DECISION

 

Caterpillar Inc. v. ruth weinstein

Claim Number: FA1802001770352

PARTIES

Complainant is Caterpillar Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, USA.  Respondent is ruth weinstein (“Respondent”), Panama.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <caterpillarbrand.com>, registered with NameCheap, Inc..

 

PANEL

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.

 

Hon. Karl v. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on February 2, 2018; the Forum received payment on February 2, 2018.

 

On February 5, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <caterpillarbrand.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 February 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 26, 2018 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@caterpillarbrand.com.  Also on February 6, 2018, 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 March 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant, Caterpillar Inc., is a Fortune 100 company and leading U.S. exporter, as well as the world’s largest manufacturer of construction and mining equipment, diesel and natural gas engines, industrial gas turbines, and diesel-electric locomotives. In connection with this business, Complainant uses the CATERPILLAR mark to promote its goods and services. Complainant owns registrations for the CATERPILLAR mark through the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,448,848 registered May 8, 2001). Respondent’s <caterpillarbrand.com> domain name is confusingly similar to Complainant’s mark as the mark is incorporated entirely, merely adding a generic top-level domain name (“gTLD”), and a generic term.

 

Respondent has no rights or legitimate interests in the <caterpillarbrand.com> domain name. Respondent is not commonly known by the disputed domain name and Complainant did not authorize Respondent’s use of the CATERPILLAR mark. Respondent does not use the domain name for a bona fide offering of goods or services, or legitimate noncommercial or fair use as, instead, Respondent attempts to pass itself off as an employee of Complainant to send fraudulent emails.

 

Respondent uses and registered the <caterpillarbrand.com> domain name in bad faith. Respondent’s use disrupts Complainant’s business by using the domain name for fraudulent activities. Respondent is intentionally attracting, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s famous and registered CATERPILLAR mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s activities. Respondent uses the disputed domain name to pass itself off as an employee of Complainant and conduct an email phishing scheme. Lastly, Respondent registered the domain name with actual knowledge of Complainant’s rights in the CATERPILLAR mark prior to registration.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <caterpillarbrand.com> domain name.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

Complainant claims rights to its CATERPILLAR mark through registration with the USPTO. Registration with the USPTO is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i). See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)). Complainant provided the certificates of registration for the relevant trademarks (Reg. No. 2,448,848 registered May 8, 2001). Accordingly, the Panel finds Complainant has demonstrated sufficient rights to its mark.

 

 Complainant argues Respondent’s <caterpillarbrand.com> domain name is confusingly similar to its CATERPILLAR mark. Complainant asserts the disputed domain name wholly incorporates the CATERPILLAR mark before appending the generic term “brand” as well as the “.com” gTLD. Similar changes to a mark have been found insufficient to defeat a test of confusingly similarity pursuant to Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a 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). Therefore, the Panel finds Respondent’s domain name is confusingly similar to Complainant’s mark.

 

Complainant has proved this element.

 

Rights or 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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

 

Complainant contends Respondent lacks rights and legitimate interests in the <caterpillarbrand.com> domain name as Respondent is not commonly known by the domain name. The WHOIS information of record and a lack of authorization to use a complainant’s mark can demonstrate that a respondent is not commonly known by a disputed domain name per Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum Jul. 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum Jun. 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record lists registrant as “Ogalagu Samuel / Rise Media Works.” Complainant further asserts it did not authorize Respondent’s use of the CATERPILLAR mark. Consequently, the Panel finds Respondent is not commonly known by the disputed domain name.

 

Complainant argues Respondent does not use the <caterpillarbrand.com> domain name in connection with a bona fide offering of goods or services, or legitimate non-commercial or fair use. Use of a disputed domain name in an attempt to pass itself off as a complainant and to conduct a phishing scheme is indicative of a failure to use said domain name in connection with a bona fide offer of goods and services per Policy ¶ 4(c)(i) or a legitimate noncommercial or otherwise fair use per Policy ¶ 4(c)(iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum Jul. 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant asserts Respondent is passing off by impersonating an employee of Complainant to conduct a phishing scheme via email. The Panel finds Respondent’s use constitutes a failure to use the disputed domain name for a bona fide offer or a noncommercial fair use per Policy ¶¶ 4(c)(i) and (iii).

 

Complainant has proved this element.

 

Registration and Use in Bad Faith

Complainant asserts Respondent registered and uses the <caterpillarbrand.com> domain name in bad faith because Respondent disrupts Complainant’s business by using the domain name for fraudulent activities. Use of a complainant’s mark to register a domain name and use of said domain name to send fraudulent emails represents bad faith under Policy ¶ 4(b)(iii)/(iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). Complainant asserts Respondent uses the disputed domain name to send emails in an attempt to commit fraudulent transactions against Internet users otherwise expecting Complainant. The Panel finds Respondent’s use to be in bad faith per Policy ¶ 4(b)(iii)/(iv).

 

Additionally, Complainant argues Respondent registered the <caterpillarbrand.com> domain name with knowledge of Complainant’s rights in its CATERPILLAR mark. Registration of a disputed domain name with actual knowledge of a complainant’s rights in  the mark used to create the domain name constitutes a finding of bad faith per Policy ¶ 4(a)(iii). See Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant asserts that, based on Respondent’s registration of a domain name containing Complainant’s CATERPILLAR mark and use of said domain name to conduct a phishing scheme, Respondent had actual knowledge of Complainant’s rights in the CATERPILLAR mark prior to registration of the disputed domain name. The Panel agrees and finds Respondent had actual knowledge of Complainant’s rights in the CATERPILLAR mark prior to registration of the <caterpillarbrand.com> domain name—bad faith registration per Policy ¶ 4(a)(iii).

 

Complainant has proved this element.

 

DECISION

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

 

Accordingly, it is ORDERED that the <caterpillarbrand.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Hon. Karl V. Fink (Ret.) Panelist

Dated: March 7, 2018

 

 

 

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