Caterpillar Inc. v. Transure Enterprise Ltd a/k/a Host Master
Claim Number: FA1005001326349
Complainant is Caterpillar
Inc. (“Complainant”), represented by Christopher
P. Foley, of Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <caterpilllar.com>, registered with Above.com.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 25, 2010.
On May 25, 2010, Above.com confirmed by e-mail to the National Arbitration Forum that the <caterpilllar.com> domain name is registered with Above.com and that Respondent is the current registrant of the name. Above.com has verified that Respondent is bound by the Above.com 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 26, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 15, 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 postmaster@caterpilllar.com. Also on May 26, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 21, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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" through submission of a Written Notice, as defined in Rule 1. 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 <caterpilllar.com> domain name is confusingly similar to Complainant’s CATERPILLAR mark.
2. Respondent does not have any rights or legitimate interests in the <caterpilllar.com> domain name.
3. Respondent registered and used the <caterpilllar.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Caterpillar Inc., is a manufacturer of construction and mining equipment, diesel and natural gas engines, including marine engines, and industrial gas turbines. Complainant also provides numerous services including financing, maintenance and support, logistics, insurance, training, and rental services. Complainant owns multiple United States Patent and Trademark Office (“USPTO”) trademark registrations for the CATERPILLAR mark, including the following:
Reg. No. 85,816 issued March 19, 1912;
Reg. No. 345,499 issued April 27, 1937;
Reg. No. 531,626 issued October 10, 1950;
Reg. No. 1,579,438 issued January 23, 1990; and
Reg. No. 2,448,848 issued May 8, 2001.
Respondent, Transure Enterprise Ltd a/k/a Host Master, registered the <caterpilllar.com> domain name on February 13, 2008. The disputed domain name resolves to a pay-per-click website featuring links to competing and other commercial websites.
Respondent has been the respondent in at least thirty-seven
other URDP proceedings in which the disputed domain names were transferred to
the respective complainants. See, e.g.,
State Farm Mut. Auto. Ins. Co. v.
Transure Enter. Ltd., FA 1176762 (Nat. Arb. Forum May 22, 2008);
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.
Complainant owns multiple USPTO trademark registrations for the CATERPILLAR mark, including the following:
Reg. No. 85,816 issued March 19, 2912;
Reg. No. 345,499 issued April 27, 1937;
Reg. No. 531,626 issued October 10, 1950;
Reg. No. 1,579,438 issued January 23, 1990; and
Reg. No. 2,448,848 issued May 8, 2001.
The Panel finds that Complainant’s five trademark
registrations are substantial evidence of Complainant’s rights in the
CATERPILLAR mark for the purposes of Policy ¶ 4(a)(i),
regardless of the fact that Respondent may live or operate in a country other
than the
Complainant contends that Respondent’s <caterpilllar.com> domain name is confusingly similar to Complainant’s CATERPILLAR mark because the only differences between the two is the insertion of an extra letter “l” and the addition of the generic top-level domain (“gTLD”) “.com.” The Panel finds that minor typographical errors, such as the insertion of an extra letter, fail to remove the disputed domain name from the realm of confusing similarity according to Policy ¶ 4(a)(i). See Marriott Int'l, Inc. v. Seocho, FA 149187 (Nat. Arb. Forum Apr. 28, 2003) (finding that the respondent's <marrriott.com> domain name was confusingly similar to the complainant's MARRIOTT mark); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”). The Panel also holds a gTLD to be inconsequential in differentiating a disputed domain name from Complainant’s 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). The Panel accordingly finds that Respondent’s <caterpilllar.com> domain name is confusingly similar to Complainant’s CATERPILLAR mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Policy ¶ 4(a)(ii) requires that Complainant first present a prima facie case against Respondent
before Respondent must bear the burden of demonstrating rights and legitimate
interests in the disputed domain name.
The Panel finds that Complainant’s assertion that Respondent lacks
rights and legitimate interests and its supporting evidence sufficiently
establish such a prima facie case. Respondent has not met its burden in proving
rights and legitimate interests due to its failure to respond. Thus, the Panel finds that it may accept
Complainant’s allegations as true and find Respondent without rights and
legitimate interests in the disputed domain name. See Law Soc’y of
Complainant alleges that the WHOIS information for the <caterpilllar.com> domain name does not indicate that Respondent is commonly known by the disputed domain name, which is evidence that Respondent is not commonly known by the disputed domain name. The Panel finds that this disassociation between the disputed domain name and Respondent supports a conclusion that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Complainant contends that Respondent uses the <caterpilllar.com> domain name for nothing more than hosting a site filled with pay-per-click links to competing and other commercial websites. The Panel finds that Respondent’s use of the disputed domain name in connection with such a pay-per-click site does not comport with a bona fide offering of goods required by Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use required by Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
Complainant asserts that Respondent’s <caterpilllar.com> domain name is
only a minor deviation from Complainant’s mark, resulting from the insertion of
a single additional letter. Complainant
argues that this is a common type of typographical error that is registered as
a domain name in order to intentionally exploit the fame of Complainant’s mark. The Panel finds that the use of typographical
errors in the disputed domain name to attract Internet traffic is typosquatting
and serves as evidence of Respondent’s lack of rights and legitimate interests
in the disputed domain names according to Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent has been the respondent
in at least thirty-seven other UDRP proceedings in which the disputed domain
names were transferred to the respective complainants. See,
e.g., State Farm Mut. Auto. Ins. Co. v. Transure Enter. Ltd., FA 1176762
(Nat. Arb. Forum May 22, 2008);
Complainant contends that Respondent’s <caterpilllar.com> domain name
disrupts Complainant’s business of providing equipment and engines by
advertising links to Complainant’s competitors.
The Panel finds Respondent’s intentional diversion of Complainant’s
customers to Complainant’s competitors reveals bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See EthnicGrocer.com, Inc. v. Unlimited
Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that
the minor degree of variation from the complainant's marks suggests that the
respondent, the complainant’s competitor, registered the names primarily for
the purpose of disrupting the complainant's business); see also Am. Airlines, Inc. v.
Complainant asserts that Respondent’s use of such a similar version of Complainant’s mark in the <caterpilllar.com> domain name is an attempt to trade off the fame of Complainant’s mark in order to attract traffic to Respondent’s pay-per-click website commercially benefiting Respondent. The Panel therefore finds that Respondent is profiting from its efforts to confuse and attract Complainant’s customers, which demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
The Panel has previously concluded that Respondent’s registration of the <caterpilllar.com> domain name, which is confusingly similar to Complainant’s mark, is typosquatting. The Panel finds that typosquatting demonstrates bad faith registration and use under Policy ¶ 4(a)(iii). See Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (“Respondent’s registration and use of the disputed domain name demonstrates a practice commonly referred to as ‘typosquatting.’ This practice diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use under Policy ¶ 4(b)(iv).”); see also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”).
The Panel finds 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 <caterpilllar.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 5, 2010
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