Caterpillar Inc. v. Joanne BURKE / Olevia Blair / Veronica Arvidsson / Client Care / