Caterpillar Inc. v. Zhichao Yang
Claim Number: FA2002001882877
Complainant is Caterpillar Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <catfiancial.com>, <catfinanical.com>, and <catfinancail.com>, registered with NameSilo, LLC and Uniregistrar Corp.
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 February 11, 2020; the Forum received payment on February 11, 2020.
On February 12, 2020 and February 13, 2020, NameSilo, LLC; Uniregistrar Corp confirmed by e-mail to the Forum that the <catfiancial.com>, <catfinanical.com>, and <catfinancail.com> domain names are registered with NameSilo, LLC; Uniregistrar Corp and that Respondent is the current registrant of the names. NameSilo, LLC; Uniregistrar Corp has verified that Respondent is bound by the NameSilo, LLC; Uniregistrar Corp 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 February 18, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 9, 2020 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@catfiancial.com, postmaster@catfinanical.com, postmaster@catfinancail.com. Also on February 18, 2020, 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 March 13, 2020, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant manufactures, sells, and distributes a vast array of heavy-industry equipment, parts for such equipment, and related services. Complainant has rights in the CAT mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 778,638, registered Mar. 12, 1963). Respondent’s <catfiancial.com>, <catfinanical.com>, and <catfinancail.com> domain names are confusingly similar to Complainant’s mark as Respondent merely add and misspells the generic word “financial” and the “.com” generic top-level domain (“gTLD”) to Complainant’s mark in each disputed domain name.
Respondents has no rights or legitimate interests in the <catfiancial.com>, <catfinanical.com>, and <catfinancail.com> domain names. Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized to use Complainant’s mark. Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is merely hosting pay-per-click advertisements with the disputed domain names. Furthermore, Respondent is typosquatting.
Respondent registered and used the <catfiancial.com>, <catfinanical.com>, and <catfinancail.com> domain names in bad faith. Specifically, Respondent is attempting to disrupt Complainant’s business and attract Internet users so to gain commercially by offering competing pay-per-click hyperlinks. Furthermore, Respondent has established a pattern of bad faith registrations due to the number of domain names in dispute with this case and adverse UDRP decisions against Respondent in other domain name proceedings. Additionally, Respondent is typosquatting. Finally, Respondent had actual knowledge of Complainant’s rights in the CAT mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant manufactures, sells, and distributes a vast array of heavy-industry equipment, parts for such equipment, and related services. Complainant has rights in the CAT mark through its registration of the mark with the USPTO (e.g., Reg. No. 778,638, registered Mar. 12, 1963). Respondent’s <catfiancial.com>, <catfinanical.com>, and <catfinancail.com> domain names are confusingly similar to Complainant’s mark.
Respondents has no rights or legitimate interests in the <catfiancial.com>, <catfinanical.com>, and <catfinancail.com> domain names. Respondent is merely hosting pay-per-click advertisements with the disputed domain names. Furthermore, Respondent is engaged in typosquatting.
Respondent registered the <catfiancial.com>, <catfinanical.com>, and <catfinancail.com> domain names on August 9, 2018 and October 26, 2018.
Respondent registered and used the <catfiancial.com>, <catfinanical.com>, and <catfinancail.com> domain names 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the CAT mark through registration of the mark with the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <catfiancial.com>, <catfinanical.com>, and <catfinancail.com> domain names are confusingly similar to Complainant’s mark as Respondent merely add and misspells the generic word “financial” and the “.com” gTLD to Complainant’s mark in each disputed domain name.
Respondent has no rights or legitimate interests in the <catfiancial.com>, <catfinanical.com>, and <catfinancail.com> domain names. Respondent has not been licensed or authorized by the Complainant to use Complainant’s mark. The WHOIS of record identifies the Registrant of the domain names as “Zhichao Yang.” Respondent is not commonly known by the disputed domain names. Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (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 to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in 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 <catfiancial.com>, <catfinanical.com>, and <catfinancail.com> domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain names to host competing pay-per-click hyperlinks. Using a disputed domain name to offer hyperlink advertisements that directly compete with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Walgreen Co. v. Privacy protection service - whoisproxy.ru, FA 1785188 (Forum June 10, 2018) (“Respondent uses the <walgreensviagra.net> domain name to pass itself off as Complainant and display links to a website offering products similar to those offered by Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use under Policy ¶ 4(c)(iii).”).
Additionally, Respondent is engaged in typosquatting. See Webster Financial Corporation and Webster Bank, National Assocation v. Pham Dinh Nhut, FA1502001605819 (Forum Apr. 17, 2015) (“Respondent’s acts of typosquatting provide additional evidence that respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii)”).
Respondent has established a pattern of bad faith registrations. Specifically, the number of domain name in dispute with this case and Respondent’s prior involvement in other adverse UDRP decisions shows this pattern. See United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018) (“Complainant contends that Respondent is a serial cybersquatter as evidenced by its registering four separate domain names all incorporating Complainant’s USPS mark. Therefore, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(ii).”).
Respondent registered and used the <catfiancial.com>, <catfinanical.com>, and <catfinancail.com> domain names in bad faith. Specifically, Respondent is attempting to disrupt Complainant’s business and attract Internet users so to gain commercially by offering competing pay-per-click hyperlinks. See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”).
Additionally, Respondent is typosquatting. Capitalizing on Internet users’ mistakes, or typosquatting, shows bad faith under Policy ¶ 4(a)(iii). See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sep. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”).
Finally, Respondent had actual knowledge of Complainant’s rights in the CAT mark at the time of registering the <catfiancial.com>, <catfinanical.com>, and <catfinancail.com> domain names. Therefore, Respondent registered and uses the domain names in bad faith See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014).
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<catfiancial.com>, <catfinanical.com>, and <catfinancail.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 14, 2020
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