Caterpillar, Inc. v. Ivenue.com, Inc.
Claim Number: FA0106000097379
PARTIES
The Complainant is Caterpillar, Inc., Peoria, IL, USA (“Complainant”) represented by Mark S. Sommers, of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P. The Respondent is Ivenue.com, Inc., Whittier, CA, USA (“Respondent”) represented by Curits L. Purinton.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is "caterpillartechs.com", registered with AWRegistry.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge and has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. as Panelist.
PROCEDURAL HISTORY
The Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on June 6, 2001; the Forum received a hard copy of the Complaint on June 7, 2001.
On June 13, 2001, AWRegistry confirmed by e-mail to the Forum that the domain name "caterpillartechs.com" is registered with AWRegistry and that the Respondent is the current registrant of the name. AWRegistry has verified that the Respondent is bound by the AWRegistry 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 June 14, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 5, 2001 by which the Respondent could file a Response to the Complaint, was transmitted to the Respondent via e-mail, post and fax, to all entities and persons listed on the Respondent’s registration as technical, administrative and billing contacts, and to postmaster@caterpillartechs.com by e-mail.
A timely response was received and determined to be complete on July 2, 2001.
On July 5, 2001, pursuant to the Complainant’s
request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable
Charles K. McCotter, Jr. as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. The Complainant
The disputed domain name CATERPILLARTECHS.COM fully incorporates Caterpillar’s valuable and famous federally registered trademark CATERPILLAR within the second‑level domain name under the top-level .COM, and is confusingly similar to Caterpillar’s CATERPILLAR mark and trade name.
The
Respondent does not have rights or a legitimate interest in the domain name,
and the Respondent’s registration and use of the domain name is unauthorized by
the Complainant.
The
Respondent’s registration and use of the domain name meet the bad-faith
requirement under Paragraph 4(a) of the Policy.
B. The Respondent
The Respondent states that it is a web
development and hosting company, and that it registered the domain name for its
client, resourcetechs. The Respondent
therefore claims that it is not the party-of-interest in the proceeding.
FINDINGS
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, with more than 26 billion dollars in assets.
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. As the industry leader, Caterpillar is constantly innovating and growing. Over the last five years alone, it has introduced 296 new or improved products, and has received almost 2,300 patents. Caterpillar’s innovative combustion and emission-control technology make its diesel engines among the cleanest, most fuel-efficient sources of power available in their size class.
4. Caterpillar maintains and operates over 120 manufacturing facilities, 67 distribution centers, and 220 authorized dealers in North and South America, Europe, Asia, Africa, and Australia.
5. As part of its continuing commitment to superior customer service, Caterpillar operates a call center where customers can contact expert technicians 24 hours a day, seven days a week. Using the natural and expected abbreviation for the term “technicians,” Caterpillar refers to its call center technicians as “Call Center Techs.” Caterpillar’s Call Center Techs assist customers by providing information such as warranty coverage, dealer locations, factory passwords, parts availability, and roadside assistance. The Call Center Techs also provide information on basic technical troubleshooting.
6. Caterpillar also offers formal programs to train technicians. Through its truck engine division, Caterpillar has trained more than 15,000 technicians in the past five years. Caterpillar’s training program includes first-hand training by certified instructors, interactive “electronic classrooms,” satellite broadcasts, and educational CD-ROM programs. In addition, Caterpillar holds its annual TEC Masters competition to award the top service technicians.
7. Caterpillar also offers Caterpillar Equipment Training (“CET”), a customer operator training program run through its Marketing Resource Division. The CET programs are designed to assist Caterpillar’s customers in achieving maximum efficiency and the greatest return on their equipment investment by improving productivity, decreasing downtime, reducing operating cost, and enhancing safety.
8. Caterpillar also offers on its website employment information and services to place technicians in positions both with Caterpillar and with Caterpillar dealers. Caterpillar’s website allows users to contact authorized dealers and provide the dealers with, among other things, the user’s background information.
9. 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 boots and clothing products, is immense.
