Caterpillar Inc. v. Jonathan Phillips
Claim Number: FA0610000824404
Complainant is Caterpillar Inc. (“Complainant”), represented by Christopher P. Foley, of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., 901 New York Avenue Nw, Washington, DC 20001. Respondent is Jonathan Phillips (“Respondent”), 123 Terimar St, Chicopee, MA 01013.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <caterpillarconstructionequipment.com>, registered with Go Daddy Software, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 20, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 23, 2006.
On October 20, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <caterpillarconstructionequipment.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 October 26, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 15, 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@caterpillarconstructionequipment.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 20, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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:
BACKGROUND FACTS
A. Caterpillar,
its Products and Services, and
its Famous CATERPILLAR Name and Mark
1.
Caterpillar
is a Fortune 100 company and the world’s largest manufacturer of construction
and mining equipment, diesel and natural gas engines, and industrial gas
turbines. Caterpillar is ranked first
in its industry.
2.
Caterpillar
manufactures, sells, and distributes a wide assortment of heavy-industry
equipment, including track-type tractors, track loaders, wheel loaders,
integrated tool carriers, excavators, mining shovels, off-highway trucks,
scrapers, motor graders, backhoe loaders, paving products, agricultural
equipment, forest machines, wheel tractors and compactors, telescopic handlers,
compacts, engines, and gas turbines.
3.
Caterpillar
also provides numerous services including financing, maintenance and support,
logistics, insurance, training, and rental services.
4.
In addition
to its equipment and services, Caterpillar uses and licenses its CATERPILLAR
name and mark on a variety of collateral products. The popularity of CATERPILLAR-branded merchandise, particularly
its footwear and clothing products, is immense.
5.
Caterpillar
owns the trademark and service mark CATERPILLAR. In use since 1904, the CATERPILLAR mark enjoys unquestionable
fame as a result of extensive and long use and advertising, and favorable
public acceptance and recognition worldwide.
Indeed, the CATERPILLAR mark has become one of the most recognized
brands in the world, and was ranked one of the “Top 100 Brands” and valued at
more than $4,500,000,000 by Interbrand in 2006.
6.
Caterpillar has
sold many billions of dollars worth of products under the CATERPILLAR mark. For example, Caterpillar had worldwide sales and revenue in excess
of U.S. $ 36,000,000,000 in
2005.
7.
Caterpillar over
the years has extensively and widely advertised and promoted its products and
services under the CATERPILLAR
mark. Caterpillar spends many millions of dollars every
year to advertise and promote its products and services under the CATERPILLAR mark.
8.
Caterpillar’s
products and components are manufactured in approximately 50 facilities located
in the U.S., and over 50 additional locations in 20+ countries, including
India. Caterpillar has nearly 200
authorized dealers in more than 200 countries, and offers rental services
through more than 1,400 outlets worldwide.
9.
Caterpillar
extensively promotes its products and services under the CATERPILLAR mark on the
Internet. Since 1993, Caterpillar has used its website as
a worldwide information and distribution channel for its business. Caterpillar’s website, accessible
via the domain names CATERPILLAR.COM and CAT.COM, receives many millions of
hits each month.
B. Caterpillar’s
Trademark Holdings
10.
Caterpillar
has continuously used CATERPILLAR as a trade name, trademark, and service mark
since 1904, and owns registrations for the CATERPILLAR word and design mark in
more than 150 countries around the
world.
11.
Caterpillar
owns numerous registrations for the CATERPILLAR mark in the United States
alone, including the following representative registrations:
a. Registration No. 85,816, first used September 1, 1904, filed November 18, 1910, issued March 19, 1912, covering goods in International Class 7 (engines and machines).
b. Registration No. 85,748, first used 1910, filed August 19, 1911, issued March 12, 1912, covering goods in International Class 4 (lubricants).
c. Registration No. 345,499, first used September 1904, filed December 12, 1936, issued April 27, 1937, covering goods in International Class 7 (tractors, engines, and machinery).
d. Registration No. 1,911,472, first used June 1988, filed October 28, 1993, issued August 15, 1995, covering goods in International Class 25 (footwear).
e. Registration No. 2,234,261, first used January 1990, filed March 23, 1998, issued March 23, 1999, covering goods in International Class 25 (apparel).
