Caterpillar Inc. v. boniface nwaibe / Hoibun Equipment Inc
Claim Number: FA1805001789702
Complainant is Caterpillar Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is boniface nwaibe / Hoibun Equipment Inc (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hoicap.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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 31, 2018; the Forum received payment on May 31, 2018.
On June 1, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <hoicap.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 June 5, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 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@hoicap.com. Also on June 5, 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 June 28, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Caterpillar Inc., 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 CAT mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 778,638, registered Oct. 13, 1964). Respondent’s <hoicap.com> domain name is confusingly similar to Complainant’s CAT mark as it misspells CAT and takes advantage of the significant visual and phonetic similarity between the letters “p” and “t” and adds the name “Hoi” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <hoicap.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the CAT mark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the Respondent uses the disputed domain name to pass itself off as Complainant and offer competing goods or services.
Respondent registered and is using the <hoicap.com> domain name in bad faith. Respondent’s registration of the disputed domain name after Complainant’s objection to the virtually identical domain name, <hoicat.com>, demonstrates a pattern of bad faith. Respondent also intentionally attempts to disrupt Complainant’s business and attract, for commercial gain, Internet users to its website by passing off as Complainant and offering competing goods or services. Last, Respondent clearly had actual or constructive knowledge of Complainant and Complainant’s rights in the CAT mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <hoicap.com> 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.”).
Complainant claims rights in the CAT mark based upon registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum Jul. 28, 2017) (finding that registration with the USPTO was sufficient to establish the Complainant’s rights in the HOME DEPOT mark). Complainant provides a copy of its USPTO registration for the CAT mark (e.g. Reg. No. 778,638, registered Oct. 13, 1964). The Panel finds that Complainant’s registration of the CAT mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <hoicap.com> domain name is confusingly similar to Complainant’s CAT mark because it misspells CAT and takes advantage of the significant visual and phonetic similarity between the letters “p” and “t” and adds the name “Hoi” and the “.com” generic top-level domain gTLD. Adding a generic or descriptive term, gTLD, and misspelling of a mark to create a phonetically similar domain name does not negate any confusing similarity between a disputed domain name and mark in a Policy ¶ 4(a)(i) analysis. See AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”); see also Lucasfilm Entertainment Company Ltd. LLC and Lucasfilm Ltd. LLC v George Ring / DN Capital Inc., FA 1673825 (Forum June 7, 2016) (finding that “Respondent’s <lukasfilm.com> domain name incorporates the LUCASFILM mark and merely substitutes a phonetically identical ‘k’ for the ‘c,’” and is therefore confusingly similar). The Panel finds from Complainant’s uncontested allegations and evidence that the <hoicap.com> domain name is confusingly similar to the CAT mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
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 argues that Respondent has no rights or legitimate interests in the <hoicap.com> domain name, as Respondent is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name per Policy ¶ 4(c)(ii). See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum Jul. 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record for the <hoicap.com> domain name lists the registrant as “boniface nwaibe / Hoibun Equipment Inc,” and no information on the record indicates that Respondent is authorized or licensed to use the CAT mark. The Panel finds that Respondent has not been commonly known by the <hoicap.com> domain name under Policy ¶ 4(c)(ii) and that Respondent does not have rights or legitimate interests in respect of the disputed domain name.
Complainant also argues Respondent’s lack of rights or legitimate interests in the <hoicap.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that Respondent uses the disputed domain name to pass itself off as Complainant and offer competing goods or services. Using a domain name to pass off as a complainant in order to offer competing goods or services is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See H-D U.S.A., LLC v. Yoshihiro Nakazawa, FA 1736477 (Forum July 21, 2017) (“A complainant can use assertions of passing off and offering competing goods or services to evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use.”). Complainant provides screenshots of the resolving page which mimics an authorized CAT dealer webpage and offers competing goods and services. The Panel finds that Respondent does not have rights or legitimate interests in respect of the <hoicap.com> domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant has proved this element.
Complainant contends that Respondent’s bad faith is indicated by its use of the <hoicap.com> domain name to disrupt Complainant’s business and attract users for commercial gain. Specifically, Complainant alleges Respondent attempts to pass itself off as Complainant and offer competing goods or services at the disputed domain name’s resolving website. Use of a domain name to impersonate a complainant and offer competing goods and services can demonstrate a respondent’s bad faith per Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum December 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also CAN Financial Corporation v. William Thomson / CNA Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services). Complainant provides screenshots of the resolving page which mimics an authorized CAT dealer webpage and offers competing goods and services. The Panel finds Respondent has registered and used the domain name in bad faith per Policy ¶ 4(b)(iii) and (iv).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the CAT mark. See Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii)."). The Panel finds from Complainant’s uncontested allegations and evidence that Respondent did have actual knowledge of Complainant’s rights in the CAT mark and this demonstrates bad faith registration and use 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 <hoicap.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist Dated: July 2, 2018
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