National Arbitration Forum

 

DECISION

 

Caterpillar Inc. v. Christian Gueyser

Claim Number: FA1009001345920

 

PARTIES

Complainant is Caterpillar Inc. (“Complainant”), represented by Christopher P. Foley, of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Virginia, USA.  Respondent is Christian Gueyser (“Respondent”), Arizona, USA.

 

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <caterpillarjobs.net>, registered with GoDaddy.

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Carol M. Stoner, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 13, 2010.  On September 15, 2010, at the request of the National Arbitration Forum, Complainant amended the Respondent’s name in the Complaint to match that which is listed on the current Whois page. 

 

On September 14, 2010, GoDaddy confirmed by e-mail to the National Arbitration Forum that the <caterpillarjobs.net> domain name is registered with GoDaddy and that the Respondent is the current registrant of the name.  GoDaddy has verified that Respondent is bound by the GoDaddy 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 16, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 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@caterpillarjobs.net.  Also on September 16, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses 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 October 6, 2010.

 

Complainant submitted a timely Additional Submission on October 12, 2010, which was  

in compliance with Supplemental Rule 7.

 

On October 21, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol M. Stoner, Esq., as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name <caterpillarjobs.net> be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

 

Complainant alleges as follows:

 

Caterpillar is a Delaware corporation, with a principal place of business at 100 NE Adams St., Peoria, Illinois, 61629.  Caterpillar is a Fortune 100 company and the world’s largest manufacturer of construction and mining equipment, diesel and natural gas engines including marine engines, and industrial gas turbines. Caterpillar is ranked first in the industry.

 

Caterpillar owns the trade name, trademark and service mark CATERPILLAR. The mark has been in used since 1904, and enjoys unquestionable fame as a result of extensive and long use and advertising and favorable public acceptance and recognition worldwide. Caterpillar manufactures, sells and distributes a wide assortment of heavy industry equipment under the CATERPILLAR mark, including track-type tractors, track loaders, and wheel loaders.

 

Caterpillar offers numerous services under the CATERPILLAR mark including financing, maintenance and support, logistics, insurance, training and rental services.

 

Caterpillar also uses and licenses its CATERPILLAR mark on a variety of collateral products including footwear and apparel.

 

Caterpillar had worldwide sales and revenue under the CATERPILLAR mark in excess of US $51,300,000,000 in 2008 and in excess of US $32,300,000,000 in 2009. Caterpillar spends millions of dollars every year to advertise and promote its products and services under the CATERPILLAR mark.

 

Caterpillar manufactures products and components in 49 facilities in the United States and in 59 locations in 22 countries.

 

Caterpillar promotes its products and services on the internet, since 1993,  accessible via the domain name <caterpillar.com> and <cat.com>, which receive many millions of hits each month.

 

Caterpillar’s website also advertises and promotes employment opportunities with Caterpillar as well as Caterpillar’s authorized dealers.

 

Complainant has continuously used CATERPILLAR  as a trademark and service mark since 1904 and owns registrations for the CATERPILLAR mark and variations thereof in more than 150 countries around the world. The registrations are outlined in Complainant’s Exhibit 6.

 

Caterpillar registered the domain name <caterpillar.com> on March 17, 1995 and <cat.com> on March 25, 1993.

 

Caterpillar’s trademark rights in its CATERPILLAR mark and variations thereof, is based on registrations and common law rights since 1904, which long predate Respondent’s registration of the disputed domain name, more than a century later on December 11, 2008.

 

Respondent has failed to respond to Complainant’s Cease and Desist Letter issued through its counsel on July 27, 2010.

 

The domain name <caterpillarjobs.net> is confusingly similar to Complainant’s CATERPILLAR Mark because it contains Complainant’s mark in its entirety and adds only the generic term jobs and the non-distinguishing  gTLD .net.

 

Internet users are likely to believe that Caterpillar is the source of the corresponding website and/or of the job openings or recruiting services advertised therein.

Respondent has no rights or legitimate interests in the disputed domain name for the following reasons.

 

First, Respondent’s registration and use of the domain name for a commercial employment-related website in the heavy equipment field does not constitute a bona fide offering of goods or services or a legitimate non-commercial or fair use of the domain name under the UDRP. Secondly, Respondent is not, and has not, been commonly known by the disputed domain name.

 

Respondent’s registration and use of the domain name meets the grounds of bad faith outlined in the UDRP, as well as additional grounds outlined in UDRP case decisions, as Respondent is using the domain name to intentionally attract, for commercial gain, internet users to its website, by creating a likelihood of confusion with Complainant and its CATERPILLAR mark as to the source, sponsorship, affiliation and/or endorsement of Respondent’s website.  Furthermore Respondent’s registration and use of the domain name constitutes bad faith under Section 4(b)(iii) of the UDRP because Respondent’s use of the domain name in connection with employment  at Complainant’s competitors disrupts Complainant’s business and unfairly competes with Complainant’s own employment-related advertising and promotions.

 

Finally, given the international fame of CATERPILLAR’S mark, Complainant’s federal registration of the mark and the Respondent’s business in the heavy equipment field, there is no question but that Respondent had actual knowledge of Complainant’s rights in its CATERPILLAR Mark when Respondent registered the domain name.

 

 

B. Respondent

 

Respondent alleges as follows:

 

Christian Gueyser, though named as a Respondent,  is an employee of Herk and Associates (“Herk”) and acted on behalf of  Herk, in registering the domain name <caterpillarjobs.net> on December 11, 2008.

 

Herk has been in the recruiting business since 1998 and has been incorporated since February 3, 2003, during which time Herk has been 100% devoted to filling positions for dealers and manufacturers in the equipment industry.

 

Herk agrees that <caterpillarjobs.net> is similar to<caterpillarjobs.com> but disputes that <caterpillarjobs.net> is confusingly similar to the CATERPILLAR mark.

Candidates, upon entering the .net site can clearly see that it is not a Caterpillar endorsed or sponsored website, while candidates entering the .com website can clearly see that it is a Caterpillar site.

 

Herk has rights and legitimate interests in the disputed domain name, originating out of its proper registration and use of the name for 22 months.  Herk is not trading on the goodwill of the CATERPILLAR name, nor competing with Caterpillar in any way. Rather, Herk has been in the business of finding employees for Caterpillar dealers for 13 years.

 

Herk contends that it does not need authorization or licensing from Caterpillar to use a domain name which it has legally registered. Moreover, Herk has the best interests of Caterpillar and Caterpillar dealers in mind by providing a much needed recruiting service. Herk did not register the disputed domain name to prevent the owner of the trademark from registering the name, nor to disrupt Caterpillar’s business. Therefore, Herk does not agree that the registration and use of the dispute domain name constitutes bad faith.

 

C. Complainant’s Additional Submission:

 

Complainant alleges as follows:

 

The parties agree that the Respondent registered, without Caterpillar’s authorization, the disputed domain name<caterpillarjobs.net> because it contains Caterpillar’s trademark in order to attract internet users to Respondent’s  commercial website that advertises Respondent’s services.

 

Caterpillar has satisfied UDRP’s requirement that the domain name is confusingly similar because it contains Complainant’s mark in its entirety and the generic or descriptive term “jobs.” The UDRP does not require evidence of actual confusion.

 

Respondent has no legitimate interest in the domain name <caterpillarjobs.net>. The Respondent’s unauthorized use is not a bona fide offering of goods or services under the UDRP. Respondent’s claim that, its offering of services is not competitive because there is no identity of services, is without merit.

 

Respondent uses the disputed domain name not only to help Caterpillar dealers and employees to match up their services, but also to promote its own commercial business and to recruit for Caterpillar’s competitors.

 

Respondent registered and used the disputed domain name for the purpose of attracting internet traffic through its use of Complainant’s CATERPILLAR Mark.

 

Respondent’s contention of non-confusion is belied by the theory of initial interest confusion, wherein confusion is initially inflicted upon the internet user as to the sponsorship of the site. The presence of Caterpillar’s mark in the domain name falsely communicates that Respondent, its website, and/or its business is sponsored, affiliated or endorsed by Caterpillar.  UDRP does not require a Complainant to show actual harm. However, UDRP’s policy is that the domain name registrant’s intent to attract internet users for the registrant’s own commercial gain, constitutes harm. It is also fundamental trademark law that Caterpillar is harmed when third parties use its trademarks without authorization because such use weakens the ability of the CATERPILLAR Mark to identify one source, that is, Caterpillar.

 

FINDINGS

 

The domain name registered by the Respondent that is, <caterpillarjobs.net>, is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; the Respondent has no rights or legitimate interests in respect of the domain name; and the domain name has been registered and is being used in bad faith.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant argues that it has rights in the CATERPILLAR Mark by virtue of its trademark registrations 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; and

Reg. No. 2,448,848     issued May 8, 2001.

 

The Panel finds that Complainant’s  Exhibit 6 to its Complaint, consisting of printouts from the USPTO’s online data base of its USPTO trademark registrations, is sufficient evidence to show its rights in the CATERPILLAR Mark for the purposes of Policy  ¶ 4(a)(i).  See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).

 

 

Complainant alleges that Respondent’s <caterpillarjobs.net> domain name is confusingly similar to Complainant’s CATERPILLAR Mark because the disputed domain name begins with Complainant’s mark and adds only the generic term “jobs” and the generic top-level domain (“gTLD”) “.net.”  The Panel finds that the addition of a generic term to Complainant’s mark fails to distinguish the disputed domain name from Complainant’s mark.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names).  The Panel also finds that an added gTLD does not affect the analysis of confusing similarity under Policy ¶ 4(a)(i).  See Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”).  Therefore, the Panel finds that Respondent’s <caterpillarjobs.net> domain name is confusingly similar to Complainant’s CATERPILLAR Mark.

 

Rights and Legitimate Interests

 

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.”).

 

Complainant alleges that Respondent is not commonly known by the <caterpillarjobs.net> domain name. Indeed, the Panel notes that Respondent confirms this allegation in III.7.c. (ii) of its Response stating that, “Herk & Associates is not in any way known by the domain name <caterpillarjobs.net>.” Neither is Respondent authorized by Complainant to use the CATERPILLAR Mark in the disputed domain name. Respondent, rather, contends that authorization and licensing is not needed to use the domain name which it rightly and legally registered.  The WHOIS information for the disputed domain name lists the registrant as “Christian Gueyser,” which the Panel finds indicates no association between Respondent and the disputed domain name.  The Panel, therefore finds that Respondent is not commonly known by the <caterpillarjobs.net> domain name pursuant to 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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). 

 

Complainant contends that Respondent’s <caterpillarjobs.net> domain name redirects Internet users to the commercial website of Herk & Associates, which advertises recruiting services for equipment dealerships, rental companies, and manufacturers in the field of heavy equipment.  Complainant proves its contention through its Exhibit 7, consisting of the Declaration of Leslie A. Gutowski re: redirecton to Respondent’s website and screen shots of Respondent’s website.  The panel finds that redirection from Complainant and to Respondent’s unaffiliated commercial website 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. 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)); see also 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).”). 

 

As Respondent is not commonly known by the disputed domain name; and Respondent  has  proved no bona fide offering of goods or services, nor a legitimate non-commercial or fair use of the disputed domain name, Complainant has proved a prima facie case and Respondent has not shouldered its burden to prove that it does have rights and legitimate interests under Policy ¶ 4(a)(ii).  Therefore, the Panel rules that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Complainant has pro-offered convincing evidence (Exhibit 6) and legal arguments to show that Respondent has used Complainant’s mark in the <caterpillarjobs.net> domain name in order to intentionally attract Internet users to its own commercial website and that internet users are confused as to the sponsorship of Respondent’s website.

 

Respondent does not deny use of the CATERPILLAR Mark in the website address and on the website but rather states that such use benefits, rather than harms, Caterpillar and that internet users are not confused.

 

However, Complainant’s Additional Submission convincingly argues that UDRP does not require a Complainant to show actual harm. It requires Complainant to show that the domain name registrant intends to attract internet users for the registrant’s commercial gain, which Caterpillar has done here and which Respondent has acknowledged.  

 

Panel is persuaded by Complainant’s legal argument in its Additional Submission that it is a fundamental tenet of trademark law that Caterpillar is harmed when third parties use its trademarks without authorization because such use weakens the ability of the CATERPILLAR Mark to identify the source of its goods and services, that is, Caterpillar.

 

Panel has also been persuaded that internet users are likely to be confused as to the sponsorship of Respondent’s website, because of the initial interest confusion theory. This theory states that   

even if internet users who access Respondent’s website subsequently realize that they are not at Caterpillar’s website, the damage has been done. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). 

 

Complainant credibly argues that Respondent’s use of the <caterpillarjobs.net> domain name disrupts Complainant’s business because Respondent uses Complainant’s mark in the disputed domain name to fill job openings with Complainant and Complainant’s competitors, which  disrupts and competes with Complainant’s business because Complainant runs its own employment-related advertising and promotions.  The Panel finds that Respondent is thus competing with Complainant and disrupting its business, showing bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site.  The Panel finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).    

 

Complainant alleges that Respondent had actual and/or constructive notice of Complainant and its rights in the CATERPILLAR mark prior to the registration of the <caterpillarjobs.net> domain name.  Although constructive knowledge has not generally been held sufficient to support a finding of bad faith, the Panel is convinced by Complainant’s recitation of its billion dollar worldwide sales, million dollar advertising budget and extensive manufacturing facilities

that Respondent had actual knowledge of Complainant’s mark, and therefore finds that  Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <caterpillarjobs.net> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Carol M.  Stoner, Esq., Panelist
Dated: November 4, 2010

 

 

 

 

 

 

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