12.
Caterpillar
also owns the domain name CATERPILLAR.COM, which it registered on March 17,
1995.
13.
Caterpillar’s
trademark rights in its CATERPILLAR mark and name, based on its trademark
registrations and its common law rights acquired through use since 1904, long
predate Respondent’s registration of the Domain Name.
C. Respondent’s Infringing Activities and
Bad Faith Acts
14.
Respondent
registered the Domain Name on November 29, 2005, more than a century after
Caterpillar began using its CATERPILLAR mark and name, many decades after the
CATERPILLAR mark became famous, and long after the effective date of
Caterpillar’s trademark registrations.
15.
Respondent
uses the Domain Name for a pay-per-click website displaying links for websites
offering directly competing products.
Respondent’s website also displays an offer to sell the Domain Name for
$1,000, and provides a link to Sedo’s website where Respondent’s offer to sell
the Domain Name is also advertised.
16.
On February
15, 2006 and July 26, 2006, Complainant, through its undersigned counsel, sent
Respondent a cease-and-desist letter demanding the transfer of the Domain
Name. To date, Respondent has not
responded to Complainant’s demands.
17.
Respondent
has registered numerous other domain names comprised of well-known marks owned
by third parties including, for example, the domain names REDCROSSBLOODDONATION.COM,
REDCROSSFIRSTAIDKIT.COM, AMERICANREDCROSSCARDONATION.COM,
NIKECROSSTRAININGSHOES.COM, GOOGLETOOLBARDOWNLOAD.COM, GOOGLETOOL.NET,
GOOGLETOOL.ORG, BLUECROSSHEALTHINSURANCE.ORG, BLUECROSSHEALTHINSURANCE.NET,
BLUECORSSBLUEHSIELDINSURANCE.NET, BLUESHIELDBLUECROSSOFCALIFORNIA.COM,
INGERSOLLRANDAIRTOOL.COM, and NASCARSTORE.US.
THE DOMAIN NAME
IS CONFUSINGLY SIMILAR
TO
COMPLAINANT’S MARK
18.
The domain
name CATERPILLARCONSTRUCTIONEQUIPMENT.COM is confusingly similar to
Complainant’s CATERPILLAR mark because it is comprised of Complainant’s mark
and the generic terms “construction” and “equipment.” Combining Complainant’s CATERPILLAR mark with generic terms is
insufficient to distinguish the Domain Name from Complainant’s mark, especially
when the terms relate to Complainant’s business. See, e.g., Caterpillar Inc. v. Spiral Matrix et
al. (WIPO D2006-0808) (finding the domain names
<caterpillarconstructionequipment.org>, <catapillerequipment.com>,
and <caterpillarequipment.org> among others confusingly similar to
Complainant’s CATERPILLAR mark); Caterpillar Inc. v. Roam the Planet, Ltd.
(WIPO D2000-0275) (finding the domain name <catmachines.com> confusingly
similar to complainant’s mark CAT and noting the addition of the word
“machines” “reinforce[s] the association of the Complainant’s trademark with
its primary line of products.”); Caterpillar Inc. v Stephen R. Vine (NAF
FA0104000097097) (finding the domain names <usedcat-auction.com>,
<usedcaterpillarspecialistauction.com>, <catauctions.com>, and
<usedcaterpillarspecialist.com> confusingly similar to Complainant’s
CATERPILLAR mark because “The mere addition of descriptive or generic words to
a famous mark, however, does not eliminate the similarity between the domain
name and the trademark.”).
RESPONDENT HAS NO RIGHTS OR LEGITIMATE
INTEREST IN THE DOMAIN NAME
19.
Respondent’s
registration and use of the Domain Name for commercial pay-per-click websites
advertising competing links does not constitute a bona fide offering of
goods or services under the UDRP. Nor
do Respondent’s activities constitute a legitimate noncommercial or
fair use of the Domain Name under the UDRP.
See, e.g., Caterpillar Inc. v.
