Caterpillar Inc. v. Marian Englert
Claim Number: FA1006001332818
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 <caterpillardirect.com> and <directcaterpillar.com>, registered with Fastdomain, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 30, 2010.
On June 30, 2010, Fastdomain, Inc. confirmed by e-mail to the National Arbitration Forum that the <caterpillardirect.com> and <directcaterpillar.com> domain names are registered with Fastdomain, Inc. and that Respondent is the current registrant of the names. Fastdomain, Inc. has verified that Respondent is bound by the Fastdomain, 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 July 1, 2010, the Forum served the
Complaint and all Annexes, including a Written Notice of the Complaint, setting
a deadline of July 21, 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@caterpillardirect.com and
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 27 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 "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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <caterpillardirect.com> and <directcaterpillar.com> domain names are confusingly similar to Complainant’s CATERPILLAR mark.
2. Respondent does not have any rights or legitimate interests in the <caterpillardirect.com> and <directcaterpillar.com> domain names.
3. Respondent registered and used the <caterpillardirect.com> and <directcaterpillar.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Caterpillar, Inc., is a global designer, manufacturer and distributor of heavy construction and agricultural equipment and products associated with the construction and agriculture industries. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office ("USPTO") for its CATERPILLAR mark (e.g., Reg. No. 85,816 issued March 19, 1912).
Respondent, Marian Englert, registered the <caterpillardirect.com> and <directcaterpillar.com> domain names on March 9, 2010 and March 11, 2010 respectively. Respondent’s disputed domain names resolve to a commercial website that displays Complainant’s used products and the used products of Complainant’s competitors for sale.
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 has submitted evidence to show that it has
rights in its CATERPILLAR mark through multiple trademark registrations with
the USPTO (e.g., Reg. No. 85,816
issued March 19, 1912). The Panel finds
that Complainant’s trademark holdings with the USPTO are sufficient to
establish rights in the CATERPILLAR mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat.
Arb. Forum Apr. 17, 2006) (“Complainant has
established rights in the MICROSOFT mark through registration of the mark with
the USPTO.”); see also
Complainant contends that Respondent’s <caterpillardirect.com> and <directcaterpillar.com> domain names are confusingly similar to Complainant’s CATERPILLAR mark because both domain names contain Complainant’s mark entirely, in addition to the generic word “direct.” Further, Complainant contends that the addition of the generic top-level domain (“gTLD”) is irrelevant to Policy ¶ 4(a)(i). The Panel agrees and finds that the <caterpillardirect.com> and <directcaterpillar.com> domain names are confusingly similar to Complainant’s CATERPILLAR mark under Policy ¶ 4(a)(i). See State Farm Mut. Auto. Ins. Co. v. Kaufman, FA 94335 (Nat. Arb. Forum Apr. 24, 2000) (finding that <statefarmdirect.com> is confusingly similar to the complainant’s registered mark); see also General Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that adding the generic term “direct” on to the complainant’s marks (GE CAPTIAL and GECAL) does not alter the underlying mark held by the complainant, and thus the respondent’s domain names are confusingly similar); Jerry Damson, Inc. v. Texas Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Complainant argues that Respondent does not possess rights and legitimate interests in the <caterpillardirect.com> and <directcaterpillar.com> domain names. Upon Complainant’s production of a prima facie case in support of such allegations the burden of proof transfers to Respondent to show that it does have rights and legitimate interests in the domain names. 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 Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Panel finds that Complainant has established a prima facie case to support its allegations, and that the burden has properly shifted to Respondent. However, Respondent’s failure to respond to these proceedings leads the Panel to believe that Respondent does not have rights and legitimate interests in the <caterpillardirect.com> and <directcaterpillar.com> domain names. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). Nevertheless, the Panel will consider the evidence in the record to determine whether Respondent does indeed lack rights and legitimate interests in the domain names under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the disputed domain names and that Complainant has not authorized Respondent to use the CATERPILLAR mark in any way. The WHOIS information for the <caterpillardirect.com> and <directcaterpillar.com> domain names identifies “Marian Englert” as the registrant, and Respondent has not submitted evidence to show that it 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) based upon the WHOIS information, Complainant’s assertions, and all evidence on record. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s <caterpillardirect.com> and <directcaterpillar.com> domain names resolve to a commercial website that advertises used construction equipment of Complainant and Complainant’s competitors for sale. Complainant contends that Respondent’s use of the CATERPILLAR mark to market and sell unauthorized used products of Complainant is not a bona fide offering of goods and services. The Panel finds that Respondent’s use of the <caterpillardirect.com> and <directcaterpillar.com> domain names to sell used products of Complainant and Complainant’s competitors without authorization to do so 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 Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also National Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
Respondent’s domain names resolve to a website that sells the unauthorized used products of Complainant, as well as the products of Complainant’s competitors. Complainant argues that Respondent’s registration and use of the <caterpillardirect.com> and <directcaterpillar.com> domain names disrupts Complainant’s business and competes with Complainant’s own offering of its products through authorized dealers. Therefore, the Panel finds that Respondent’s use of the disputed domain names to sell the unauthorized products of Complainant is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant).
Further, Complainant argues that the disputed domain names
resolve to a commercial website where the products of Complainant and
Complainant’s competitors in the construction and heavy-equipment industry are
displayed for sale. Complainant alleges
that Respondent is using the famous CATERPILLAR mark to intentionally attract
Internet users seeking Complainant’s products t o Respondent’s competing
website for its commercial benefit. The
Panel finds that Respondent’s use of the disputed domain names to divert
Internet users who are seeking Complainant’s products to Respondent’s website
that sells used products of Complainant and Complainant’s competitors is
further evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000)
(finding that the respondent acted in bad faith by registering the
<fossilwatch.com> domain name and using it to sell various watch brands
where the respondent was not authorized to sell the complainant’s goods); see also Hunter
Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum
Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain
name to sell the complainant’s products without permission and mislead Internet
users by implying that the respondent was affiliated with the complainant).
The Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <caterpillardirect.com> and <directcaterpillar.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 29, 2010
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