in other common law countries).
Complainant holds U.S. trademark registrations for CATERPILLAR
covering, inter alia, maintenance and
repair services and electric generators, which registrations issued,
respectively, in 1990 and 1967.
Complainant’s registrations are sufficient to establish rights in
Complainant’s Mark for the purpose of Paragraph 4 (a) (i) of the Policy. See
Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a
trademark registration adequately demonstrates a complainant’s rights in a mark
under Policy ¶ 4(a)(i)); see also
Further, the submissions of both parties clearly establish that Complainant’s Mark is famous and was well known to Respondent before it registered the Primary Domain Name. The Panel concludes that Complainant’s Mark is very strong and is entitled to a wide scope of legal protection.
The Primary Domain Name has three components, namely, the trademark CATERPILLAR, the descriptive word “services”, and the top level domain “.com.” It is well established that combining descriptive or generic words with another party’s trademark in a domain name will not normally serve to avoid confusion between the domain name and the trademark. This is particularly so when the descriptive or generic word has an obvious relationship to the trademark owner’s business, products, or services. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)); see also Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense).
Further, the addition of a top level domain is irrelevant in distinguishing a disputed domain name from an established mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Complainant has established that it sells many different kinds of services to the public, including services related to power generation plants and equipment. As well, it is common for suppliers of equipment to offer services relating to that equipment. The Panel is of the view that an average person seeing the Primary Domain Name would likely believe that those words refer to services offered by Complainant.” The Panel finds that the Primary Domain Name is confusingly similar to Complainant’s Mark and that Complainant has satisfied its burden under Paragraph 4 (a) (i) of the Policy.
Considered together, the submissions of Complainant and Respondent establish the following facts:
(a) Respondent is not, and has never been, commonly known by the Primary Domain Name;
(b) Complainant and Respondent both sell products and services relating to power generating plants and equipment;
(c) Complainant’s Mark is famous;
(d) Respondent provides strictly commercial services that relate directly to Complainant’s products and the products of several other manufacturers;
(e) Respondent’s website clearly identifies Respondent and its business;
(f) Respondent’s website clearly states that Respondent provides services for the equipment of a number of manufacturers who are identified by name or trademark, but Complainant is not one of the manufacturers so named;
(g) Respondent knew about Complainant, Complainant’s products and services, and Complainant’s Mark before Respondent registered the Primary Domain Name;
(h) Respondent registered the Primary Domain Name for the purpose of attracting, for commercial gain, Internet users to Respondent’s website (although Respondent denies that it intended to do that by creating a likelihood of confusion as to source, affiliation, or endorsement);
(i) Respondent has actively used the Primary Domain Name to attract Internet customers looking for service for their CATERPILLAR branded equipment;
(j) Respondent has actively sought and registered available domain names that describe its services, such as <caterpillarservices.com>, including all 12 of the Domain Names;
(k) although Respondent initially registered many domains of a descriptive nature, on the advice of counsel, Respondent is pairing down the list of domains to focus on domains of the form <”brand”service.com>, where the “brand” is CATERPILLAR or any other brand that offers electrical systems;
(l) Complainant has not authorized Respondent to register or use any domain name that incorporates Complainant’s Mark.
Under Paragraph 4 (a) (ii) of the Policy, Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
For several reasons, the Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the Primary Domain Name. Respondent is not commonly known by the Primary Domain Name and was not authorized to incorporate Complainant’s mark in the Primary Domain Name. 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
The Primary Domain
Name redirects to Respondent’s commercial website, which advertises services
that directly compete with Complainant’s business.
The burden thus shifts to Respondent to show that it does have rights or legitimate interests in the Primary Domain Name.
Respondent’s makes only one argument that comes within the scope of Paragraph 4 (c) of the Policy. Specifically, Respondent asserts that its registration and use of the Primary Domain Name, which incorporates Complainant’s Mark, constitutes nominative fair use. Respondent points specifically to the fair use defense set out in the Lanham Act (15 U.S.C. 1115 (b) (4)).
The defense of nominative fair use has been applied in situations where the defendant uses the trademark of the plaintiff to describe the plaintiff’s products. The leading case on this defense is New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992). In New Kids, the Ninth Circuit identified three elements necessary to satisfy the defense:
First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.
The Panel holds the view that the defense of nominative fair use is generally not well-adapted to domain names consisting of nothing more than another party’s trademark and a descriptive or generic word. The factual context of a domain name is strikingly different from the context in which the defense usually arises.
