Caterpillar Inc. v. ogalagu samuel / Rise Media Works
Claim Number: FA1703001720053
Complainant is Caterpillar Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is ogalagu samuel / Rise Media Works (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <adamseqcat.com>, registered with NameCheap, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 3, 2017; the Forum received payment on March 3, 2017.
On March 6, 2017, NameCheap, Inc. confirmed by e-mail to the Forum that the <adamseqcat.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 March 10, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 2017 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@adamseqcat.com. Also on March 10, 2017, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On Aprill 11, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Complainant, Caterpillar Inc., is in the business of the manufacturing of construction and mining equipment, diesel and natural gas engines, industrial gas turbines, and diesel-electric locomotives. In furtherance of its business, Complainant has registered the CAT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 564,272, registered Sept. 23, 1952). See Compl., at Attached Ex. 7. Respondent’s <adamseqcat.com> is confusingly similar to the CAT mark because the disputed domain name contains Complainant’s mark in its entirety combined with the term or name “Adams Eq” that corresponds to Respondent’s fake dealer name “Adams Equipment CAT” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in <adamseqcat.com>. Respondent is not commonly known by the disputed domain name and Complainant has not licensed or permitted to use the CAT mark in any respect. There are no facts to suggest Respondent is commonly known by the <adamseqcat.com> domain name. Respondent’s registration and use of the Domain Name for a website that prominently displays an unauthorized version of Complainant’s CAT logo for its authorized dealers, uses the fake dealer name “Adams Equipment CAT,” and extensively copies content from and links to the website of Complainant’s authorized dealer. This use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The disputed domain <adamseqcat.com> resolves to web page that seeks to make Internet users believe there is a connection between Respondent and Complainant. Respondent’s activities constitute “passing off,” in that Respondent is attempting to pass off its website as Complainant’s authorized dealer’s website or as being sponsored by, endorsed by, or otherwise affiliated with Complainant. Use of a domain name for the purposes of attempting to deceive Internet users into believing there is a connection between Respondent and Complainant does not evince rights or legitimate interests.
Respondent has registered <adamseqcat.com> in bad faith. Respondent’s registration of the disputed domain name constitutes bad faith under Policy ¶ 4(b)(iv) because Respondent uses <adamseqcat.com> to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant and its CAT mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website. Such use suggests a connection to Complainant even though Respondent has no connection with Complainant. Respondent’s activities disrupt Complainant’s business and unfairly compete with Complainant and its authorized dealers, thereby constituting bad faith under Policy 4(b)(iii). Respondent intends to create an association with Complainant and its products and services. Such an activity can be described as “passing off”, which is further evidence of Respondent’s bad faith under Policy ¶¶ 4(b)(iv) and (iii). The disputed domain name itself and its use by Respondent shows Respondent registered the disputed domain name with awareness of Complainant’s rights. Respondent’s registration of the disputed domain name with actual knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name, <adamseqcat.com>, was registered February 20, 2017.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has not rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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.
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(f), 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 (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.”).
The Panel finds that the disputed domain name, <adameqcat.com>, is confusingly similar to Complainant’s valid and subsisting trademark, CAT. Complainant has adequately plead its rights and interests in and to that trademark. Respondent arrives at the disputed domain by adding to Complainant’s mark in its entirety the term or name “Adams Eq” that apparently corresponds to Respondent’s fictitious dealer name “Adams Equipment CAT” and the “.com” generic top-level domain (“gTLD”). This is inadequate to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Complainant apparently has not given Respondent any right or permission to register the disputed domain name. Furthermore, Respondent is not commonly known by the disputed domain name. The WHOIS information associated with the disputed domain name identifies Respondent as, “ Ogalagu Samuel / Rise Media Works,” which does not appear to resemble the domain name.
As such, the Panel finds that Respondent is not commonly known by the disputed domain name.
