Caterpillar Inc. v. Mohfei Geh d/b/a Hei Ren Consultants
Claim Number: FA1008001342125
Complainant is Caterpillar Inc. (“Complainant”), represented by Christopher P. Foley, of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Virginia, USA. Respondent is Mohfei Geh d/b/a Hei Ren Consultants (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dncaterpillar.com>, registered with GoDaddy.com, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 19, 2010.
On August 19, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <dncaterpillar.com> domain name is registered with GoDaddy.com, Inc. and that 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 August 23, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 13, 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@dncaterpillar.com by e-mail. Also on August 23, 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 September 27, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <dncaterpillar.com> domain name is confusingly similar to Complainant’s CATERPILLAR mark.
2. Respondent does not have any rights or legitimate interests in the <dncaterpillar.com> domain name.
3. Respondent registered and used the <dncaterpillar.com> domain name in bad faith.
B. Respondent failed to timely submit a Response in this proceeding in accordance with ICANN Supplemental rule #5 which provides:
5. The Response
(a) Within twenty (20) days of the date of commencement of the administrative proceeding the Respondent shall submit a response to the Provider.
Complainant, Caterpillar Inc., is a manufacturer of construction and mining equipment and diesel and natural gas engines, including marine engines and industrial gas turbines. Complainant owns multiple trademark registrations for the CATERPILLAR mark with the United States Patent and Trademark Office (“USPTO”):
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, Mohfei Geh d/b/a Hei Ren Consultants, registered the <dncaterpillar.com> domain name on July 1, 2010. The disputed domain name resolves to Respondent’s website that advertises the sale of many domain names related to the recent oil spill in the Gulf of Mexico, including many domain names that contain the third-party BP mark. The disputed domain name also displays some third-party advertisements in the form of pay-per-click links.
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 trademark registrations for the CATERPILLAR mark with the USPTO:
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.
The Panel finds that Complainant’s evidence of its USPTO trademark registrations conclusively proves Complainant’s rights in the CATERPILLAR mark for the purposes of Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <dncaterpillar.com> domain name is confusingly similar to Complainant’s CATERPILLAR mark because the disputed domain name contains Complainant’s entire mark combined with the letters “d” and “n”—possibly an abbreviation for the phrase “domain name”—and the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding letters or abbreviations to Complainant’s mark is insufficient to differentiate the disputed domain name from Complainant’s mark according to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Tullo, FA 150811 (Nat. Arb. Forum Apr. 15, 2003) (finding that the <3daol.com> domain name is confusingly similar to the complainant’s AOL mark because “…the addition of the prefix ‘3d’ does nothing to ‘distinguish’ Respondent’s domain name from Complainant’s registered trademarks”); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON). The Panel also finds that the presence of a gTLD is not a distinguishing factor in disputed domain names. See Jerry Damson, Inc. v. Tex. 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.”). Therefore, the Panel finds that Respondent’s <dncaterpillar.com> domain name is confusingly similar to Complainant’s CATERPILLAR mark according to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant argues that Respondent does not possess rights and legitimate interests in the disputed domain name. In making this allegation, Policy ¶ 4(a)(ii) requires that Complainant present a prima facie case in support before the burden transfers to Respondent to demonstrate rights and legitimate interests. The Panel finds that Complainant has met this burden in the instant proceeding. The Panel finds that Respondent has defaulted, however, and therefore has not shown any evidence of rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel also finds that Respondent’s failure to contest Complainant’s allegations allows the Panel to accept those allegations as true. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed). The Panel elects to consider all the evidence in the record, however, in light of the Policy ¶ 4(c) factors in order to independently determine whether Respondent has rights and legitimate interests in the disputed domain name.
Complainant contends that Respondent is not authorized to use Complainant’s mark in the <dncaterpillar.com> domain name. Complainant also asserts that the WHOIS information for the disputed domain name, listing the registrant as “Hei Ren Consultants,” shows that Respondent is not commonly known by the disputed domain name. The Panel therefore finds that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests under Policy ¶ 4(c)(ii). 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, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent is using the <dncaterpillar.com> domain name in order to divert Internet users to Respondent’s website and facilitate Respondent’s own commercial business of selling domain names and profiting from pay-per-click advertisements. The Panel finds that Respondent’s use of the disputed domain name to divert Internet users to a site unaffiliated with Complainant and for Respondent’s commercial benefit is not a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent uses the <dncaterpillar.com> domain name in order to increase the potential profit from its commercial website located at the disputed domain name that attempts to sell domain names relating to the oil spill in the Gulf of Mexico. Complainant asserts that Respondent, through its appropriation of Complainant’s well-known mark, attempts to confuse Internet users and attract them to Respondent’s website for Respondent’s profit. The Panel finds that Respondent’s efforts to profit at Complainant’s expense by trading off the fame of Complainant’s mark and confusing Internet users reveals bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
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 <dncaterpillar.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: September 28, 2010
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