When one goes shopping at MACY’S Department Store, there is never any possibility of confusing the identity of the retailer selling LEVIS jeans with the identity of the manufacturer of LEVIS jeans. The same factual context exists when MACY’S places an advertisement in the newspaper telling the world that it is offering LEVIS jeans for sale. Similarly, if one looks at MACY’S website, one will have no difficulty distinguishing between the source of the retail services and the source of the jeans In all of these examples, the customer will see the manufacturer’s trademark only in the unequivocal context of the retailer’s business as communicated by its trademark or trade name. The brands of both parties are both present. The customer knows exactly who is representing that it sells LEVIS jeans. There is no serious possibility of confusion as to source.
That context is absent for domain names, like <caterpillarservices.com>, that consist of another party’s trademark and a descriptive or generic word. When such a domain name is first encountered by a potential customer, there is no other trademark present to establish the necessary context and thereby prevent confusion. Instead, the trademark appears together with a descriptive or generic term that describes an activity or attribute that most viewers would associate with the owner of the trademark. The prospective customer has no way of knowing who is making the representation that it supplies LEVIS jeans or maintenance for CATERPILLAR equipment. It is natural for the customer to conclude that the owner of the trademark is making the representation. The domain name creates confusion as to the identity of the party making the representation. The prospective customer will not learn who is making the representation until it visits the website. Diverting Internet traffic to the website is the confusion caused by the domain name. See Paccar Inc., v. Telescan Technologies, LLC., 319 F.3d 243 (6th Cir. 2003) (the domain names <peterbiltnewtrucks.com>, <peterbiltusedtrucks.com>, <peterbilttruckdealers.com>, <kenworthnewtrucks.com>, <kenworthusedtrucks.com>, and <kenworthtruckdealers.com> were all found to be confusing with the trademarks PETERBILT and KENWORTH and the defense of nominative fair use was not applicable).
That is certainly the case with <caterpillarservices.com>. Initial confusion as to the source of the website itself is inevitable. It is true that after visiting Respondent’s website most prospective customers would figure out that Complainant does not operate Respondent’s website (although that is not certain because nothing on the website spells out the true relationship between Complainant and Respondent). However, that would occur too late in the process. At that point, confusion and diversion of Internet traffic has already occurred.
Applying the test set out in the New Kids case, it is clear that the Primary Domain Name was composed in a manner that, at best, suggests sponsorship or endorsement by Complainant, and, at worst, creates confusion as to the source of Respondent’s website.
While Respondent does not expressly refer to Paragraphs 4 (c) (i) and (iii) of the Policy, The Panel assumes that Respondent is, in fact, relying on those paragraphs as well as the Lanham Act.
Some UDRP decisions have applied the nominative fair use defense in the context of Paragraph 4 (c) (iii) of the Policy, specifically in relation to a domain name that consists of the complainant’s trademark combined with a descriptive or generic word. See Caterpillar Inc. v. Neal McKean, NAF 97302 (where it was held that Respondent had for many years been involved in selling used equipment, including Caterpillar equipment, and therefore Respondent had a legitimate and bona fide use of the domain names <used-caterpillars.com>, <used-caterpillar.com>, <used caterpillars.com>, <caterpillarsused.com> and <used-cats.com>, and Complainant’s requested relief was denied.
The Panel is of the view that the reasoning set out in Caterpillar Inc. v. Neal McKean has no application to this case. Rather, for the reasons discussed above, the Panel finds that Respondent’s registration and use of the Primary Domain Name was not a legitimate noncommercial or fair use of the Primary Domain Name without intent for commercial gain to misleadingly divert consumers. Respondent has failed to prove that its use of the Primary Domain Name comes within the ambit of Paragraph 4 (c) (iii) of the Policy.
The next question to consider is whether Respondent is entitled to relief under Paragraph 4 (c) (i) of the Policy. Specifically, the question is whether Respondent used the Primary Domain Name before receiving notice of this dispute in connection with a bona fide offering of goods or services. There is no doubt that Complainant’s cease and desist letter arrived after Respondent registered and began to use the Primary Domain Name. The next question is whether those activities were bona fide. UDRP cases have found in favour of respondents who could satisfy the following four-part test:
(a) the respondent must actually be offering the goods or services at issue;
(b) the respondent must use the website to sell only the trademarked goods (otherwise, it could be using the trademark to bait internet users and then switch them to other goods);
(c) the respondent must take steps to prevent confusion by making clear in its use of the domain name that it is not the trademark owner, even if it offers legitimate goods, by accurately disclosing the registrant’s relationship with the trademark owner (i.e. it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, or that it is an authorized or exclusive agent);
(d) the respondent does not corner the market in all domain names or deprives the trademark owner of reflecting its own mark in a domain name.
