The Complainant is Caterpillar Inc., Peoria, IL, USA ("Complainant") represented by Gene Bolmarcich. The Respondent is Neal McKean Machineworks, Inc., Teterboro, NJ, USA ("Respondent").

The domain names at issue are <used-caterpillars.com>, <used-caterpillar.com>, <usedcaterpillars.com>, and <caterpillarsused.com>, registered with BulkRegister.com.

The remaining domain names at issue are <b2bcaterpillars.com> and <used-cats.com>, registered with Network Solutions.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no conflict in serving as Panelist in this proceeding.

Panelist is Judge Karl V. Fink (Retired).

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on May 21, 2001; the Forum received a hard copy of the Complaint on May 25, 2001.

On June 04, 2001, BulkRegister.com confirmed by e-mail to the Forum that the domain names <used-caterpillars.com>, <used-caterpillar.com>, <usedcaterpillars.com>, and <caterpillarsused.com> are registered with BulkRegister.com, and Network Solutions confirmed by e-mail to the Forum that the domain names <b2bcaterpillars.com> and <used-cats.com> are registered with Network Solutions and that the Respondent is the current registrant of the names. Network Solutions and BulkRegister.com have verified that Respondent is bound by the Network Solutions 5.0 and BulkRegister.com registration agreements 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 June 4, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 25, 2001 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@usedcaterpillars.com, postmaster@caterpillarsused.com, postmaster@b2bcaterpillars.com, postmaster@used-caterpillars.com, postmaster@used-caterpillar.com, and postmaster@used-cats.com by e-mail.

On June 25, 2000, Complainant agreed to an extension granting Respondent a deadline of July 9, 2001 by which Respondent could file a Response. A timely Response was received and determined to be complete on July 9, 2001. Complainant timely filed an additional submission. All submissions from the parties have been considered by the Panel.

On July 23, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Karl V. Fink (Retired) as Panelist.

Complainant requests that the domain names be transferred from Respondent to Complainant.

A. Complainant

Caterpillar is the owner of the famous and federally registered trademarks and service marks CATERPILLAR and CAT. Caterpillar also owns the domain names Caterpillar.com, Cat.com, Catused.com, Usedcat.com, Usedcat.net, Usedcatequipment.com, Usedcatequipment.net, usedcaterpillarparts.com, Usedcatmachines.com, Usedcatmachines.net and Usedcatparts.net. "Caterpillar" and "Cat" are arbitrary terms as applied to Caterpillar’s goods and services.

Caterpillar, which is also known and referred to as "CAT", is a Fortune 100 company and is the world’s largest manufacturer of construction and mining equipment, diesel and natural gas engines, and industrial gas turbines. Caterpillar manufactures, sells, and distributes a wide assortment of heavy-industry equipment.

A sizable part of Caterpillar’s business involves the rental, lease, and sale of used CATERPILLAR and CAT equipment. As part of its used CATERPILLAR and CAT equipment business, Caterpillar operates a website under the service mark and domain name Catused.com.

To ensure the integrity and safety of its used equipment, Caterpillar trains its authorized dealers as equipment inspectors, who certify used CATERPILLAR and CAT equipment as "CAT Dealer Qualified." Caterpillar’s used equipment certification program involves detailed and rigorous inspections.

Caterpillar has entered into trademark license agreements with all of its dealers. These license agreements allow the dealers to use CAT, CATERPILLAR, and associated logos and designs for advertising and promoting Caterpillar products, and as service marks to designate services performed in connection with Caterpillar products.

Respondent is not and has never been an authorized Caterpillar dealer, Nor has Respondent ever been licensed or permitted to use any of Caterpillar’s trademarks.

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 over 150 countries around the world.

Caterpillar has continuously used CAT as a trade name, trademark, and service mark since 1949, and owns registrations for the CAT mark in over 150 countries worldwide.

Caterpillar also owns the domain names CATERPILLAR.COM and CAT.COM, which it has used for its website to, among other things, promote its CATERPILLAR and CAT branded products and services since April 17, 1996. Caterpillar also owns the domain names CATUSED.COM and USEDCAT.COM to, among other things, promote its used CATERPILLAR and CAT branded products and services.

The disputed domain names are confusingly similar to the CAT and CATERPILLAR marks because the domain names incorporate in their entirety the marks CAT, CATERPILLAR and/or their plural versions.

Respondent is not using the domain names in connection with a bona fide offering of goods or services.

Respondent’s website that allows customers to search for Caterpillar equipment among many other brands of equipment does not constitute a "bona fide" offering of goods or services for purposes of the Policy.

Respondent used the domain names for a website that allows users to search for various makes of equipment of all types. Each of the domain names direct users to the same website, referred to by Respondent as "UsedCaterpillars.com".

Respondent’s use of the domain names does not constitute fair use and is not a legitimate noncommercial use. The fact that consumers may be able to purchase Caterpillar equipment through Respondent’s website does not entitle Respondent to use the CAT and CATERPILLAR marks within domain names. Because domain names act as signs, rather than a description of the products consumers can buy on Respondent’s website, Respondent cannot claim fair use.

