Caterpillar Inc. v. Evelen Ortiz
Claim Number: FA1807001795324
Complainant is Caterpillar Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is Evelen Ortiz (“Respondent”), Florida, USA
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cat-us.net>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 5, 2018; the Forum received payment on July 5, 2018.
On July 6, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <cat-us.net> 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 July 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 26, 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@cat-us.net. Also on July 6, 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 July 30, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
Complainant, Caterpillar Inc., is the world’s largest manufacturer of construction and mining equipment, diesel and natural gas engines, industrial gas turbines, and diesel-electric locomotives. Complainant has rights in the CAT mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 778,368, registered Oct. 13, 1964). Respondent’s <cat-us.net> domain name is confusingly similar to Complainant’s mark because Respondent incorporates Complainant’s mark in its entirety in the disputed domain name plus the “US” geographic term, a hyphen, and the “.net” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <cat-us.net> domain name because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s mark. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass off as Complainant in furtherance of a phishing scheme. Furthermore, Respondent is passively holding the disputed domain name.
Respondent registered and uses the <cat-us.net> domain name in bad faith. Respondent’s registration of domain names incorporating third party marks demonstrates a pattern of bad faith. Respondent also disrupts Complainant’s business and attracts, for commercial gain, users to the disputed domain name by passing off as Complainant in furtherance of fraudulent activity. Additionally, Respondent is passively holding the disputed domain name, failing to make an active use of it. Respondent has engaged in a pattern of bad faith registration and had knowledge of Complainant’s rights in the CAT mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Caterpillar Inc., is a worldwide manufacturer of construction and mining equipment, diesel and natural gas engines, industrial gas turbines, and diesel-electric locomotives. Complainant has rights in the CAT mark based upon its registration of the mark with the USPTO (Reg. No. 778,368, registered Oct. 13, 1964). Respondent’s <cat-us.net> domain name is confusingly similar to Complainant’s mark.
Respondent registered the <cat-us.net> domain name on June 19, 2018.
Respondent lacks rights and legitimate interests in the <cat-us.net> domain name.
Respondent registered and uses the <cat-us.net> domain name in bad faith.
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.”).
Complainant has rights in the CAT mark under Policy ¶ 4(a)(i) based upon its registration of the mark with the USPTO. See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Respondent’s <cat-us.net> domain name is confusingly similar to Complainant’s mark because it incorporates Complainant’s entire mark in the disputed domain name plus the “US” geographic term, a hyphen, and the “.net” gTLD.
Respondent lacks rights and legitimate interests in the <cat-us.net> domain name. The WHOIS information identifies the registrant of the disputed domain name as “Evelen Oritz.” Complainant has not authorized Respondent to use the CAT mark. Respondent is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may be used to show that a respondent is not commonly known by a domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from a complainant to use its mark is evidence that a respondent is not commonly known by a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
Respondent fails to use the <cat-us.net> domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Complainant alleges that Respondent uses the disputed domain name to pass off as Complainant in furtherance of a phishing scheme. Use of a domain name to pass of as the complainant in furtherance of a phishing scheme is not be considered a bona fide offering or a legitimate noncommercial fair use under Policy ¶¶ 4(c)(i) and (iii). See DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant provides copies of emails sent by Respondent that show Respondent attempting to impersonate an employee of Complainant in order to solicit internet users financial/personal information.
Furthermore, Respondent is passively holding the disputed domain name. Failure to actively use a disputed domain name is not a use in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use per Policy ¶¶4(c)(i) and (iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Complainant provides screenshots of the webpage associated with the disputed domain name which show an inactive page with the message “This site can’t be reached.”
Accordingly, the Panel finds that Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent registered and uses the <cat-us.net> domain name in bad faith. Specifically, the Complainant alleges that Respondent uses the disputed domain name to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name where Respondent attempts to pass off as Complainant. Use of a domain name to pass off as a complainant via emails may be evidence of bad faith under Policy ¶¶ 4(b)(iii) and/or (iv). See 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)); see also Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). Complainant provides copies of emails sent by Respondent which show Respondent attempting to pass off as an employee of Complainant in order to disrupt Complainant’s business. Accordingly, the Panel finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Respondent had actual knowledge of Complainant’s rights in the CAT mark prior to registration of the <cat-us.net> domain name. Therefore, Respondent registered and uses the domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant alleges that Respondent has engaged in a pattern of bad faith registration. Specifically, Complainant alleges that Respondent has registered multiple domain names which infringe on third-party trademarks. A respondent who has a pattern of bad faith registration may be found to be acting in bad faith under Policy ¶ 4(b)(ii). See Sanlam Life Insurance Limited v. Syed Hussain / Domain Management MIC, FA 1787219 (Forum June 15, 2018) (finding bad faith per Policy ¶ 4(b)(ii) where the complainant provided evidence the respondent owned various domain names infringing on famous third-party marks; and also that the respondent had been ordered to transfer domain names in previous UDRP decisions). Although Complainant provides a list of Respondent’s domain names incorporating third-party trademarks, Complainant has failed to produce evidence of UDRP decisions ordering transfer of the domain names. Therefore, Complainant has failed to show a pattern of bad faith registration under Policy ¶ 4(b)(ii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cat-us.net> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 13, 2018
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