Caterpillar Inc. v. Martin Torres Fuentes / Quinn Company / Fernando Paez / QUINN COMPANY - CAT CONSTRUCTION EQUIPMENT SYLMAR
Claim Number: FA1811001815591
Complainant is Caterpillar Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, Washington DC, USA. Respondent is Martin Torres Fuentes / Quinn Company (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <quinn-caterpillar.com>, registered with Google LLC, and <caterpillarquinncompany.com>, registered with Network Solutions, 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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on November 8, 2018; the Forum received payment on November 8, 2018.
On November 9, 2018, Network Solutions, LLC and Google LLC confirmed by e-mail to the Forum that the <caterpillarquinncompany.com> and <quinn-caterpillar.com> domain names (the “Domain Names”) are registered with Network Solutions, LLC and Google LLC, respectively, and that Respondent is the current registrant of the names. Network Solutions, LLC and Google LLC have verified that Respondent is bound by the Network Solutions, LLC and Google LLC registration agreements 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 November 16, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of December 6, 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@quinn-caterpillar.com, postmaster@caterpillarquinncompany.com. Also on November 16, 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 December 10, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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.
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name-holder.” The information provided to Forum by the registrar of the Domain Name <quinn-caterpillar.com> confirms that it is registered to “Fernando Paez,” with the registrant organization listed as “Quinn Company—Cat Construction Equipment Sylmar.” The information provided to Forum by the registrar of the Domain Name <caterillarquinncompany.com> confirms that it is registered to “Martin Torres Fuentes,” with the registrant organization listed as “Quinn Company.” Notwithstanding the different names of the individual registrants, the available evidence indicates that both of the Domain Names are registered by the same person or entity, who is using different aliases. Both Domain Names include the name of the same authorized dealer of Caterpillar products, the Quinn Company (See, Complaint Exhibit 7), the Domain Names were registered just twenty days apart in September 2018 (See, Complaint Exhibit 1), and the addresses of the registrants of both Domain Names are located in the Mexico City metropolitan area. On this evidence the Panel finds that both Domain Names are registered to the same person or entity and will proceed as to both of them. The term “Respondent” as used in this Decision refers to all of the individuals and entities named in the case caption, collectively.
A. Complainant
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 registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 85,816, registered Mar. 19, 1912). Respondent’s Domain Names are identical or confusingly similar to Complainant’s mark as they each add the term “quinn” and the “.com” generic top-level domain (“gTLD”), while one of them also adds the generic term “company.”
Respondent has no rights or legitimate interests in the Domain Names. Respondent is not commonly known by the Domain Names, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use its CATERPILLAR mark. Respondent does not use either Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, it uses the <caterpillarquinncompany.com> Domain Name to pass itself off as Complainant, and the <quinn-caterpillar.com> Domain Name resolves to an inactive web site.
Respondent registered and uses the Domain Names in bad faith. It uses the <caterpillarquinncompany.com> Domain Name to pass itself off as Complainant and intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant and its CATERPILLAR mark as to the source, sponsorship, affiliation, and endorsement of the web site resolving from that name. This also disrupts Complainant’s business. Respondent passively holds the <quinn-caterpillar.com> Domain Name. Finally, given the fame of Complainant’s CATERPILLAR mark and Respondent’s explicit references to Complainant’s marks and its authorized dealer, both in the Domain Names and on the website resolving from the <caterpillarquinncompany.com> Domain Name, Respondent clearly knew of Complainant’s rights in the mark prior to registering the confusingly similar Domain Names.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 provides that in order to obtain an order cancelling or transferring a domain name, Complainant must prove each of the following three elements:
(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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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 as follows with respect to the matters at issue in this proceeding.
Complainant registered its CATERPILLAR mark with the USPTO (Registration No. 85,816) on March 19, 1912. See, Complaint Exhibit 8. Registration of a mark with the USPTO is sufficient to establish a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Respondent’s Domain Names are identical or confusingly similar to Complainant’s mark as they incorporate that mark in its entirety. Each adds the term “quinn” and the “.com” gTLD, and the <caterpillarquinncompany.com> Domain Name also adds the generic term “company.” The <quinn-caterpillar.com> domain name adds a hyphen. These changes are not sufficient to distinguish the Domain Names from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark), ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug, 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”).