10. Caterpillar has entered into trademark license agreements with all of its dealers. These license agreements allow the dealers to use the CATERPILLAR trademark and associated logos and designs for advertising and promoting CATERPILLAR products, and as service marks to designate services performed in connection with CATERPILLAR products. Only CATERPILLAR dealers are authorized to use these marks in connection with the sale, rental, and service of new and used equipment and parts.
11. The Respondent is not and has never been authorized, licensed, or otherwise permitted to use the CATERPILLAR trademark.
12. 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.
13. Caterpillar owns 30 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, issued March 19, 1912, covering goods in International Class 7 (engines and machinery).
b. Registration No. 85,748, first used 1910, issued March 12, 1912, covering goods in International Class 4 (lubricants).
c. Registration No. 345,499, first used September 1904, issued April 27, 1937, covering goods in International Classes 7 (machinery) and 12 (vehicles).
d. Registration No. 1,911,472, first used June, 1988, issued August 15, 1995, covering goods in International Class 25 (footwear).
14. Caterpillar also owns the domain name CATERPILLAR.COM, which it has used for its website to, among other things, promote its CATERPILLAR-branded products and services since April 17, 1996.
15. 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 the Respondent’s registration of the domain name CATERPILLARTECHS.COM on August 17, 2000.
16. Having been used by Caterpillar in connection with its products and services, and having been widely promoted and advertised, the mark CATERPILLAR has become property of incalculable value. Further, the mark CATERPILLAR enjoys unquestionable fame as a result of extensive and long use and advertising, and favorable public acceptance and recognition worldwide.
17. The Respondent misappropriated Caterpillar’s goodwill when it registered the domain name CATERPILLARTECHS.COM, which is comprised of Caterpillar’s CATERPILLAR mark and the descriptive word “techs”—a natural abbreviation of “technicians.”
18. The Respondent uses the domain name CATERPILLARTECHS.COM for a website that recruits employees for positions in the trucking and construction fields, such as “Preventive Maintenance Technicians, Journeymen Techs, Field Service tech (sic), Shift Supervisors, Service Managers, etc.” In addition, the Respondent uses the Complainant’s CATERPILLAR mark as a metatag to drive Internet traffic to its website.
19. In addition, the Respondent operates another version of its website using the domain name PETERBILTTECHS.COM, which takes the name and trademark of PETERBILT—a well-known truck manufacturer.
20. The Respondent is using the domain name CATERPILLARTECHS.COM to drive Internet traffic to its website.
21. The Respondent’s CATERPILLARTECHS.COM website is commercial in nature, as it seeks to place Internet users into employment positions with “some of the largest dealerships in the nation.”
22. The Respondent’s registration and use of the CATERPILLARTECHS.COM domain name is likely to cause confusion and to deceive consumers into mistakenly believing that the Respondent’s website and associated services are offered, authorized, or sponsored by Caterpillar; or are otherwise connected, associated, or affiliated with Caterpillar. Given Caterpillar’s various technician-oriented services, some of which are offered through the “Call Center Techs” customer service, the Respondent’s use of the CATERPILLAR mark is likely to deceive Internet users into mistakenly believing that the CATERPILLARTECHS.COM website is an authorized site or, at the very least, approved or sponsored by Caterpillar. Confusion is particularly likely because Caterpillar itself offers employment and recruiting services on its CATERPILLAR.COM website.
23. Even if some consumers realize they have not reached an authorized Caterpillar website after being diverted to the Respondent’s site, they may nevertheless choose the Respondent’s services (initial interest confusion).
24. Given the fame of the CATERPILLAR mark, and the manner in which the domain name is being used, no question exists that the Respondent had actual knowledge of the CATERPILLAR mark when it registered the domain name.
DISCUSSION
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.
In this case,
the Respondent does not specifically address the allegations raised in the
Complaint. Instead, the Respondent
submits that it is not the appropriate party in interest because the Respondent
is merely the web hosting and development company for the contested domain
name. The Respondent registered the
domain name on behalf of its client, Resourcetechs.
