Caterpillar Inc. v. Yuliana Palo Apaza / European Corporation Of Engineers Hazes S.A.C.
Claim Number: FA2207002004129
Complainant is Caterpillar Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is Yuliana Palo Apaza / European Corporation Of Engineers Hazes S.A.C. (“Respondent”), Peru.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <caterpillarinstitute.com>, 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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 13, 2022; the Forum received payment on July 13, 2022.
On July 14, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <caterpillarinstitute.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 July 14, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 3, 2022 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@caterpillarinstitute.com. Also on July 14, 2022, 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. Respondent did however send an email to the Forum, see below.
On August 8, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is the world’s largest manufacturer of construction and mining equipment, diesel and natural gas engines, industrial gas turbines, and diesel-electric locomotives. For more than 90 years, Complainant has been making sustainable progress possible and driving positive change on every continent by offering products and services to customers to help them develop infrastructure, energy, and natural resource assets. Complainant principally operates through its three product segments: Construction Industries, Resource Industries, and Energy & Transportation. Complainant also provides financing and related services through its Financial Products segment. Complainant’s commercial success under the CATERPILLAR and CAT marks has been tremendous. Over the years, Complainant has sold many billions worth of products and services under the CATERPILLAR and CAT marks. For example, Complainant had worldwide sales and revenues around U.S. $51,000,000,000 in 2021. Complainant has 160 authorized dealers located in countries around the world including the United States. Together, Complainant’s authorized dealers serve 193 countries. Complainant owns the domain name <caterpillaruniversity.com> which it has used for many years to advertise its educational and training services under its CATERPILLAR and CAT marks and to offer such services to users through their registered accounts. Complainant claims rights in the CATERPILLAR mark through its registration with multiple trademark agencies around the world, including in the United States in 1912. The mark is famous.
Complainant alleges that the disputed domain name is identical or confusingly similar to its CATERPILLAR mark as it incorporates the mark in its entirety and merely adds the descriptive term “institute” as well as the “.com” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its CATERPILLAR mark in any way. Respondent does not use the disputed domain name in connection with any bona fide offering of goods or services, nor for a legitimate non-commercial or fair use. Rather, Respondent uses the disputed domain name to pass off as Complainant to purport to offer competing services and in furtherance of a phishing scheme. Specifically, the resolving website is a fraudulent website that (a) falsely claims to be Complainant’s website or otherwise authorized by Complainant, and (b) advertises directly competing services, namely, training classes for operators of CAT heavy equipment. In addition to Respondent’s unauthorized use of Complainant’s CATERPILLAR mark in the disputed domain name, Respondent’s website falsely identifies Complainant as the owner of the resolving website by using the trade names “Caterpillar Institute” and “Caterpillar International Training Center”, by prominently displaying an altered version of Caterpillar’s federally registered CATERPILLAR logo, and by using an altered version of Caterpillar’s federally registered CAT logo as the website favicon[i] and on its certificates. Respondent’s website copies content from Complainant’s copyright-protected websites. Under the guise of falsely impersonating Complainant, Respondent’s website advertises that its classes will provide students with accreditation and certification, a CAT t-shirt, and a CAT manual for fees ranging from $1,500 to $15,000. Respondent, however, is not and has never been authorized by Complainant to use its marks or website content or to offer its training classes, its CAT apparel, or its manuals that are both copyright-protected and published under Complainant’s CATERPILLAR and CAT logos. As a result of Respondent’s egregious, unauthorized uses of Complainant’s intellectual property, Respondent’s website gives the false and highly misleading impression that it is Complainant’s website or otherwise authorized or affiliated with Complainant. Moreover, Respondent’s website constitutes a form of phishing because it may mislead users into providing personal and confidential information to Respondent under the mistaken impression that Complainant owns or authorizes its website, and because it provides a login facility for user accounts which may mislead users into mistakenly entering their <caterpillaruniversity.com> and/or <cat.com> login credentials on Respondent’s website. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. First, Respondent uses the confusingly similar nature of the disputed domain name in order to impersonate Complainant and attract users in bad faith. Additionally, Respondent uses the disputed domain name to disrupt Complainant’s business by purporting to offer competing services. Moreover, Respondent uses the disputed domain name to pass itself off as Complainant while conducting a phishing scheme. Finally, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the CATERPILLAR mark. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding. In its email to the Forum, Respondent states, in pertinent part:
Caterpillar-Institute is a company legally constituted in the Peruvian state with Ruc number: 20608757270 with fiscal address at Av. Ejército 506-A in the city of Arequipa.
Our job is to train future operators of heavy machinery in the equipment of the caterpillar line, being our only objective.
Within our functions we do not sell, market or rent any type of heavy machinery since these services are not found within the constitution of our company.
We seek to provide a solution to this administrative process according to the conditions that you see as pertinent.
We can delete the domain and change it for another, we have no problems with it.
All we seek is to solve this problem in good faith.
For the reasons set forth below, the Panel will not make any findings of fact.
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.
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."
The Panel interprets Respondent’s email to the Forum as consent to transfer the disputed domain name. Thus, in the present case, the parties have both asked for the domain name to be transferred to the Complainant. In accordance with a general legal principle governing arbitrations as well as national court proceedings, this Panel holds that it cannot act nec ultra petita nec infra petita, that is, that it cannot issue a decision that would be either less than requested, nor more than requested by the parties. Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.
See Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004); see also Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Disney Enters., Inc. v. Morales, FA 475191 (Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
For the reasons set forth above, the Panel will not analyze this element of the Policy.
For the reasons set forth above, the Panel will not analyze this element of the Policy.
For the reasons set forth above, the Panel will not analyze this element of the Policy.
Given the common request of the Parties, it is Ordered that the <caterpillarinstitute.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: August 8, 2022
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