Caterpillar Inc. v. james cater
Claim Number: FA1801001767709
Complainant is Caterpillar Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is james cater (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <caterpillarcorpusa.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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 Forum electronically on January 19, 2018; the Forum received payment on January 19, 2018.
On Jan 20, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <caterpillarcorpusa.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 23, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 12, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@caterpillarcorpusa.com. Also on January 23, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 13, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
1. Respondent’s <caterpillarcorpusa.com> domain name is confusingly similar to Complainant’s CATERPILLAR mark.
2. Respondent does not have any rights or legitimate interests in the <caterpillarcorpusa.com> domain name.
3. Respondent registered and uses the <caterpillarcorpusa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has continuously used CATERPILLAR as a trademark and service mark since 1904, and owns registrations for the mark and variations thereof in more than 150 countries around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 85,816 registered Mar. 19, 1912).
Respondent registered the <caterpillarcorpusa.com> domain name September 7, 2018, and uses it to pass itself off as Complainant,
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."
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.
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(f), 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 (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.”).
The Panel finds that Complainant has rights in the CATERPILLAR mark through its registration with the USPTO. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i)).
Respondent’s <caterpillarcorpusa.com> domain name incorporates the CATERPILLAR mark, and adds the generic terms “corp” and “usa,” and the gTLD “.com.” These changes do not distinguish a disputed domain name from a registered mark per Policy ¶ 4(a)(i). See Disney Enters. Inc. v. McSherry, FA 154589 (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); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Thus, the Panel finds that Respondent’s <caterpillarcorpusa.com> domain name is confusingly similar to Complainant’s CATERPILLAR mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent has no rights or legitimate interests in the <caterpillarcorpusa.com> domain name and is not commonly known by the domain name. Complainant has not authorized Respondent to use the CATERPILLAR mark. The WHOIS information of record lists “Ogalagu Samuel / Rise Media Works” as the registrantof the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Complainant asserts that Respondent’s use of the <caterpillarcorpusa.com> domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant provides evidence that Respondent has sent emails from an @caterpillarcorpusa.com address and impersonated an employee of Complainant for the purpose of attempting to fraudulently obtain products from a vendor of Complainant. Therefore, the Panel finds that Respondent does not use the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See BMW v. Gipol Kaip (WIPO D2016-0906) (holding respondent’s use of the disputed domain name <bmw---deutschland.info> for email in connection with fraudulent transactions and to pose as an employee of the complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant also contends that Respondent’s attempt to pass itself off as Complainant is further evidence that Respondent lacks rights and legitimate interests per Policy ¶ 4(a)(ii). The Panel agrees and finds that this further establishes a lack of rights and legitimate interests per Policy ¶ 4(a)(ii). See Better Existence with HIV v. AAA, FA 1363660 (Forum Jan. 25, 2011) (finding that “even though the disputed domain name still resolves to Complainant’s own website, Respondent’s registration of the disputed domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶ 4(a)(ii)”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant asserts Respondent registered and uses the <caterpillarcorpusa.com> domain name in bad faith by using it to send fraudulent emails. Using a disputed domain name to send fraudulent emails can demonstrate bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Smiths Group plc v. Snooks, FA 1372112 (Forum Mar. 18, 2011) (finding that the respondent’s attempt to impersonate an employee of the complainant was evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use per Policy ¶ 4(b)(iv)). Accordingly, the Panel finds that Respondent registered and used the disputed domain name in bad faith under both Policy ¶ 4(b)(iii) and (iv).
Complainant argues that Respondent uses the domain name to intentionally attract, for commercial gain, internet users to Respondent’s competing website by creating a likelihood of confusion as to the source, sponsorship, affiliation, and/or endorsement of the website. The Panel agrees and finds that Respondent’s attempt to pass off as Complainant creates a likelihood of confusion for commercial gain, in bad faith under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant asserts that Respondent had actual knowledge of Complainant’s rights to the CATERPILLAR mark due to Respondent’s use of the disputed domain name to pass itself off as Complainant, and to the fame of the mark. The Panel agrees and finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Travelers v. Clarion (NAF FA1612001706855) (“Complainant also contends that in light of the fame and notoriety of Complainant’s TRAVELERS mark and Respondent’s use of the <traveilers.com> domain name to pass itself off as an employee of a company affiliated with Complainant, it is inconceivable that Respondent could have registered the <traveilers.com> domain name without actual knowledge of Complainant’s rights in the mark. The Panel agrees that most certainly Respondent had actual knowledge of Complainant’s rights in the mark prior to registering the <traveilers.com> domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii).”).
The Panel finds that 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 <caterpillarcorpusa.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 14, 2018
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