Caterpillar Inc. v. Kelly Nobach d/b/a
Claim Number: FA0704000956508
Complainant is Caterpillar Inc. (“Complainant”), represented by Christopher
P. Foley, of Finnegan,
The domain names at issue are <caterpillarturbo.com> and <catturbo.com>, registered with Go Daddy Software, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 10, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 11, 2007.
On April 10, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <caterpillarturbo.com> and <catturbo.com> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. 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 April 13, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 3, 2007 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@caterpillarturbo.com and postmaster@catturbo.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <caterpillarturbo.com> and <catturbo.com> domain names are confusingly similar to Complainant’s CATERPILLAR and CAT marks.
2. Respondent does not have any rights or legitimate interests in the <caterpillarturbo.com> and <catturbo.com> domain names.
3. Respondent registered and used the <caterpillarturbo.com> and <catturbo.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Caterpillar, Inc., is the world’s largest manufacturer of construction and mining equipment, diesel and natural gas engines, and industrial gas turbines. Complainant holds registrations with the United States Patent and Trademark Office (“USPTO”) for the CATERPILLAR (Reg. No. 85,816 issued March 19, 1912; Reg. No. 345,499 issued April 27, 1937; Reg. No. 2,234,261 issued March 23, 1999) and CAT (Reg. No. 564,272 issued September 23, 1952; Reg. No. 1,298,364 issued October 2, 1984) marks. Complainant not only uses its CATERPILLAR and CAT marks in connection with its equipment and services, but also with a variety of collateral products including footwear and clothing. Complainant also owns the <caterpillar.com> and <cat.com> domain names.
Respondent registered the <caterpillarturbo.com> and <catturbo.com> domain names on February 19, 2006. Respondent is using the disputed domain names to redirect Internet users to its website located at the <michiganturbo.com> domain name. Respondent’s website offers, without authorization, Complainant’s turbochargers under its CATERPILLAR and CAT marks as well as the turbochargers of Complainant’s competitors, including Toyota, GMC and Banks. Respondent’s website also sells air coolers, fan blades, fan clutches, injection pumps, pyrometers and gauges.
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 has established rights in the CATERPILLAR and CAT marks through registration of those marks with the USPTO. The Panel finds that the requirement of establishing rights in a mark pursuant to Policy ¶ 4(a)(i) has been satisfied. 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 Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s <caterpillarturbo.com> and <catturbo.com> domain names
are confusingly similar to Complainant’s CATERPILLAR and CAT marks. The disputed domain names include
Complainant’s marks in their entirety with the addition of the term
“turbo.” The term “turbo” is descriptive
of Complainant’s products, specifically Complainant’s turbochargers. The Panel finds that the disputed domain names
are not distinct and are confusingly similar to Complainant’s marks pursuant to
Policy ¶ 4(a)(i). See Oki Data Ams.,
Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a
domain name wholly incorporates a Complainant’s registered mark is sufficient
to establish identity [sic] or confusing similarity for purposes of the Policy
despite the addition of other words to such marks.”); see also Brambles
Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000)
(finding that the domain name <bramblesequipment.com> is confusingly
similar because the combination of the two words "brambles" and
"equipment" in the domain name implies that there is an association
with the complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights or legitimate interests in the <caterpillarturbo.com> and <catturbo.com> domain names. Complainant’s allegation establishes a prima facie case, shifting the burden to Respondent to prove that it does have rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). Respondent has not submitted a Response in this proceeding, thus depriving the Panel of evidence or arguments in support of Respondent’s position. The Panel interprets Respondent’s failure to respond as evidence that Respondent does not have rights or legitimate interests in the disputed domain names. However, despite Respondent’s failure to respond, the Panel will evaluate the available evidence to determine whether or not Respondent has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c). See 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).”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).
Respondent is using the <caterpillarturbo.com> and <catturbo.com> domain names
to redirect Internet users to its website that offers both Complainant’s goods
for sale and the goods of Complainant’s competitors. Respondent is not engaged in a bona fide
offering of goods or services as contemplated by Policy ¶ 4(c)(i) as Respondent
is capitalizing on Complainant’s mark in order to direct traffic to its website. Respondent is also not engaged in a
legitimate noncommercial or fair use as contemplated by Policy ¶ 4(c)(iii) as
Respondent presumably profits from the commercial activity of its website. The Panel finds that Respondent has not
demonstrated rights or legitimate interests in the disputed domain names
pursuant to Policy ¶¶ 4(c)(i) or (iii). See
Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona
fide offering of goods or services where the respondent used the
complainant’s mark without authorization to attract Internet users to its
website, which offered both the complainant’s products and those of the
complainant’s competitors); see also Pitney
Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights
or legitimate interests in the <pitneybowe.com> domain name where the
respondent purports to resell original Pitney Bowes equipment on its website,
as well as goods of other competitors of the complainant).
Furthermore, no available evidence suggests that Respondent is commonly known by the <caterpillarturbo.com> and <catturbo.com> domain names, either as an individual or as a business. Respondent’s WHOIS information identifies it as “Kelly Nobach d/b/a Michigan Turbo,” which bears no relationship or resemblance to the <caterpillarturbo.com> and <catturbo.com> domain names. Respondent offered no proof and no evidence into the record suggesting that Respondent is known by the disputed domain names or that Respondent acquired rights to or interests in the disputed domain names. The Panel finds that Respondent has failed to establish rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); 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’s <caterpillarturbo.com> and <catturbo.com> domain names are confusingly similar to Complainant’s marks, and individuals seeking Complainant’s goods or services on the web may be misdirected to Respondent’s website. Internet users seeking Complainant’s turbochargers in particular may be misdirected to Respondent’s website. Once at Respondent’s website, Internet users may purchase products that compete with Complainant, or Complainant’s unauthorized products. Either way, Respondent’s website disrupts Complainant’s business. The Panel finds that such use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business).
As Respondent’s <caterpillarturbo.com> and <catturbo.com> domain names
are confusingly similar to Complainant’s marks, Internet users finding
themselves misdirected to Respondent’s website may mistakenly believe that
Complainant sponsors or is affiliated with Respondent in some way. The fact that Respondent sells Complainant’s
products as well as uses Complainant’s marks in its domain names increases the
chance of confusion on the part of Internet users. Presumably, Respondent is profiting from this
confusion through the operation of its commercial website. The Panel finds that this use demonstrates
bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of
the <saflock.com> domain name to offer goods competing with the
complainant’s illustrates the respondent’s bad faith registration and use of
the domain name, evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iv)); see also Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent
[used “HP” in its domain name] to benefit from the goodwill associated with
Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part,
to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated
by commercial gain, constitutes bad faith registration and use pursuant to
Policy ¶ 4(b)(iv).”).
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 <caterpillarturbo.com> and <catturbo.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated:
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