Caterpillar Inc. v. Center for Ban on Drugs
Claim Number: FA0603000661437
Complainant is Caterpillar Inc. (“Complainant”), represented by Mark Sommers, of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., 901 New York Avenue NW, Washington, DC 20001. Respondent is Center for Ban on Drugs (“Respondent”), 1560 Broadway Street, Denver, CO 80202.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <caterpilar.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 17, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 20, 2006.
On March 17, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <caterpilar.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 23, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 12, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@caterpilar.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 18, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.), as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <caterpilar.com> domain name is confusingly similar to Complainant’s CATERPILLAR mark.
2. Respondent does not have any rights or legitimate interests in the <caterpilar.com> domain name.
3. Respondent registered and used the <caterpilar.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Caterpillar Inc., manufactures, sells, and distributes a wide assortment of heavy-industry equipment, including tractors, excavators and motor graders. Complainant is a Fortune 100 company and is the world’s largest manufacturer of construction and mining equipment. In 1904, Complainant first used the CATERPILLAR mark in connection with its business, and it has done so continuously since then. Complainant holds numerous registrations of the CATERPILLAR mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 85,748 issued Mar. 12, 1912; Reg. No. 85,816 issued Mar. 19, 1912; Reg. No. 345,499 issued Apr. 27, 1937; Reg. No. 1,911,472 issued Aug. 15, 1995). Complainant has also registered the CAT mark with the USPTO, and maintains websites in connection with its business under the <caterpillar.com>, <cat.com> and <catatwork.cat.com> domain names. As a result of Complainant’s extensive use and advertising of the CATERPILLAR mark, the mark has been ranked in Business Week as one of the “Top 100 Brands” in the world, valued at more than $4,000,000,000 in 2005.
Respondent registered the <caterpilar.com> domain name on April 4, 2001. Internet users who access this website are presented with an advertisement for an adult-oriented dating service owned by a third party, which advertises an affiliate program through which it offers payment in return for Internet traffic.
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."
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(e), 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 (Nat. Arb. 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.”).
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.
Complainant, by registering the CATERPILLAR mark with the USPTO, has established rights in this mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).
Respondent’s <caterpilar.com> domain name incorporates Complainant’s mark with the omission of one letter “l” and the addition of the top-level domain “.com.” Because all domain names require top-level domains, the addition of “.com.” to Complainant’s mark is irrelevant to the analysis of whether the disputed domain name is confusingly similar to the mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Additionally, the omission of a single letter from Complainant’s mark does not adequately distinguish the disputed domain name from the mark. See Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to the complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), once Complainant has made a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name, the burden shifts to Respondent to prove that it does have rights or legitimate interests. The Panel finds that Complainant has made a prima facie case, and the burden shifts to Respondent as a result. Therefore, the Panel will examine the evidence to determine if Respondent has rights or legitimate interests under Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s <caterpilar.com> domain name, which is confusingly similar to Complainant’s well-known CATERPILLAR mark, directs Internet users to an advertisement for an adult-oriented dating site. The Panel presumes that Respondent receives click-through fees in return for diverting Internet traffic to this website. Such use of the disputed domain name is not in connection with 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). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).
There is no evidence on record that Respondent has ever been commonly known by the <caterpilar.com> domain name, or that Respondent is affiliated with Complainant. Furthermore, the WHOIS database contains no information implying that Respondent is commonly known by the <caterpilar.com> domain name. The Panel infers that Respondent has no rights or legitimate interests in this domain name under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the <caterpilar.com> domain name to direct Internet users to an advertisement for an adult-oriented dating service, presumably in return for payment. In doing so, Respondent is taking advantage of the similarity between its domain name and Complainant’s mark, and the resulting confusion that Internet users might have as to the relationship between Complainant and Respondent. The Panel finds that Respondent is taking advantage of the confusion between Complainant and the resulting website for its own commercial gain. Such use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent).
Respondent’s
registration of the <caterpilar.com> domain name is a form
of typosquatting in that it omits a single letter from Complainant’s mark. Respondent’s registration of the disputed
domain name is an attempt to capitalize on typographical errors. Use of a typosquatted version of
Complainant’s mark in the disputed domain name is further evidence of bad faith
registration and use under Policy ¶ 4(a)(iii).
See Zone Labs, Inc.
v. Zuccarini, FA 190613 (Nat. Arb.
Forum Oct. 15, 2003) (“Respondent’s registration and use of [the
<zonelarm.com> domain name] that capitalizes on the typographical error
of an Internet user is considered typosquatting. Typosquatting, itself is evidence
of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see
also K.R. USA, INC. v. SO SO DOMAINS, FA
180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that
the respondent’s registration and use of the <philadelphiaenquirer.com>
and <tallahassedemocrat.com> domain names capitalized on the
typographical error of Internet users seeking the complainant's THE
PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting
and bad faith pursuant to Policy ¶ 4(a)(iii)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <caterpilar.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: May 2, 2006
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