Caterpillar Inc. v. Pixeldot / PD Host
Claim Number: FA0711001109764
Complainant is Caterpillar Inc. (“Complainant”), represented by Christopher
P. Foley, of Finnegan Henderson Farabow Garrett &
Dunner L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <caterpillarsparkplugs.com> and <caterpillar-sparkplugs.com>, registered with Tucows, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On November 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 17, 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@caterpillarsparkplugs.com, and postmaster@caterpillar-sparkplugs.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 <caterpillarsparkplugs.com> and <caterpillar-sparkplugs.com> domain names are confusingly similar to Complainant’s CATERPILLAR mark.
2. Respondent does not have any rights or legitimate interests in the <caterpillarsparkplugs.com> and <caterpillar-sparkplugs.com> domain names.
3. Respondent registered and used the <caterpillarsparkplugs.com> and <caterpillar-sparkplugs.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Caterpillar Inc. is a Fortune 100 company and
the world’s largest manufacturer of construction and mining equipment. Complainant is ranked first in this
industry. Complainant registered the
CATERPILLAR mark with the Intellectual Property Office of Singapore (“IPOS”)
(Reg. No. T3903194G issued
Respondent registered the <caterpillar-sparkplugs.com>
domain name
on
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 registered the CATERPILLAR mark with the IPOS
and the USPTO, therefore establishing rights to the mark pursuant to Policy ¶
4(a)(i).
Complainant’s filing of the mark with the IPOS and the USPTO before
Respondent registered the disputed domain names secures Complainant’s rights to
the mark. See Innomed
Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
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.").
The <caterpillarsparkplugs.com> and <caterpillar-sparkplugs.com>
domain names contain Complainant’s
entire CATERPILLAR mark and
merely adds the generic terms “spark” and “plug.” These terms do not lessen the confusion
between the disputed domain names and Complainant’s mark, as they are terms
connected to Complainant’s business.
Also, the addition of a hyphen in one disputed domain name and the
top-level domain (“gTLD”) “.com,” in both is insufficient to differentiate the
disputed domain names. The Panel finds
that the disputed domain names are confusingly similar to the CATERPILLAR mark
under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent has neither rights nor
legitimate interests in the disputed domain names. Complainant has the initial burden of showing
that Respondent lacks rights and legitimate interests in the disputed domain
names. The burden then shifts to
Respondent to show that it has rights or legitimate interests in the disputed
domain names once Complainant has made a prima
facie case. The Panel finds that
Complainant has made a prima facie
case under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires
v. Greenpeace Int’l, D2001-0376 (WIPO
Because Respondent failed to respond to the Complaint, the
Panel assumes that Respondent lacks all rights and legitimate interests in the <caterpillarsparkplugs.com> and <caterpillar-sparkplugs.com>
domain names. See Am. Express Co. v. Fang Suhendro,
FA 129120 (Nat. Arb. Forum Dec. 30,
2002) (“[B]ased on Respondent's failure to respond, it is presumed that
Respondent lacks all rights and legitimate interests in the disputed domain
name.”); see also Talk City, Inc. v. Robertson, D2000-0009
(WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall
draw such inferences’ from the Respondent’s failure to comply with the rules
‘as it considers appropriate.”). Despite Respondent’s failure to respond,
the Panel will examine all evidence in the record to determine if Respondent
has rights or legitimate interests in the disputed domain names under Policy ¶
4(c).
Complainant claims that Respondent has never been authorized
to use the CATERPILLAR mark. Further,
the WHOIS information makes no indication that Respondent is commonly known by
the disputed domain names. Therefore,
the Panel finds that Respondent is not commonly known by the disputed domain
names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
Further, Respondent’s <caterpillarsparkplugs.com> and <caterpillar-sparkplugs.com>
domain names resolve
to websites that display advertisements for industrial products including those
in direct competition with Complainant, and displaying Complainant’s
CATERPILLAR mark. The Panel finds that
such use is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp.
v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding
that the respondent’s use of the disputed domain name to redirect Internet
users to a financial services website, which competed with the complainant, was
not a bona fide offering of goods or services);
see also Computerized Sec.
Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s
appropriation of [Complainant’s] SAFLOK mark to market products that compete
with Complainant’s goods does not constitute a bona fide offering of goods and
services.”).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain names resolve to websites that
offer advertisements that compete with Complainant’s business. The Panel therefore finds that Respondent
registered and is using the disputed domain names in bad faith pursuant to
Policy ¶ 4(b)(iii).
See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Svcs., FA 877982 (Nat. Arb. Forum Feb.
13, 2007) (finding that the respondent registered and used the disputed domain
name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name
resolved to a website that displayed commercial links to the websites of the
complainant’s competitors); see also David Hall Rare Coins v.
Respondent has registered and is using the <caterpillarsparkplugs.com> and <caterpillar-sparkplugs.com>
domain names in bad faith pursuant to Policy ¶ 4(b)(iv) because the disputed
domain names resolve to websites that host advertisements of various third-party commercial
websites, including those in direct competition with Complainant. The Panel finds that Respondent is
benefiting from the likelihood of confusion between Respondent’s domains names
and the CATERPILLAR mark, and that such use creates confusion as to
Complainant’s source, sponsorship, affiliation, or endorsement of the websites
that resolve from the disputed domain names. The Panel finds that this constitutes evidence
of registration and use in bad faith under 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 <caterpillarsparkplugs.com> and <caterpillar-sparkplugs.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 7, 2008
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