Admin c/o Jucco Holdings (NAF FA0603000662210) (holding respondent’s use of
the domain name for a pay-per-click website featuring links to competing
websites is not a bona fide offering of goods or services or a legitimate
noncommercial or fair use under the UDRP); DoAll Company v. Titan Net c/o
Titan (NAF FA0509000563640) (holding respondent’s
use of the disputed domain name for a search engine website featuring
commercial links to various third-party websites, for which Respondent
presumably receives referral fees, does not constitute a bona fide
offering of goods or services or a legitimate noncommercial or fair use under
the UDRP); IndyMac Bank F.S.B. v. Yu Xiao (NAF FA0511000603023) (holding
respondent's use of the domain name for a website featuring links to various
websites, for which respondent presumably receives referral fees, is neither a
bona fide offering of goods or services nor a legitimate noncommercial or fair
use under the UDRP); see also Caterpillar Inc. v. Spiral
Matrix et al. (WIPO D2006-0808) (holding respondent had no legitimate
interest in the domain names <caterpillarconstructionequipment.org>,
<catapillerequipment.com>, and <caterpillarequipment.org> among
others and noting “Where, as here, Complainant’s marks and name are so
well-known and so widely recognized, and have been used in the United States
and 20 other countries for so many years, in the circumstances, there can be no
legitimate rights or plausible use by [r]espondent.”).
20.
Respondent
is not and has not been commonly known by the Domain Name.
RESPONDENT’S
BAD FAITH UNDER SECTION 4(B) OF THE UDRP
21.
Respondent’s
registration and use of the Domain Name meet the bad faith element set forth in
Section 4(b)(iv) of the UDRP.
Specifically, Respondent uses the Domain Name to intentionally attract,
for commercial gain, Internet users to his pay-per-click website by creating a
likelihood of confusion with Complainant and its CATERPILLAR mark as to the
source, sponsorship, affiliation, and/or endorsement of Respondent’s website
and the competing links advertised on Respondent’s website. See, e.g., Caterpillar Inc.
v. Admin c/o Jucco Holdings (NAF FA0603000662210) (holding respondent’s use
of the domain name <catatwork.com> for a pay-per-click website displaying
competing links constitutes bad faith because “[r]espondent is taking advantage
of the confusion between Complainant and itself for its own commercial gain.”);
Caterpillar Inc. v. Center for Ban on Drugs (NAF FA0603000661437)
(holding respondent's use of the domain name <caterpilar.com> for
advertising commissions constitutes bad faith pursuant to Section 4(b)(iv)); Capital
One Financial Corporation v. LaPorte Holdings, Inc. (NAF FA0502000417712)
(holding respondent’s use of the disputed CAPITAL ONE-formative domain names
for pay-per-click websites constitutes bad faith and holding “[r]espondent is
profiting from the unauthorized use of [c]omplainant’s registered mark in its
domain names. Such infringement is what
the Policy was intended to remedy and is evidence of bad faith registration and
use under Policy ¶4(b)(iv).”).
22.
Respondent’s
registration and use of the Domain Name meet the bad faith element set forth in
Section 4(b)(iii) of the UDRP.
Specifically, Respondent disrupts Complainant’s business and unfairly
competes with Complainant by using the Domain Name for a commercial
pay-per-click website advertising links for competing products. See, e.g., WeddingChannel.com,
Inc. v. Albert Jackson (NAF FA0405000273990) (holding respondent's
registration of a domain name confusingly similar to complainant's mark and use
of that name to direct Internet users to a commercial website advertising
services similar to complainant's constitutes bad faith pursuant to Section
4(b)(iii) of the UDRP); DaimlerChrysler Corp. v. Kentech, Inc. (NAF
FA0501000410056) (holding respondent’s use of the domain name for websites
displaying links to complainant’s competitors constitutes bad faith).
23.
Respondent’s
registration and use of the Domain Name meet the bad faith element set forth in
Section 4(b)(i) of the UDRP because Respondent registered the Domain Name to
sell, rent, or otherwise transfer it for valuable consideration in excess of
his documented out-of-pocket expenses.
As shown above in Paragraph 27, Respondent offers to sell the Domain
Name for a profit on his website associated with the Domain Name and on Sedo.com’s
website. See, e.g., Sanofi-Aventis
v. Helois Lab (WIPO D2005-0607) (finding bad faith in respondent’s offer to
sell the disputed domain name on its website associated with the domain name
via a “Buy this domain” link); Federal Home Loan Mortgage Corporation v.
