Caterpillar Inc. v. Admin Office c/o Brisbane Technologies
Claim Number: FA1009001344352
Complainant is Caterpillar Inc. (“Complainant”), represented by Christopher P. Foley, of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Virginia, USA. Respondent is Admin Office c/o Brisbane Technologies (“Respondent”), Philippines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cat-jobs.com>, registered with AUST DOMAINS INTERNATIONAL PTY LTD d/b/a AUST DOMAINS, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 1, 2010.
On September 2, 2010, AUST DOMAINS INTERNATIONAL PTY LTD d/b/a AUST DOMAINS, INC. confirmed by e-mail to the National Arbitration Forum that the <cat-jobs.com> domain names is registered with AUST DOMAINS INTERNATIONAL PTY LTD d/b/a AUST DOMAINS, INC. and that Respondent is the current registrant of the name. AUST DOMAINS INTERNATIONAL PTY LTD d/b/a AUST DOMAINS, INC. has verified that Respondent is bound by the AUST DOMAINS INTERNATIONAL PTY LTD d/b/a AUST DOMAINS, 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 September 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 23, 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@cat-jobs.com by e-mail. Also on September 3, 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 October 12, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant owns the exclusive rights to use its CATERPILLAR and CAT marks in association with its business of manufacturing and marketing of heavy equipment.
Additionally, Complainant uses the CATERPILLAR and CAT marks in connection with a wide variety of related services, including financing, maintenance and support, logistics, insurance, training and rental services.
Complainant operates the official websites <cat.com> and <caterpillar.com>, which, along with promoting its products, also advertises employment and career opportunities with Complainant.
Complainant holds mark registrations with the United States Patent and Trademark Office (“USPTO”) for its CAT service mark (including Reg. No. 778,638, issued October 13, 1964) and for its CATERPILLAR trademark (including Reg. No. 85,816, issued March 19, 1912).
Respondent is not authorized to use the CAT mark.
Respondent registered the <cat-jobs.com> domain name on January 5, 2010.
The disputed domain name resolves to a commercial website that recruits heavy-equipment operators and advertises employment opportunities relating to heavy equipment, particularly that of Complainant.
The website previously displayed Complainant’s mark and pictures of Complainant’s products, and used Complainant’s distinctive yellow and black color scheme.
After being served with a cease-and-desist letter by Complainant’s legal counsel, Respondent removed the prominent display of Complainant’s mark from the domain name in question, and also added a disclaimer to its site.
Respondent’s <cat-jobs.com> domain name is confusingly similar to Complainant’s CAT mark.
Respondent does not have any rights to or legitimate interests in the <cat-jobs.com> domain name.
Respondent registered and uses the <cat-jobs.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established rights in the CAT mark sufficient for purposes of the Policy via its registration of the mark with the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that a 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 a 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 marks pursuant to Policy ¶ 4(a)(i)).
Respondent’s domain name is confusingly similar to Complainant’s CAT mark. The disputed domain name contains the entire mark, adds a hyphen, the generic term “jobs,” and the generic top-level domain “.com.” The addition of a hyphen or a gTLD does nothing to distinguish the contested domain name from Complainant’s mark. See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"). See also 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.
Similarly, adding a generic term or descriptor to a competing mark in forming a domain name does not avoid a finding of confusing similarity under the Policy. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating a complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to that complainant’s mark); see also; further
Therefore, the Panel concludes that Respondent’s <cat-jobs.com> domain name is confusingly similar to Complainant’s CAT mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights to and legitimate interests in the <cat-jobs.com> domain name. Once a complainant makes out a prima facie case in support of its allegations on this point, the burden shifts to a respondent to prove that it does have rights to or legitimate interests in a disputed domain name. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):
It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.
Complainant has made out the requisite prima facie case. Owing to Respondent’s failure to respond to the allegations of the Complaint, we may therefore infer that Respondent does not have rights to or legitimate interests in the <cat-jobs.com> domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond to a complaint filed under the Policy allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nevertheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine if there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny, that Respondent is not authorized to use the CAT mark. Moreover, the WHOIS information for the disputed domain name identifies the registrant only as “Admin Office c/o Brisbane Technologies,” which does not resemble the domain name. On this record, we must conclude that Respondent is not commonly known by the <cat-jobs.com> domain name so as to have established that it has rights to or legitimate interests in the contested domain pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a complainant’s mark and failed to submit evidence that it was commonly known by the disputed domain name); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply).
We also observe that Complainant alleges, without objection from Respondent, that Respondent uses the <cat-jobs.com> domain name to promote employment opportunities relating to equipment manufactured and sold by Complainant. In the circumstances here presented, we may comfortably presume that Respondent profits from the contested domain name’s attraction of Internet users through their confusion with the CAT brand. This does not constitute either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to 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 a respondent’s use of a complainant’s LIFESTYLE LOUNGE mark in a contested domain name to redirect Internet users to that respondent’s 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 of the domain pursuant to Policy ¶ 4(c)(iii)).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the <cat-jobs.com> domain name constitutes holding itself out as Complainant. The disputed domain name resolves to a website offering jobs and services exclusively aimed at Complainant’s CATERPILLAR brand. Internet users likely are confused by Respondent’s behavior in this regard. See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003):
The contents of the website, offering …[a complainant’s trademarked]… products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.
The confusion thus caused, done for Respondent’s presumed commercial gain, represents bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004):
Respondent [used complainant’s mark in its domain name] to benefit from the goodwill associated with …[that mark]… and us[ed] the …[disputed ]… domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
After being served with a cease and desist letter by Complainant’s legal counsel, Respondent removed the prominent display of Complainant’s mark from the domain name in question, and also added a disclaimer to its site. However, the addition of such a disclaimer does not mitigate the gravity of the offense described in the Complaint because Internet users are likely confused as to Complainant’s possible affiliation with the disputed domain name long before they encounter Respondent’s disclaimer. See AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, where a domain name consists of a complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by that complainant). In any event, Respondent is attempting to capitalize on Complainant’s goodwill by misleadingly attracting those Internet users who recognize and are looking for the CAT brand and are subsequently confused by Respondent’s affiliation with Complainant.
For all of these reasons, the Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <cat-jobs.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 14, 2010
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