Caterpillar Inc. v. Liu Yuan
Claim Number: FA1805001789384
Complainant is Caterpillar Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Liu Yuan (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <caterpillarcredi.com> and <caterpillarcredicard.com>, registered with HiChina Zhicheng Technology Limited.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 30, 2018; the Forum received payment on May 30, 2018.
On Jun 1, 2018, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <caterpillarcredi.com> and <caterpillarcredicard.com> domain names are registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the names. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology Limited 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 June 14, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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@caterpillarcredi.com and postmaster@caterpillarcredicard.com. Also on June 14, 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 July 9, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is the world’s largest manufacturer of construction and mining equipment, diesel and natural gas engines, industrial gas turbines, and diesel-electric locomotives.
Complainant has rights in the CATERPILLAR mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) .
Respondent’s <caterpillarcredi.com> and <caterpillarcredicard.com> domain names are confusingly similar to Complainant’s CATERPILLAR mark as Respondent merely adds generic or descriptive terms “credi” and “credicard” (“credit” misspelled), and a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <caterpillarcredi.com> and <caterpillarcredicard.com> domain names. Respondent is not permitted or licensed to use Complainant’s CATERPILLAR mark and is not commonly known by the disputed domain names. Additionally, Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to feature advertisements for various competing third party websites including some that are in competition with Complainant.
Respondent registered and uses the <caterpillarcredi.com> and <caterpillarcredicard.com> domain names in bad faith. Respondent’s registration of two (2) disputed domain names and a history of adverse UDRP decisions indicate a pattern of bad faith. Moreover, Respondent attempts to disrupt Complainant’s business and attract users to the domain names’ websites which feature pay-per-click advertisements for websites that compete with Complainant. Furthermore, Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the CATERPILLAR mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the CATERPILLAR mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and has not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the CATERPILLAR trademark.
Respondent uses the at-issue domain names to display and capitalize on pay-per-click links including but not limited to links to Complainant’s competition.
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.”).
Preliminary Issue: Language of Proceeding
The Panel notes that the Registration Agreement is written in Chinese, which generally makes Chinese the language of this proceeding. Complainant requests that the instant proceedings be conducted in English. The Panel has the discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings by considering any relevant circumstances. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Here, Respondent is apparently conversant in English as the <caterpillarcredi.com> and <caterpillarcredicard.com> domain names address websites that are primarily in English. Further, the domain name is an English word and the trademark of a famous American company. Since it would be unduly burdensome to require Complainant to proceed in Chinese under these circumstances, and since Respondent has failed to object to Complainant’s reasonable request, the Panel determines that the instant proceeding shall be conducted in English.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the CATERPILLAR mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Additionally, the at-issue domain names each contain Complainant’s entire CATERPILLAR trademark followed by either the generic term “credi” or “credicard” and conclude with the top level domain name “.com”. The differences between the at-issue <caterpillarcredi.com> and <caterpillarcredicard.com> domain names and Complainant’s CATERPILLAR trademark are insufficient to distinguish either domain name from Complainant’s trademark for the purposes of the Policy. In fact, the inclusion of the term “credi” (a misspelling of credit) and “card” in the domain names enhances any confusion as it falsely suggests Complainant’s finance related business areas. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <caterpillarcredi.com> and <caterpillarcredicard.com> domain name is confusingly similar to Complainant’s CATERPILLAR trademark. 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); see also, Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either of the at‑issue domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Liu Yuan” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by either the <caterpillarcredi.com> or the <caterpillarcredicard.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the either at-issue domain name for the purposes of Policy ¶ 4(c)(ii). SeeCoppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (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’s domain names address websites displaying pay-per-click links, some to competing third party websites. Using the confusingly similar domain names to commercially benefit from pay-per-click links shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy¶ 4(c)(iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (“Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”); see also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at-issue domain names were each registered and used in bad faith. As discussed below, Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii) with regard to each domain name.
First, Respondent has a history of multiple adverse UDRP decision. In the instant case, Respondent registered two domain names which include Complainant’s trademark. Respondent’s prior domain registration activity thus indicates a pattern of bad faith registration and use. This pattern suggests Respondent’s bad faith in the instant case pursuant to Policy ¶ (b)(ii). See The Toronto-Dominion Bank v. Ryan G Foo / PPA Media Services / Jinesh Shah / Whois Privacy Corp. / Domain Administratory / Fundacion Private Whois / Domain Admin / Whois Privacy Corp, FA1408001576648 (Forum Jan. 12, 2015) (“The Panel determines that Respondent’s documented history of adverse UDRP rulings, as well as Respondent’s multiple registrations relating to Complainant’s marks, are independently sufficient to constitute a pattern as described by Policy ¶ 4(b)(ii). Therefore the Panel finds bad faith under the provision.”).
Furthermore, Respondent uses the <caterpillarcredi.com> and <caterpillarcredicard.com> domain names to address websites designed to generate pay-per-click revenue from advertisements and links, some of which compete with Complainant. Using the domain names in this manner is disruptive to Complainant’s business and shows Respondent to be exploiting the confusion between its domain names and Complainant’s trademark for commercial gain thereby indicating bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also, Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)).
Finally, Respondent had actual knowledge of Complainant’s rights in the CATERPILLAR mark when it registered the <caterpillarcredi.com> and <caterpillarcredicard.com> domain names. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademark and from the fact that Respondent registered two domain names containing Complainant’s trademark. Registering and using a confusingly similar domain with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <caterpillarcredi.com> and <caterpillarcredicard.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 11, 2018
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