Suren Deep (NAF FA0304000154102) (finding bad faith in respondent’s offer
to sell the domain name freddiemac.info because “[r]espondent uses the disputed
domain name for a website that advertises [r]espondent’s offer to sell its
rights in the domain name. Such
registration and use, for the purpose of exploiting a famous mark in the hopes
of commercial gain, is conduct explicitly proscribed by the Policy.”).
24.
Respondent’s
registration and use of the Domain Name constitute bad faith pursuant to
Section 4(b)(ii) of the UDRP because as shown above in Paragraph 29, Respondent
has a bad-faith pattern of registering trademark-related domain names. See, e.g., IndyMac
Bank F.S.B. v. Domain Owner a/k/a Lee
Wigod (NAF FA0303000150814) (finding bad faith pursuant to Section 4(b)(ii)
in respondent’s registration of three trademark-related domain names); General
Electric Company v. Normina Anstalt a/k/a Igor Fyodorov (WIPO D2000-0452)
(finding bad faith in the respondent’s registration of three trademark-related
domain names).
25.
Given the
fame of the CATERPILLAR mark and Respondent’s use of the Domain Name for a
website displaying competing links, there is no question that Respondent had
knowledge of Complainant’s rights in its CATERPILLAR mark when he registered
the Domain Name. By registering the
Domain Name with knowledge of Complainant’s rights in its CATERPILLAR mark,
Respondent acted in bad faith. See,
e.g., Compaq Information Technologies Group, L.P. v. Express
Technology, Inc. (NAF FA0201000104186) (finding the respondent registered
the domain name in bad faith because it was on notice of the complainant’s
rights); Yahoo! Inc. v. Kelvin Pham (NAF FA0204000109699) (finding the
respondent registered the domain name in bad faith because it was on notice of
the complainant’s rights).
B. Respondent failed to submit a Response in this proceeding.
Complainant, Caterpillar Inc., is a leading manufacturer of a wide variety of construction and mining equipment, diesel and natural gas engines, and industrial gas turbines. Complainant has continuously used the CATERPILLAR mark since 1904 in connection with its equipment products. Complainant also sells footwear and apparel bearing the CATERPILLAR mark, and was recently ranked by Interbrand as one of the “Top 100 Brands,” valued at more than $4.5 billion. In 2005, Complainant generated sales revenue of over $36 billion worldwide.
Complainant holds numerous trademark registrations for the CATERPILLAR mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 85,816 issued March 19, 1912; Reg. No. 85,748 issued March 12, 1912; Reg. No. 345,499 issued April 27, 1937; Reg. No. 1,911,472 issued August 15, 1995; Reg. No. 2,234,261 issued March 23, 1999).
Respondent’s <caterpillarconstructionequipment.com> domain name, which it registered on November 28, 2005, resolves to a website with commercial links to Complainant’s competitors and a link to a website where Respondent is offering to sell the disputed domain name for $1,000.
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 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’s numerous trademark registrations for the CATERPILLAR mark sufficiently demonstrate its rights in the mark pursuant to Policy ¶4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Thermo Electron Corp et al. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (holding that the complainants established rights in marks because the marks were registered with a trademark authority).
The <caterpillarconstructionequipment.com>
domain name contains Complainant’s entire registered CATERPILLAR mark combined
with two terms describing a component of Complainant’s business. In Reed Elsevier Inc. & Reed Elsevier
Properties Inc. v. Christodoulou, FA 97321(Nat. Arb. Forum June 26, 2001),
the panel found that the <legallexis.com> and <legallexus.com>
domain names were confusingly similar to Complainant’s LEXIS mark because the
term “legal” describes the type of services Complainant offers under the LEXIS
mark. In this case as well,
Respondent’s mere addition of two terms describing Complainant’s business does
not sufficiently distinguish the disputed domain name from Complainant’s
mark. The Panel finds the contested
domain name to be confusingly similar to the mark under Policy ¶4(a)(i). See Disney v. McSherry, FA 154589
(Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com>
domain name to be confusingly similar to Complainant’s DISNEY mark because it
incorporated Complainant’s entire famous mark and merely added two terms to
it);
The Panel concludes Complainant has satisfied Policy ¶4(a)(i).