However, the
Rules for Uniform Domain Name Dispute Resolution Policy clearly state that the
respondent in a UDRP proceeding is the holder of the domain name
registration. Ivenue.com is the
registrant of the domain name, and is properly identified as the
Respondent. See Caterpillar Inv. v. Ivenue.com, Inc. FA 97079 (Nat. Arb. Forum June
6, 2001). See also Telecom Personal, S.A. v. Namezero.com, Inc. D2001-0015 (WIPO March
29, 2001) (finding respondent as the registrant at another party’s request).
The Complainant owns several U.S. trademark registrations for the CATERPILLAR mark. The infringing domain name is confusingly similar to the CATERPILLAR marks because the domain name incorporates the CATERPILLAR mark in its entirety. The addition of the term “techs” (an abbreviation of the word technicians) does not form a distinctive mark. See Caterpillar, Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the domain names <caterpillarparts.com> and <caterpillarspares.com> are confusingly similar to the CATERPILLAR mark).
The Respondent has no rights or legitimate interests in the domain name because:
The Respondent’s registration and use of the domain name also meet the bad-faith element set forth in Section 4(b)(iv) of the Policy. The Respondent uses the domain name to attract and/or divert Internet users for commercial gain to the Respondent’s website by using Caterpillar’s famous, federally registered CATERPILLAR mark and engendering a likelihood of confusion as to the source, sponsorship, affiliation and endorsement of the Respondent’s website and the services offered at that site. See Caterpillar Inc. v. Fadness, FA 95015 (Nat. Arb. Forum June 27, 2000) (finding bad faith in respondent’s registration of the domain names CATERPILLARAUCTIONS.COM, CATERPILLARAUCTION.COM, CATERPILLARMACHINERY.COM, CATERPILLARHEAVYEQUIP.COM, and CATERPILLARTRACTOR.COM and use of those names to divert Internet users to respondent’s auction site for commercial gain); Caterpillar Inc. v. Quin, supra. (finding bad faith in respondent’s registration of the domain names CATERPILLARPARTS.COM and CATERPILLARSPARES.COM and use of those names to divert Internet users to respondent’s website for commercial gain); The Channel Tunnel Group Ltd. v. Powell, D2000-0038 (WIPO Mar. 17, 2000) (finding bad faith where respondent registered domain name with knowledge of complainant's mark and used website to seek commercial gain).
The Respondent, upon registering the domain name for its client, knew or should have known of the Complainant’s established marks. See Gallerina v. Mark Wilmhurst, supra. D2000-0730 (WIPO Aug. 16, 2000) (finding bad faith where the Respondent, an Internet service provider, and the website client must have known that the domain name would probably create further confusion); Dollar Financial Group, Inc. v. Advanced Legal Systems, Inc., FA 95102 (Nat. Arb. Forum Aug. 14, 2000) (finding bad faith where Respondent, a company that registers domain names and designs websites, knew or should have known of Complainant’s mark when Respondent registered the domain name).
Moreover,
Caterpillar’s rights are not unknown to the Respondent. This is not the first time that the
Respondent has registered and used the Complainant’s mark in bad faith, it
having previously registered the domain name CATERPILLARPARTS.ORG. “The registration of several names
corresponding to Complainant’s trademarks is sufficient to constitute a pattern
of such conduct, and thus to constitute bad faith with the meaning of paragraph
4(b)(ii) of the Policy.” General Electric Company v. Normina Anstalt
a/k/a Igor Fyodorov, D2000-0452 (WIPO July 10, 2000). See also Yahoo! Inc. v. Syrynx, Inc. D2000-1675 (WIPO Jan. 30, 2001)
(finding bad-faith pattern in respondent’s registration of two domain names
incorporating complainant’s mark).
DECISION
Based upon the above findings and conclusions, I find in favor of the Complainant. Therefore, the relief requested by the Complainant pursuant to Paragraph 4.(i) of the Policy is Granted. The Respondent shall be required to transfer to the Complainant the domain name "caterpillartechs.com."
Charles K. McCotter, Jr., Panelist
Dated: July 18, 2001
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