Caterpillar Inc. v. sisi li
Claim Number: FA2209002013219
Complainant is Caterpillar Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia. Respondent is sisi li (“Respondent”), AR.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <catdd.com>, registered with GoDaddy.com, LLC.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on September 23, 2022; Forum received payment on September 23, 2022.
On September 23, 2022, GoDaddy.com, LLC confirmed by e-mail to Forum that the <catdd.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 September 26, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 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@catdd.com. Also on September 26, 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, Forum transmitted to the parties a Notification of Respondent Default.
On October 21, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
i) Complainant Caterpillar Inc. is one of the world’s largest manufacturers of construction and mining equipment, and other industrial machineries. Complainant claims rights in the CAT mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 564,272, registered September 23, 1952). Complainant’s CAT mark is famous as a result of Caterpillar’s extensive and long use and advertising of the mark, and favorable public acceptance and recognition worldwide. The disputed domain name is confusingly similar to Complainant’s CAT mark as it wholly incorporates the mark, and adds the letter “D” in duplicate and the gTLD “.com.”
ii) Respondent lacks rights and 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 CAT mark in the disputed domain name. Respondent does not use the domain name in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use as Respondent is engaged in fraudulent and passing off activities and uses the disputed domain name to directly compete with Complainant by advertising and/or offering rental services for CAT equipment.
iii) Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name for a password-protected website that provides a login form and registration form for users, and falsely identifies Complainant as the owner by prominently displaying Complainant’s CAT logo. Respondent registered the disputed domain name in bad faith with knowledge of Complainant’s prior rights in its CAT mark.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was registered on December 11, 2009.
2. Complainant has established rights in the CAT mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 564,272, registered September 23, 1952).
3. The disputed domain name’s resolving website provides a login form and registration form for users, and falsely identifies Complainant as the owner by prominently displaying Complainant’s CAT Logo.
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 claims rights in the in the CAT mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 564,272, registered September 23, 1952). Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Ecolab USA Inc. v. (name redacted), FA 2003001888902 (Forum Apr. 20, 2020) (“Complainant’s ownership of a USPTO registration for ECOLAB is sufficient to demonstrate its rights in a mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of the trademark registration with the USPTO. Therefore, the Panel finds Complainant has rights in the CAT mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name <catdd.com> is confusingly similar to Complainant’s CAT mark as it wholly incorporates the mark, and adds the letter “D” in duplicate and the gTLD “.com.” The Panel notes that additions of the letter “D” in duplicate and the gTLD “.com” are insufficient to distinguish the disputed domain name from Complainant’s CAT mark. See Caterpillar v. Wee, FA 2206002001265 (Forum July 20, 2022) (“. . . the at-issue domain name contains Complainant’s entire CAT trademark prefixed by ‘mr’ and followed by the number ‘181,’ with all followed by the top-level domain name ‘.com. The differences between <mrcat181.com> and Complainant’s CAT trademark are insufficient to distinguish the domain name from Complainant’s trademark”); see also Google v. Havik FA 0206000114604 (Forum July 18, 2002) (“Respondent’s <google4mp3.com> domain name is confusingly similar to Complainant’s GOOGLE mark because it incorporates Complainant’s entire mark and merely adds the ‘4mp3’ suffix. The addition of a string of numbers and letters to Complainant’s well-known mark does not overcome a claim of confusing similarity.”). Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then 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 lacks rights and 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 CAT mark in the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. 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). The Panel notes that the WHOIS information for the disputed domain name lists the registrant as “sisi li.” Additionally, there is no evidence to suggest that Respondent was authorized to use Complainant’s mark in the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant further contends that Respondent does not use the domain name in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use as Respondent is engaged in fraudulent and passing off activities and uses the disputed domain name to directly compete with Complainant by advertising and/or offering rental services for CAT equipment. Complainant has provided screenshots of the disputed domain name’s resolving website providing a login form and registration form for users, and identifying Complainant as the owner by prominently displaying Complainant’s CAT logo. The Panel finds that the use of the disputed domain name to pass Respondent off as Complainant does not constitute bona fide offering of goods or services, nor any legitimate non-commercial or fair use.
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant and its CAT mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website.
Use of a disputed domain name to pass off as a complainant and offer competing or counterfeit versions of its products may be evidence of bad faith per Policy ¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business), see also Guess? IP Holder L.P. and Guess?, Inc. v. LI FANGLIN, FA 1610067 (Forum Apr. 25, 2015) (finding respondent registered and used the domain name in bad faith per Policy ¶ 4(b)(iii) because the respondent used the resolving website to sell the complainant’s products, using images copied directly from the complainant’s website), see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). The Panel recalls that Complainant has provided screenshots of the disputed domain name’s resolving website providing a login form and registration form for users, and prominently displaying Complainant’s CAT logo. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) or (iv).
Complainant further contends that Respondent registered the disputed domain name in bad faith with knowledge of Complainant’s prior rights in its CAT mark. The Panel infers, due to the notoriety of Complainant’s mark and the manner of use of the disputed domain name that Respondent had knowledge of Complainant’s rights in the CAT mark at the time of its registering the disputed domain name, and finds that Respondent registered the disputed domain name in bad faith under 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 <catdd.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: October 26, 2022
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