Caterpillar Inc. v. Andy Soper / Hydrostatic Transmission Service
Claim Number: FA1607001684589
Complainant is Caterpillar Inc. (“Complainant”), represented by Richard J. McKenna of Foley & Lardner LLP, Wisconsin, USA. Respondent is Andy Soper / Hydrostatic Transmission Service (“Respondent”), represented by George E. Dent of Greer, Russell, Dent & Leathers, PLLC, Mississippi, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <caterpillarhydraulicpumprepair.com>, registered with GoDaddy.com, LLC.
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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 20, 2016; the Forum received payment on July 21, 2016.
On July 20, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <caterpillarhydraulicpumprepair.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 July 27, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 2016 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@caterpillarhydraulicpumprepair.com. Also on July 27, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
A timely Response was received and determined to be complete on August 15, 2016.
On August 24, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David P. Miranda, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant claims rights in the CATERPILLAR mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 85,748, registered Mar. 12, 1912). See Compl., at Attached Ex. B-1. Complainant contends Respondent’s <caterpillarhydraulicpumprepair.com> domain name is confusingly similar to the CATERPILLAR mark because it contains the mark combined with the generic and related phrase “hydraulic pump repair” and the generic top-level domain (“gTLD”) “.com.”
Respondent is not commonly known by the <caterpillarhydraulicpumprepair.com> domain name, it has not been given permission to use the CATERPILLAR mark and the WHOIS information identifies the Registrant as “Andy Soper” of “Hydrostatic Transmission Service.” Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used to provide repair and replacement services for Complainant’s products in a manner designed to create a likelihood of confusion over Complainant’s control, support, or sponsorship over Respondent and the website.
Respondent uses the <caterpillarhydraulicpumprepair.com> domain name in bad faith because the resolving website offers information relating to Complainant’s products along with repair services related to those products in a manner intended to attract consumers through the creation of confusion. Respondent’s actual or constructive knowledge of Complainant’s rights in the CATERPILLAR mark render the registration ofthe <caterpillarhydraulicpumprepair.com> domain name a bad faith registration.
B. Respondent
Respondent contends the <caterpillarhydraulicpumprepair.com> domain name is not confusingly similar to the CATERPILLAR mark. Respondent claims the disclaimer present on the resolving website dispels any potential for confusion regarding the ownership of the <caterpillarhydraulicpumprepair.com> domain name and a relationship with Complainant.
The disclaimer present on the resolving website is unambiguous such that consumers would not mistakenly believe that Respondent’s services offered through the <caterpillarhydraulicpumprepair.com> domain name are approved of by Complainant.
Complainant has established each of the elements required under paragraph 4(a) of the Policy, and as such the domain name at issue shall be transferred from Respondent to the Complainant.
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."
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 claims rights in the CATERPILLAR mark, which it uses in the development, manufacture, distribution, sale, maintenance and repair of machinery, equipment, vehicles, and engines, through its registration with the USPTO (e.g., Reg. No. 85,748, registered Mar. 12, 1912). Complainant has provided this registration information in its Exhibit 4. Respondent does not dispute these claimed rights. Complainant holds rights in the CATERPILLAR mark under Policy ¶ 4(a)(i). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
Complainant contends that Respondent’s <caterpillarhydraulicpumprepair.com> domain name is confusingly similar to the CATERPILLAR mark because it contains the mark combined with the generic term “hydraulic pump repair” and the gTLD “.com.” Complainant claims that the phrase “hydraulic pump repair” is generic and has a direct relationship to the goods and services that it offers, thus increasing the likelihood of confusion of the domain name. The Panel finds the domain name confusingly similar to the mark. See generally Microsoft Corp. v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [the disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy).
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 (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 (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 maintains that Respondent is not commonly known by the <caterpillarhydraulicpumprepair.com> domain name, it has not been given permission to use the CATERPILLAR mark and the WHOIS information identifies the Registrant as “Andy Soper” of “Hydrostatic Transmission Service.” The Panel finds that Respondent is not so known under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Complainant contends that Respondent fails to use the disputed domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used for Complainant’s products in a manner designed to create a likelihood of confusion. Complainant has provided screenshots of the resolving page in its Exhibit 10. General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”).
Respondent argues the disclaimer present at the resolving website is enough to remove any confusion as to the relationship between Complainant and the <caterpillarhydraulicpumprepair.com> domain name. However, the Panel finds such disclaimer is not sufficient. See AltaVista Co. v. AltaVisa, FA 95480 (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”).
Complainant alleges that Respondent uses the <caterpillarhydraulicpumprepair.com> domain name in bad faith because the resolving website offers information relating to Complainant’s products along with repair services related to those products in a manner intended to attract consumers through the use of Complainant’s trademark, consumers viewing the website are likely to believe that Complainant has authorized Respondent to offer these services through the use of the words “Caterpillar hydraulic transmission repair center.” Complainant has provided screenshots of the resolving website in its Exhibit 10 to demonstrate this use. Respondent is attempting to profit through the use of Complaint’s trademark and thus, Respondent registered the <caterpillarhydraulicpumprepair.com> domain name in bad faith under Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness). See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <caterpillarhydraulicpumprepair.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
David P. Miranda, Esq., Panelist
Dated: September 7, 2016
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