Caterpillar Inc. v. Client Care / Web Commerce Communications Limited / Kristin Fischer / Nadine Zimmerman / Yvonne FAUST / marcel baier
Claim Number: FA2210002015314
Complainant is Caterpillar Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is Client Care / Web Commerce Communications Limited / Kristin Fischer / Nadine Zimmerman / Yvonne FAUST / marcel baier (“Respondent”), MY.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <caterpillarnz.com>, <caterpillar-nz.com>, <catboots-nz.com>, <catfootwearnz.com>, <catsafetyshoesnz.com>, <catshoesnz.com>, <caterpillarbootnz.com>, <caterpillarbootsnz.com>, <catfootwearnzsale.com>, and <caterpillar-australia.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; NameSilo, LLC; NETIM SARL; Web Commerce Communications Limited dba WebNic.cc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to Forum electronically on October 10, 2022; Forum received payment on October 10, 2022.
On October 10, 2022; Oct 11, 2022, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; NameSilo, LLC; NETIM SARL;; Web Commerce Communications Limited dba WebNic.cc confirmed by e-mail message addressed to Forum that the domain names <caterpillarnz.com>, <caterpillar-nz.com>, <catboots-nz.com>, <catfootwearnz.com>, <catsafetyshoesnz.com>, <catshoesnz.com>, <caterpillarbootnz.com>, <caterpillarbootsnz.com>, <catfootwearnzsale.com>, and <caterpillar-australia.com> are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; NameSilo, LLC; NETIM SARL; Web Commerce Communications Limited dba WebNic.cc and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; NameSilo, LLC; NETIM SARL; Web Commerce Communications Limited dba WebNic.cc has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; NameSilo, LLC; NETIM SARL; Web Commerce Communications Limited dba WebNic.cc 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 October 14, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 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 the attention of each of the following: postmaster@caterpillarnz.com, postmaster@caterpillar-nz.com, postmaster@catboots-nz.com, postmaster@catfootwearnz.com, postmaster@catsafetyshoesnz.com, postmaster@catshoesnz.com, postmaster@caterpillarbootnz.com, postmaster@caterpillarbootsnz.com, postmaster@catfootwearnzsale.com, and postmaster@caterpillar-australia.com. Also on October 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, Forum transmitted to the parties a Notification of Respondent Default.
On November 9, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant is the world’s largest manufacturer of construction and mining equipment, diesel and natural gas engines, industrial turbines and diesel-electric locomotives, and it produces and markets a wide array of associated products and services, including apparel and footwear.
Complainant does business in both New Zeeland and Australia.
Complainant holds a registration for the trademark CATERPILLAR, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 0085816, registered March 19, 1912, and renewed most recently as of August 2, 2022, as well as a registration for the trademark CAT, which is on file with the USPTO as Registry No. 0770639, registered June 2, 1964, and renewed most recently as of May 5, 2014.
Respondent registered the following domain names on various dates in 2021 and 2022: <caterpillarnz.com>, <catboots-nz.com>, <catfootwearnz.com>, <catsafetyshoesnz.com>, <catfootwearnzsale.com>, <catshoesnz.com>, <caterpillarbootnz.com>, <caterpillar-nz.com>, <caterpillarbootsnz.com> and <caterpillar-australia.com>.
Each of the domain names is confusingly similar to one or both of Complainant’s CAT and CATERPILLAR marks.
Respondent has neither rights to nor legitimate interests in any of the domain names.
Respondent has not been commonly known by any of the domain names.
Complainant has not licensed or otherwise authorized Respondent to use either the CAT or the CATERPILLAR marks.
Respondent is not making either a legitimate non-commercial or fair use of any of the domain names.
Instead, Respondent has used the domain names to offer for sale products purporting to be those of Complainant, in order to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain names.
There is evidence that Respondent requests and receives payments from unsuspecting Internet users for the goods offered for sale on the websites resolving from various of the domain names, but then fails to deliver the goods purchased, thus working a fraud upon the purchasers and tarnishing the name and reputation of Complainant.
Several of the domain names are now passively held by Respondent.
It is evident that Respondent knew of Complainant and its rights in the CAT and CATERPILLAR marks when it registered the domain names.
Respondent has both registered and now uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant alleges that the entities controlling the domain names at issue are the same person or entity, which is operating under several aliases. Complainant therefore requests that all ten domain name registrants be treated in this proceeding for all purposes as a single Respondent. In support of this request, Complainant asserts, among other things, the following:
(1) nine of the domain names share a similar structure, each beginning with Complainant’s CAT or CATERPILLAR mark and adding “nz,” the country code for New Zeeland (the tenth includes the country reference “australia”);
(2) seven of the domain names include a reference to one of Complainant’s product lines, by including one of the terms “shoes,” “footwear,” “boot,” or “boots;”
(3) six of the domain names share the same registrar, Alibaba, while two others are registered through another, Namesilo;
(4) six of the domain names share the same contact address in Malaysia, while the other four claim fictitious addresses in Germany;
(5) all of the domain names were registered close in time to one another;
(7) at least eight of the domain names have been used by Respondent to defraud Internet users via the purported sale of Complainant’s products, two of which continue to do so; and
(8) the remaining domain names are currently passively held.
(1) the domain names registered by Respondent are confusingly similar to trademarks in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of any of the domain names; and
(3) the same domain names were registered and are being used by Respondent 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:
ii. Respondent has no rights to or legitimate interests in respect of the domain names; and
iii. the same domain names were registered and are being used by Respondent in bad faith.
By reason of its registration of the CAT and CATERPILLAR trademarks with a national trademark authority, the USPTO, Complainant has established that it has rights in those mark sufficient to satisfy the requirement of Policy ¶(a)(i) that it demonstrate standing to pursue its claim against Respondent in this proceeding. This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Malaysia). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy¶4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that all of Respondent’s domain names, namely <catshoesnz.com>, <catsafetyshoesnz.com>, <catfootwearnz.com>, <catboots-nz.com>, <catfootwearnzsale.com>, <caterpillarbootnz.com>, <caterpillarnz.com>, <caterpillar-nz.com>, <caterpillarbootsnz.com> and <caterpillar-australia.com> are confusingly similar to one or both of Complainant’s CAT and CATERPILLAR marks. Each of the domain names incorporates one or the other of the marks in its entirety, with only the addition of a hyphen (-) in three instances, and one or the other of the terms “shoes,” “footwear,” “boot,” or “boots,” and “sale,” all of which relate to an aspect of Complainant’s business, as well as either the two-letter combination “nz” (the country code for New Zeeland) or the geographic term “australia,” in each of which countries Complainant does business, plus the generic Top Level Domain (“gTLD”) “.com.” These alterations of the marks, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy.
See, for example, Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that adding to the mark of another a gTLD and the generic term “finance,” which described a UDRP complainant’s financial services business conducted under that mark, did not distinguish the resulting domain name from the mark under Policy ¶ 4(a)(i)).
As to Respondent’s inclusion of a hyphen in three of the domain names, this alteration of the associated reference to Complainant’s mark is of no consequence to our analysis because a hyphen adds nothing to the meaning, nor does it change the phonetic character, of the result. See, for example, Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum February 18, 2004) (finding that hyphens included in a domain name are irrelevant in an analysis of the question of confusing similarity Policy ¶ 4(a)(i)).
Finally, under this head of the Policy, see, for example, Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the contested domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum, August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain names. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain names that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by any of the challenged domain names, and that Complainant has not licensed or otherwise authorized Respondent to use either the CAT or CATERPILLAR marks. Moreover, the pertinent WHOIS information identifies the registrant of the domain names only as one or another of the following: “Client Care / Web Commerce Communications Limited;” “Kristin Fischer;” “Nadine Zimmerman;” “Yvonne FAUST;” and “marcel baier,” none of which resembles any of the domain names. On this record, we conclude that Respondent has not been commonly known by any of the disputed domain names so as to have acquired rights to or legitimate interests in any of them within the ambit of Policy¶4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without objection from Respondent, that Respondent has used the domain names to offer for sale products purporting to be those of Complainant, in order to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain names, and that there is evidence that Respondent requests and receives payments from unsuspecting Internet users for the goods offered for sale on the websites resolving from various of the domain names, but then fails to deliver the goods purchased, thus working a fraud upon the purchasers and tarnishing the name and reputation of Complainant. This employment is neither a bona fide offering of goods or services by means of the domain names under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of them under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain names as provided in those subsections of the Policy. See, for example, Caterpillar v. WhayneCAT, FA1718187 (Forum April 6, 2017):
Passing off can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. . . . Complainant asserts that the domain name [ ] directs the user to a website mimicking those of Complainant’s authorized representatives, commercially benefiting the Respondent. The Panel here finds that Respondent’s use of the disputed domain lacks a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent employs, and has employed, the challenged domain names, which we have found to be confusingly similar to one or the other of Complainant’s CAT and CATERPILLAR marks, to pass itself off as Complainant online in furtherance of a scheme to confuse and defraud unsuspecting Internet users, a scheme from which it has sought to profit, and that this illicit behavior disrupts, and has disrupted, Complainant’s business. This demonstrates that Respondent has both registered and used the domain names in bad faith within the compass of Policy ¶ ¶ 4(b)(iii) and (iv). See, for example, Caterpillar v. Robles, FA1833037 (Forum April 3, 2019):
Use of a domain name to create a false impression of affiliation with a complainant in order to disrupt the complainant’s business and/or commercially benefit indicates bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv).... [The Panel therefore finds that] Respondent registered and used the domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
And, considering Respondent’s past fraudulent use of those domain names which are not presently actively in use, as well as that we can conceive of no legitimate use to which the now dormant domain names might be put, and that in registering the domain names Respondent has taken steps to conceal its true identity, we further conclude that Respondent’s current passive holding of those domain names is likewise in bad faith. See, for example, the extensive discussion of this question in the seminal case of Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). See also Solar Turbines v. Ogunde, FA 1811640 (Forum November 11, 2018):
… Respondent inactively holds the … domain name, thereby supporting a finding of bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that each and all of the domain names <catsafetyshoesnz.com>, <catboots-nz.com>, <catfootwearnz.com>, <catshoesnz.com>, <catfootwearnzsale.com>, <caterpillarbootnz.com>, <caterpillarnz.com>, <caterpillar-nz.com>, <caterpillarbootsnz.com>, and <caterpillar-australia.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: November 14, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page