See Oki Data Americas, Inc. v. ASD, Inc., Case No. D2001-0903, (legitimate descriptive use formed basis to deny transfer of <okidataparts.com>). Also see Dr. Ing. h.c.F. Porsche AG v. Del Fabbro Laurent, Case No. D2004-0481, (legitimate interest required relief to be denied re domain names <porsche-buy.com> and <porschebuy.com.).
The Panel is of the view that it is unnecessary to consider the test applied in the Oki Data and Dr. Ing. h.c.F. Porsche cases. As already discussed, the Primary Domain Name itself is likely to cause confusion and is not a fair use. Respondent registered and used the Primary Domain Name intentionally with full knowledge of Complainant’s famous trademark for the purpose of attracting Internet users looking for CATERPILLAR services. That is not a good faith offering of services. However, for the sake of completeness, the Panel will apply that test to the facts of this case.
Respondent does not satisfy point (b) of the test. It offers services for the equipment of many different manufacturers. In fact, Respondent’s website does not even mention the fact that Respondent offers any services for Complainant’s equipment.
Respondent does not take steps to prevent confusion by making clear in its use of the domain name that it is not the trademark owner. There is nothing in the domain name that clarifies ownership of the trademark. There is no appropriate notice on Respondent’s website.
Respondent has failed to prove that its use of the Primary Domain Name comes within the ambit of Paragraph 4 (c) (i) of the Policy.
In any event, Respondent’s assertion that it needs to make reference to Complainant in the Primary Domain Name so that Respondent can accurately describe its own services (which are applied to Complainant’s products) is highly suspect. Respondent’s website makes express reference to numerous manufacturer’s, indicating clearly that Respondent provides services for the products of those parties. For example, Respondent’s website makes the following statements:
Our Services Include:
…Protective Relay Testing and Programming - Schweitzer, ABB, GE, Westinghouse, Areva, Alstom, and Multilin
…Load Tap Changer Inspections and Upgrades including Reinhausen
PLC system design, programming and panel construction for Allen Bradley, Modicon, Fanuc and Telemecnique
We also offer aftermarket parts and service for GE, Square D, Siemens, ABB, Eaton, Emerson, Cutler Hammer, Westinghouse, Powell and Allen Bradley. Our shop is well equipped to repair any manufacturers switchgear, switchboard, circuit breaker, drive or PLC. And, we stock replacement parts.
If it is so important for Respondent to communicate to the world that it provides services for CATERPILLAR products, why doesn’t it mention Complainant in its website along with the other manufacturers?
The Panel finds that Respondent does not have rights or legitimate interests in the Primary Domain Name and that Complainant has satisfied its burden under paragraph 4 (a) (ii) of the Policy.
Respondent has expressly admitted that it:
(a) registered the Primary Domain Name for the purpose of attracting, for commercial gain, Internet users to Respondent’s website;
(b) has made use of the Primary Domain Name to attract Internet customers looking for service for their CATERPILLAR branded equipment.
However, Respondent insists that its registration and use of the Primary Domain Name did not create a likelihood of confusion as to source, affiliation, or endorsement. Respondent also claims that registration and use of the Primary Domain Name was permissible at law and under the UDRP because it constituted a nominative fair use.
The Panel has already found that the Primary Domain Name is confusingly similar to Complainant’s mark, that Respondent’s use of the Primary Domain Name was likely to cause confusion with Complainant’s Mark, and that neither the registration nor the use of the Primary Domain Name constitutes a nominative fair use or a bona fide offering of goods and services.
The Panel finds that Complainant has established that Respondent registered and used the Primary Domain Name in bad faith under Paragraph 4 (b) (iv). It is not necessary for the Panel to consider any other ways in which Respondent’s conduct constitutes bad faith under Paragraphs 4 (a) (iii) or (b) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <caterpillarelectric.com>, <caterpillarelectrical.com>, <caterpillarelectricalservice.com>, <caterpillarelectricalservices.com>, <caterpillarenergy.com>, <caterpillargeneratorservice.com>, <caterpillarpower.com>, <caterpillarpowersystem.com>, <caterpillarservices.com>, <partcaterpillar.com>, <partscaterpillar.com>, and <repaircaterpillar.com> domain names be TRANSFERRED from Respondent to Complainant.
Robert A. Fashler, Panelist
Dated: March 12, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum