Caterpillar Inc. v. jonathan scandreth
Claim Number: FA1009001348137
Complainant is Caterpillar Inc. ("Complainant"), represented by Christopher P. Foley of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Virginia, USA. Respondent is jonathan scandreth ("Respondent"), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <caterpillaraxles.com>, <caterpillarhydraulics.com>, <caterpillarmaquinaria.com>, <caterpillarpartes.com>, <caterpillartransmission.com>, <cataxles.com>, <cathydraulics.com>, and <catpartes.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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 23, 2010; the National Arbitration Forum received payment on September 23, 2010.
On September 23, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <caterpillaraxles.com>, <caterpillarhydraulics.com>, <caterpillarmaquinaria.com>, <caterpillarpartes.com>, <caterpillartransmission.com>, <cataxles.com>, <cathydraulics.com>, and <catpartes.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 27, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 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@caterpillaraxles.com, postmaster@caterpillarhydraulics.com, postmaster@caterpillarmaquinaria.com, postmaster@caterpillarpartes.com, postmaster@caterpillartransmission.com, postmaster@cataxles.com, postmaster@cathydraulics.com, and postmaster@catpartes.com. Also on September 27, 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 28, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.)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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <caterpillaraxles.com>, <caterpillarhydraulics.com>, <caterpillarmaquinaria.com>, <caterpillarpartes.com>, and<caterpillartransmission.com>, are confusingly similar to Complainant’s CATERPILLAR mark.
Respondent’s <cataxles.com>, <cathydraulics.com>, and <catpartes.com> domain names are confusingly similar to Complainant’s CAT mark.
2. Respondent does not have any rights or legitimate interests in the <caterpillaraxles.com>, <caterpillarhydraulics.com>, <caterpillarmaquinaria.com>, <caterpillarpartes.com>, <caterpillartransmission.com>, <cataxles.com>, <cathydraulics.com>, and <catpartes.com> domain names.
3. Respondent registered and used the <caterpillaraxles.com>, <caterpillarhydraulics.com>, <caterpillarmaquinaria.com>, <caterpillarpartes.com>, <caterpillartransmission.com>, <cataxles.com>, <cathydraulics.com>, and <catpartes.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Caterpillar Inc., owns the exclusive rights to its CATERPILLAR and CAT marks which it uses in association with the manufacturing, sales and distribution of its heavy-industry machinery, parts and components, and apparel businesses. Complainant uses the CATERPILLAR and CAT marks in connection with a wide variety of other services including: financial, maintenance and support, logistics, insurance, training, and rental services. Additionally, Complainant operates websites resolving from Complainant’s domain names: <cat.com> and <caterpillar.com>. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its CATERPILLAR (e.g., Reg. No. 85,816 issued March 19, 1912) and CAT marks (e.g., Reg. No. 778,638 issued October 13, 1964).
Respondent, jonathan scandreth, registered all of the disputed domain names on May 11, 2010. The disputed domain names are all used to redirect Internet users to a commercial website, <uspartslocators.com>, which advertises the sales and services of Complainant’s competitors.
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 contends that it has established rights in both the CATERPILLAR and CAT marks. The Panel finds that trademark registrations with a federal trademark authority are sufficient to establish rights in a mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”). Complainant holds multiple trademark registrations with the USPTO for its CATERPILLAR (e.g., Reg. No. 85,816 issued March 19, 1912) and CAT marks (e.g., Reg. No. 778,638 issued October 13, 1964). Therefore, the Panel finds that Complainant has established rights in the CATERPILLAR and CAT marks pursuant to Policy ¶ 4(a)(i).