Respondent also lacks any a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Complainant contends Respondent has arranged a website that prominently displays an unauthorized version of Complainant’s CAT logo for its authorized dealers, uses the fictitious dealer name “Adams Equipment CAT,” and extensively copies content from and linked to the website of Complainant’s authorized dealer. See Compl., at Attached Ex. 10. Such conduct is evidence of an attempt to deceive Internet users into believing there is a connection between Respondent and Complainant.
The Panel finds that these attempts to pass itself off as Complainant does not establish rights or legitimate interests in or to the disputed domain name.
The Panel further finds that Respondent has engaged in bad faith use and registration of the disputed domain name. Respondent apparently registered the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant and its CAT mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website. Attempts to pass itself off as having an official connection to Complainant is indicative of bad faith. The disputed domain name resolves to a webpage advertising the services of what is presumably an equipment rental business. See Compl., at Attached Ex. 10. The content of this website, along with displaying numerous examples of Complainant’s marks, makes use of source code from a different authorized CAT products dealer. Compl., at Attached Ex. 11. The Panel finds that Respondent is attempting to suggest that it is an authorized dealer of Complainant for the purposes of commercial gain and thus exhibits bad faith use and registration of the disputed domain name.
Complainant additionally argues that Respondent has never been authorized to sell or market Complainant’s products using the CAT mark, and is therefore using the disputed domain name for “passing off activities”. Activities that constitute “passing off” have been found to establish an independent ground of bad faith. See Caterpillar v. Nicolov (Forum December 16, 2009) (“. . . Respondent copied the font which Complainant employs with its CATERPILLAR mark when it designed the website resolving from the disputed <caterpillarbg.com> domain name. This act of passing itself off as Complainant is evidence of Respondent’s bad faith registration and use of the contested domain name pursuant to Policy ¶ 4(a)(iii).”). Complainant asserts that Respondent is not an authorized dealer and adequately establishes that Respondent’s business does not appear in Complainant’s “find an authorized dealer” search function on Complainant’s own web page. See Compl., at Attached Ex. 9. Thus the Panel finds that Respondent’s attempts to pass itself off as having a business connection to Complainant amounts to Policy ¶ 4(a)(iii) bad faith.
Complainant alleges that Respondent’s activities disrupt Complainant’s business and unfairly compete with Complainant and its authorized dealers, thereby constituting bad faith under Policy 4(b)(iii). Bad faith competition has been found by past panels where respondent’s business is in opposition to complainant’s sufficiently to define Respondent as a competitor under the UDRP. See, Yahoo! v. N/A (Forum Sept. 27, 2013) (“Complainant asserts that although Respondent may not be a competitor of Complainant, the fact that Respondent’s activities are in opposition to Complainant is sufficient to define Respondent as a competitor under the UDRP. . . The Panel finds that Respondent is disrupting Complainant’s legitimate business, proving bad faith use and registration under Policy ¶ 4(b)(iii).”). Complainant’s Exhibit 10 sets forth evidence that suggests that the products and services offered by Respondent are in direct competition with Complainant and Complainant’s authorized dealers. See Compl., at Attached Ex. 10. The Panel finds that this demonstrates disruption per Policy ¶ 4(b)(iii).
Finally, Complainant claims that the disputed domain name itself and its use by Respondent shows Respondent registered the disputed domain name with awareness of Complainant’s rights. Panels have found that respondent’s registration of disputed domain names with actual knowledge of complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶ 4(a)(iii). See Caterpillar v. Comercio e Importaciones EIRL (Forum MAY 31, 2001) (“Respondent was obviously aware of Complainant’s famous mark prior to registering the disputed domain name [<catdelperu.com>]. The CAT mark is used prominently around the world . . . .”). The extensive use of Complainant’s mark throughout Respondent’s website is also proof of actual knowledge of Complainant’s rights in the mark. See Compl., at Attached Ex. 10. Additionally, the existence of identical language and apparent direct copy-pasting from a website of an authorized dealer of Complainant appears to show Respondent’s actual knowledge of Complainant’s rights and itnerests. See Compl., at Attached Ex. 9.
Therefore, the Panel finds that Respondent has engaged in bad faith use and registration under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <adamseqcat.com> domain name transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: April 12, 2017
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