Caterpillar Inc. v. Carlos Remy
Claim Number: FA1901001825645
Complainant is Caterpillar Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Carlos Remy (“Respondent”), Peru.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <caterpillarcorporation.com>, registered with NameCheap, Inc..
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 January 17, 2019; the Forum received payment on January 17, 2019.
On January 17, 2019, NameCheap, Inc. confirmed by e-mail to the Forum that the <caterpillarcorporation.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 January 22, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 11, 2019 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@caterpillarcorporation.com. Also on January 22, 2019, 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 February 15, 2019, 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., uses the CATERPILLAR mark in connection with construction and mining equipment. Complainant has rights in the CATERPILLAR mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 85,816, registered Mar. 19, 1912). Respondent’s <caterpillarcorporation.com> domain name is confusingly similar to Complainant’s CATERPILLAR mark as the disputed domain name fully incorporates the mark, adding only the generic term “corporation” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <caterpillarcorporation.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the CATERPILLAR 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, Respondent uses the disputed domain name to pass itself off as Complainant and offer competing, third-party products.
Respondent registered and is using the <caterpillarcorporation.com> domain name in bad faith. Respondent intentionally seeks to attract, for commercial gain, users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent’s use of the disputed domain name disrupts Complainant’s business. Respondent is using the disputed domain name to pass itself off as Complainant. Finally, Respondent had actual knowledge of Complainant’s rights in the CATERPILLAR 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 <caterpillarcorporation.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 CATERPILLAR 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 DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Here, Complainant provides printouts of its USPTO registrations of the CATERPILLAR mark (e.g. Reg. No. 85,816, registered Mar. 19, 1912). The Panel finds that Complainant’s registration of the CATERPILLAR mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4a(a)(i).
Complainant next argues Respondent’s <caterpillarcorporation.com> domain name is confusingly similar to the CATERPILLAR mark, as the domain name fully incorporates the mark, merely adding the generic term “corporation” and the gTLD “.com.” Addition of generic terms and/or a gTLD to a complainant’s mark is not sufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”). Respondent added the gTLD “.com” and the generic term “corporation” to Complainant’s mark when registering the disputed domain name. The Panel finds that the disputed domain name is confusingly similar to Complainant’s CATERPILLAR 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 <caterpillarcorporation.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the CATERPILLAR mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 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). Additionally, lack of authorization from complainant to use its mark may be evidence that respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record identifies the owner of the disputed domain name as “Carlos Remy” and no information on record indicated Respondent was authorized to register a domain name with Complainant’s mark. The Panel finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <caterpillarcorporation.com> domain name.
Complainant further argues that Respondent’s lack of rights and legitimate interests in the <caterpillarcorporation.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. Complainant instead contends that the disputed domain name resolves to a website which is being used to pass itself off as Complainant in order to sell competing, third-party goods. Use of a domain name to pass itself off as a complainant in order to sell competing goods is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website.); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the respondent’s use of the <thechipmerchant.net>, <chipmerchant.com>, and <chipmerchant.net> domain names was illegitimate because the domain names were “virtually identical” to the complainant’s mark, did not constitute a bona fide offering of goods or services, and respondent intended to trade off of the complainant’s “goodwill and reputation” to sell competing goods). Complainant provides screenshots of its own website and the webpage associated with the disputed domain name to support this contention. The Panel finds that Respondent does not have rights or legitimate interests in respect of the <caterpillarcorporation.com> domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant has proved this element.
Complainant contends Respondent registered and is using the <caterpillarcorporation.com> domain name in bad faith as it disrupts Complainant’s business by offering third-party competing products, presumably for financial gain. Use of a disputed domain name to disrupt a complainant’s business by offering competing products for commercial gain may indicate bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Disney Enters., Inc. v. Noel, FA 198805 (Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”). Complainant provides screenshots of its own website and the webpage associated with the disputed domain name to support this contention. The Panel finds that Respondent is using the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Complainant argues that Respondent’s bad faith is indicated by its use of the <caterpillarcorporation.com> domain name to pass itself off as Complainant. Use of a domain name to pass off as a Complainant may demonstrate bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 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 Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). Complainant provides screenshots of its own website and the webpage associated with the disputed domain name to support this contention. The Panel agrees with Complainant and finds that this is evidence that Respondent is using the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Complainant argues Respondent had actual knowledge of Complainant’s rights in the CATERPILLAR mark prior to registering the <caterpillarcorporation.com> domain name due to the fame and notoriety of the mark and Respondent’s imitation of Complainant’s website. A respondent’s actual knowledge of a complainant’s rights in a mark prior to registration of a disputed domain name may indicate bad faith per Policy ¶ 4(a)(iii). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Complainant provides screenshots of its own website and the webpage associated with the disputed domain name to support this contention. The Panel finds that Respondent registered and uses the disputed domain name in bad faith 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 <caterpillarcorporation.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: February 18, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page