Even assuming for purposes of argument, Respondent was only selling used CATERPILLAR and CAT equipment at its website, it has no right to register or use CATERPILLAR and CAT formative domain names.

Since Respondent is not merely selling used Caterpillar equipment under the domain names, any argument made by Respondent that its use is a fair use should fail.

Respondent misappropriated Caterpillar’s goodwill when it registered the domain names. No question exists that Respondent had actual knowledge of the CATERPILLAR and CAT marks when it registered the domain names.

Upon learning of Respondent’s domain names Complainant sent Respondent a cease-and-desist letter demanding that respondent immediately discontinue its unauthorized use of Caterpillar’s names and marks.

Respondent’s registration and use of the domain names meet the bad faith element set forth in Section 4(b)(ii) of the UDRP because Respondent engaged in a pattern of registering trademark-related domain names. Respondent registered SIX domain names comprised of Caterpillar’s marks (the domain names).

Respondent uses the domain names for commercial gain to intentionally attract and/or divert Internet users to Respondent’s website by replicating Caterpillar’s famous, federally registered CATERPILLAR and CAT marks and creating a likelihood of confusion as to the source, sponsorship, affiliation and endorsement of Respondent’s website and the goods and services offered at that site.

Respondent’s use of a small disclaimer on its website (at the very bottom of its home page) does not eliminate its bad faith.

Given the fame of the CATERPILLAR and CAT marks, and for the reasons detailed in this Complaint, there is no plausible explanation for Respondent’s registration and use of the six domain names other than to trade on the goodwill of Caterpillar and its famous and well-respected CATERPILLAR and CAT marks and names.

B. Respondent

This case is virtually identical to Giddings & Lewis, LLC v. McKean, D2000-1150 (WIPO Mar. 14, 2001). The Forum decision should be in accord with the WIPO decision as it is essentially the same case.

Machineworks, Inc., imachinetools.com, UsedCaterpillars.com and through certain predecessor entities thereof, are and have been engaged in the bona fide and legitimate sales of used Heavy Equipment and other types of Machinery and Tools for over 52 years.

In 1948, just after World War II, Neal McKean’s father, Stanton, began working in the used and New Heavy Equipment and Machine Tool Business.

Beginning in 1978, Neal McKean, after graduating from college, joined the family business with his father until his father’s death in 1984. Thereafter he formed Machineworks, Inc., imachinetools.com, Inc. Used Heavy Equipment.com, LLC and Used Caperpillars.com, LLC all relating to the sale of or brokering of Used Heavy Equipment and Tools.

A sophisticated, customer made software called Dealer Solution 2000 and comprehensive yet user-friendly Internet portals that Respondent has created to manage the trade of Used Equipment together with the use of highly descriptive domain names enabling buyers and sellers of Used Equipment to quickly and easily find precisely what they are looking for demonstrates Respondent’s "good faith" and "legitimate use" of the subject domain names. Respondent’s legitimate and longstanding business of selling Used Equipment, Respondent’s acquisition of domain names inclusive of a manufacturer’s name but prefaced or followed by the descriptive work "used", neither violates ICANN’s Policy nor any of the Complainant’s alleged legal rights.

Respondent submits that five of the disputed domain names (other than B2BCATERPILLARS.COM) are not "identical or confusingly similar" to the Caterpillar mark. Respondent does not dispute that B2BCATERPILLARS.COM is similar to Complainant’s Caterpillar trademarks, and due to lack of "used" preceding or following "CATERPILLAR" in the name, has offered to transfer B2BCATERPILLARS.COM to Complainant. Each of the Used Caterpillar domains includes the word "used", which indicates to consumers that the domain name is descriptive, not source signifying.

Respondent submits that the use of the terms "used" in the UsedCaterpillar domain is, "purely nominative" and that each such domain name is descriptive of Respondent’s business and unlikely to cause confusion with Complainant’s business.

Since Complainant "must prove" that Respondent has "no rights or legitimate interest" in the disputed domain names, showing use in connection with a bona fide offering of goods and services ends the instant dispute and requires dismissal of the Complaint.

Neal McKean conceived of creating a web business platform for his used equipment business in July 1998. He developed the idea of using sophisticated software to allow used equipment buyers and sellers, on a worldwide basis, to buy, sell, and trade used equipment.

All of the USEDCATERPILLAR.COM sites were and are intended to be fully functional and completely linked to our complicated database. As of a few months ago, all of the bugs and integration problems were resolved.

Paragraph 4(c)(i) of the Policy requires only preparations to use a name corresponding to the disputed domain names, There is no evidence that the policy was meant to bar legitimate users from having more than one domain name pointing to their site, and indeed the cases under the Policy have often upheld the use of multiple names pointing to one site.

Given Respondent’s demonstrable and original preparations – including an investment of over $60,000 to create a major presence on the World Wide Web, together with Respondent’s corresponding purchase of numerous related domain names in order to solidify that presence, Respondent has amply demonstrated its pre-arbitration and bona fide use of the USEDCATERPILLARS.COM domain as well as its well documented preparations to use the other related USEDCATERPILLAR domains.