Complainant contends Respondent’s <caterpillaraxles.com>, <caterpillarhydraulics.com>, <caterpillarmaquinaria.com>, <caterpillarpartes.com>, and <caterpillartransmission.com> domain names are confusingly similar to Complainant’s CATERPILLAR mark. The disputed domain names contain Complainant’s entire CATERPILLAR mark, add generic or descriptive terms, and add the generic top-level domain (“gTLD”) “.com.” Previous panels have found that domain names which add either generic or descriptive terms and add a gTLD are confusingly similar to a complainant’s mark. See Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <caterpillaraxles.com>, <caterpillarhydraulics.com>, <caterpillarmaquinaria.com>, <caterpillarpartes.com>, and <caterpillartransmission.com> domain names are confusingly similar to Complainant’s CATERPILLAR mark pursuant to Policy ¶ 4(a)(i).
Complainant contends Respondent’s <cataxles.com>, <cathydraulics.com>, and <catpartes.com> domain names are confusingly similar to Complainant’s CAT mark. The disputed domain names all include Complainant’s entire mark, add terms descriptive of Complainant’s business, and add the generic top-level domain (“gTLD”) “.com.” Previous panels have found that the addition of descriptive terms and a gTLD to a famous mark do nothing to distinguish the disputed domain name from said mark. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). Therefore, the Panel concludes that Respondent’s <cataxles.com>, <cathydraulics.com>, and <catpartes.com> domain names are confusingly similar to Complainant’s CAT mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain names. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that they do have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Complainant has made a prima facie case. Due to Respondent’s failure to respond, the Panel may infer that Respondent does not have rights or legitimate interests in any of the disputed domain names. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). Nevertheless, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
There is no information set forth in the record to indicate that Respondent is commonly known by any of the disputed domain names. The WHOIS information identifies the domain name registrant as “jonathan scandreth.” Additionally, Complainant asserts Respondent is not authorized to use either the CATERPILLAR or CAT marks. Therefore, the Panel determines that Respondent has not established rights or legitimate interests in the disputed domain names pursuant to 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent uses the disputed domain names to automatically redirect Internet users to a commercial website which advertises sales and services relating to Complainant’s competitors. The Panel finds that Respondent’s redirection to a competing website 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 Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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)).
The Panel finds Policy ¶ 4(a)(ii) is satisfied.
Complainant asserts that Respondent is exhibiting a bad faith pattern of conduct, and a desire to prevent Complainant from using its mark, as evidenced by the registration and use of eight disputed domain names that are confusingly similar to Complainant’s mark. The Panel finds Respondent’s pattern of registration and use of disputed domain names constitutes bad faith pursuant to Policy ¶ 4(b)(ii). See Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct); see also Time Warner Inc. v. CPIC Net, D2000-0433 (WIPO Sept. 15, 2000) (finding that the respondent registered and used the domain names <emiwarnermusic.com>, <emiwarner.org>, <emiwarner.net>, <warneremi.net>, and <warneremi.org> in bad faith when the respondent registered them after an announced merger between Time Warner Inc. and EMI Group, and the respondent previously registered fifteen other domain names that incorporated the complainant’s mark, showing the requisite pattern of conduct).
Respondent uses the
disputed domain names to disrupt Complainant’s business by automatically
redirecting Internet users who visit any of the sites, to a third-party
commercial website, which offers goods and services directly competing with
that of Complainant. The Panel finds this disruption to be in bad faith
pursuant to Policy ¶ 4(b)(iii). See St. Lawrence Univ. v.
Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel
concludes that by redirecting Internet users seeking information on
Complainant’s educational institution to competing websites, Respondent has
engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see
also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”).
Respondent appears to have registered the disputed domain names in an attempt to create confusion among Internet users who likely think they are visiting a site sponsored by, or affiliated with, Complainant, but mistakenly end up at one of Respondent’s domains. When Internet users visit any of the disputed domain names, they are redirected to the commercial website <uspartslocator.com> which the Respondent likely receives a referral fee from. The Panel finds that Respondent’s attempt to commercially gain from creation of confusion is in bad faith pursuant to Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds Policy ¶ 4(a)(iii) is 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 <caterpillaraxles.com>, <caterpillarhydraulics.com>, <caterpillarmaquinaria.com>, <caterpillarpartes.com>, <caterpillartransmission.com>, <cataxles.com>, <cathydraulics.com>, and <catpartes.com> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: November 8, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page