Complainant alleges Respondent lacks rights and legitimate interests in the <caterpillarconstructionequipment.com> domain name. Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to 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); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶4(a)(ii).”).
Respondent’s failure to answer the Complaint raises a
presumption Respondent has no rights or legitimate interests in the <caterpillarconstructionequipment.com>
domain name. See Branco do Brasil
S.A. v. Sync Tech., D2000-0727 (WIPO Sept. 1, 2000) (“By its default,
Respondent has not contested the allegation . . . that the Respondent lacks any
rights or legitimate interests in the domain name. The Panel thus assumes that there was no other reason for the
Respondent having registered <bancodobrasil.com> but the presumably known
existence of the Complainant´s mark BANCO DO BRASIL”); see also Am. Online, Inc. v. AOL Int'l,
D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where
the respondent fails to respond). The Panel will nevertheless examine the record to determine
if Respondent has rights or legitimate interests under Policy ¶4(c).
Respondent has registered the domain name under the name “Jonathan Phillips,” and there is no other evidence in the record suggesting Respondent is commonly known by the <caterpillarconstructionequipment.com> domain name. Consequently, Respondent has not established rights or legitimate interests in the <caterpillarconstructionequipment.com> domain name pursuant to Policy ¶4(c)(ii). See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Respondent is using the <caterpillarconstructionequipment.com>
domain name to redirect Internet users seeking information on Complainant’s
products to a website displaying links to the products of Complainant’s
competitors. In Expedia, Inc. v.
Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005), the panel found the
respondent’s use of a domain name to divert consumers to other travel websites
that competed with the complainant was not a use 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). Because Respondent is using the disputed
domain name in a similar fashion and likely profiting from its diversion of
Internet users to competing websites, the Panel concludes that Respondent does
not have rights or legitimate interests in the <caterpillarconstructionequipment.com>
domain name pursuant to Policy ¶4(c)(i) or Policy ¶4(c)(iii). See DLJ Long
Term Inv. Corp. v. BargainDomainNames.com,
FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed
domain name in connection with a bona fide offering of goods and services
because Respondent is using the domain name to divert Internet users to
<visual.com>, where services that compete with Complainant are
advertised.”).
The Panel concludes Complainant has satisfied Policy ¶4(a)(ii).
Because Respondent is using the <caterpillarconstructionequipment.com>
domain name to redirect Internet users to competing websites, the Panel finds
Respondent has registered and is using the disputed domain name in order to
disrupt Complainant’s business under the CATERPILLAR mark, which constitutes
bad faith according to Policy ¶4(b)(iii).
See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb.
Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the
same business as the Complainant. The parties can therefore be considered as
competitors. The Panel thus finds that the Respondent registered the domain
name primarily for the purpose of disrupting the business of a competitor,
which constitutes evidence of registration and use in bad faith under Policy
4(b)(iii).”); see also Disney Enters., Inc. v.
Noel, FA 198805 (Nat. Arb. 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).”).
The Panel also finds
Respondent’s diversionary use of the <caterpillarconstructionequipment.com> domain name for commercial gain violates
Policy ¶4(b)(iv), for by linking the domain name to a commercial links page and
presumably earning click-through fees, Respondent is taking advantage of the
confusing similarity between the disputed domain name and Complainant’s
CATERPILLAR mark in order to profit from the goodwill associated with the
mark. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933
(Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and
used the domain name in bad faith pursuant to Policy ¶4(b)(iv) because the
respondent was using the confusingly similar domain name to attract Internet
users to its commercial website); see
also Toyota Motor Sales U.S.A. Inc. v.
Clelland, FA 198018 (Nat. Arb. Forum Nov.
10, 2003) (“Respondent used <land-cruiser.com> to advertise its business,
which sold goods in competition with Complainant. This establishes bad faith as
defined in Policy ¶4(b)(iv).”).
The Panel concludes Complainant has satisfied Policy ¶4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <caterpillarconstructionequipment.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: December 5, 2006
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