Respondent has not registered the disputed domain names in order to prevent Complainant from reflecting its mark in a corresponding domain name, nor is there a pattern of such conduct.

Complainant owns many CATERPILLAR.COM domains and is well represented by those and offers no evidence that it is being precluded from using any name it had a bona fide intention of using before USEDCATERPILLARS.COM acquired the domains in question.

Respondent has agreed to transfer the B2BCATERPILLARS.COM domain name to the Complainant. Complainant is well represented by the foregoing domain names and offers no evidence that it is being precluded from using any name it had a bona fide intention of using.

Respondent admits to registering many domain names for use in connection with the sale of used Equipment manufactured by many different companies. None of these domain names were registered in order to prevent the companies from using them, but rather to allow respondent to use them. Respondent never sought to sell any of the domain names, and has not received any complainant from any companies other than the Complainant or the WIPO case (D2000-1150) which Respondent won.

Respondent did not register the disputed domain names primarily for the purpose of disrupting Complainant’s business. Paragraph 4(b)(iii).

Respondent has created an advanced web platform that brings Respondent’s used equipment re-sale business into the 21^st century. This type of investment was not made to disrupt Complainant’s business. It was made to continue to grow Respondent’s own legitimate business.

Respondent’s website accessible by USEDCATERPILLARS.COM, etc makes it immediately clear to visitors that it is not the website of Complainant, but it is the website of a reseller of used Caterpillars.

In a good faith attempt to assuage Complainant’s expressed concerns, Respondent recently copied this disclaimer to the top of the home page as well, and has also included a link to Complainant’s home page at both the top and bottom of the home page stating: "Go to CATERPILLAR.COM".

C. Additional Submissions

On June 22, Complainant received by fax, a letter from Respondent dated June 22, 2001.

From the aforesaid letter it is clear that Respondent uses the name "UsedCaterpillars.com" as his business name and as an e-mail address. Such use of Complainant’s name is further evidence of Respondent’s bad faith intent to attract Internet users to its website for commercial gain using the domain names at issue.

Respondent does not use Complainant’s CATERPILLAR and CAT trademarks merely to identify Complainant’s goods. Respondent uses Complainant’s trademarks within domain names and both the assumed name and website for his business. Respondent has no right to misappropriate Complainant’s trademarks as his domain name, business name, and/or website name merely because he operated a website related to used Caterpillar equipment.

Respondent has agreed to the transfer of b2bcaterpillars.com. For the reasons stated herein, Complainant has not met its burden of proof as to the other domain names.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

The Panel finds that the addition of the word "used" to the CATERPILLAR marks distinguishes the domain names and thus the domain names are not confusingly similar. See Thomas Cook Holdings Ltd. v. Aydin, D2000-0676 (WIPO Sept. 11, 2000) (finding that the domain name, <hot18to30.com>, is neither identical nor confusingly similar to the Respondent's trademark "Club 18-30").

The domain names are merely descriptive of Respondent’s business (selling used Caterpillar equipment) and thus not confusingly similar. See The Kittinger Co. v. Kittinger Collector, AF-0107 (eResolution May 8, 2000) (finding that <kittingercollector.com> is not identical or confusingly similar to a trademark of the Complainant because the use of Complainant's trademark in this domain is purely nominative, the domain name as a whole is descriptive of the Respondent's business, and the domain name is unlikely to cause confusion with Complainant's business).

Complainant has not proven this element.

The Panel finds that Respondent is making a fair use of the domain names, as described in Policy ¶ 4(c)(iii), and has rights in those names. See Realmark Cape Harbour L.L.C. v. Lewis, D2000-1435 (WIPO Dec. 11, 2000) (finding that the Respondent was using the domain name in connection with a bona fide offering of goods and services where Respondent was not holding itself out as Complainant given its disclaimer on the website).

Complainant has not proven this element.

Respondent’s website and domain names do not cause confusion with Complainant’s marks and business, given Respondent’s disclaimer and links to Complainant’s official websites that are present on Respondent’s website. See Al-Anon Family Group Headquarters Inc. v. Reid, D2000-0232 (WIPO June 5, 2000) (refusing to find bad faith where Respondent conspicuously informs viewers that his site is not affiliated with Complainant and alternatively finding that such a disclaimer is evidence of good faith on the part of Respondent which precludes any determination that Respondent intentionally attempted to attract Internet users to his website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website); See Caterpillar Inc. v Off Road Equip., FA 95497 (Nat. Arb. Forum Oct. 10, 2000) (finding no bad faith where Respondent, using the domain name to sell new and used Caterpillar parts through the domain name <catparts.com>, placed a disclaimer on the website indicating no relationship with Complainant’s business).

The panel directs that the domain name <b2bcaterpillars.com> by agreement be transferred to Complainant. Complainant’s request to transfer the remaining domain names in question, <used-caterpillars.com>, <used-caterpillar.com>, <used caterpillars.com>, <caterpillarsused.com> and <used-cats.com> is denied.