For the reasons set forth above, the Panel finds that the Domain Names are identical or confusingly similar to the CATERPILLAR mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to respondent of the dispute, respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) it is not commonly known by the Domain Name, (ii) Complainant has not licensed or authorized Respondent to use Complainant’s mark, and (iii) Respondent is not using the Domain Names in connection with a bona fide offering of goods and services or as a legitimate noncommercial or other fair use. The web site resolving from one of the Domain Names impersonates and passes itself off as the web site of one of Complainant’s authorized dealers, and the other Domain Name resolves to a web site that is inactive. These allegations are supported by competent evidence.
The information provided to Forum by the registrar of the Domain Name <quinn-caterpillar.com> shows that it is registered to “Fernando Paez,” with the registrant organization listed as “Quinn Company—Cat Construction Equipment Sylmar.” The information provided to Forum by the registrar of the Domain Name <caterillarquinncompany.com> shows that it is registered to “Martin Torres Fuentes,” with the registrant organization listed as “Quinn Company.” The names of the two individuals listed bear no resemblance to either Domain Name. UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The names of the registrant organizations contain the name “Quinn” and “Quinn Company,” but there is no evidence as to whether or the manner in which Respondent may have used either name in connection with an actual, legitimate business, when any such use began, or the extent to which Respondent may actually have become known by that name. Both Domain Names were registered in September 2018 (See, Complaint Exhibit 1), and the short period of time intervening between then and November 8, 2018 when the Complaint was filed militates against a finding that Respondent has been commonly known by the Domain Names. Certainly, the inactive web site offers no indication that Respondent has been known by that name, and there is no evidence from any source that Respondent used either name at all before registering the Domain Names. In summary, the Panel is satisfied that Respondent has not been commonly known by either Domain Name for the purposes of Policy ¶ 4(c)(ii).
Complainant states that it has never licensed or authorized Respondent to use its mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complaint Exhibit 10 is a screenshot of the web site resolving from the <quinn-caterpillar.com> Domain Name. The operative message appearing there reads “This site can’t be reached.” The Domain Name is thus being held passively, with no active use being made of it. Failure to make active use of a confusingly similar domain name has often been held to be evidence of a lack of rights or legitimate interests under Policy ¶¶ 4(c)(i) and (iii). Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Complaint Exhibit 11 is a screenshot of the web site resolving from the <caterpillarquinncompany.com> Domain Name. It purports to be the web site of the Quinn Company, Complainant’s authorized dealer for central and southern California, offering a complete line of Caterpillar equipment for sale, using the same display, text, layout and appearance as that used by on the web site of the real Quinn Company, a screenshot of which is submitted as Complaint Exhibit 7. Complainant alleges that while the mailing address and map location shown on Respondent’s web site are those of Complainant’s authorized dealer, the telephone number and email address given there are those of Respondent, and this evidence is unrefuted. Respondent is thus clearly impersonating and passing off as Complainant’s authorized dealer for central and southern California. Using a confusingly similar domain name to pass off as a complainant does not qualify as a bona fide offering of goods or services for the purposes of Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iii). Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
(i) respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct;
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of respondent’s web site or location or of a product of service on respondent’s web site or location.
The evidence of Respondent’s uses of the Domain Names discussed above in connection with the rights or legitimate interests analysis also supports a finding of bad faith registration and use upon the foregoing grounds set forth in the Policy and upon additional grounds adopted by UDRP panels over the years. First, it is evident that Respondent registered and is using the Domain Names intentionally to attract, for commercial gain, Internet users to its website at <caterpillarquinncompany.com> by creating a likelihood of confusion with Complainant and its CATERPILLAR mark as to the source, sponsorship, affiliation, and endorsement of that web site. This fits clearly within the circumstances articulated by Policy ¶ 4(b)(iv). Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Secondly, Respondent registered and is using the <caterpillarquinncompany.com> Domain Name to pass off as Complainant’s authorized dealer, which disrupts Complainant’s business. See, Complaint Exhibits 7 and 11. This fits squarely within the circumstances articulated by Policy ¶ 4(b)(iii). LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)).
Respondent is making no active use of the <quinn-caterpillar.com> Domain Name. The Policy recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and passive holding of a confusingly similar domain name has often been held to be evidence of bad faith). VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Finally, it is evident from the close similarity between Complainant’s mark and the web site of its authorized dealer on the one hand and Respondent’s Domain Names and its active web site on the other that Respondent had actual knowledge of Complainant’s marks in September 2018, when it registered the Domain Names. See, Complaint Exhibit 1 for registration date. In light of the open ended, non-exclusive nature of Policy ¶ 4(b), actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <quinn-caterpillar.com> and <caterpillarquinncompany.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
December 12, 2018
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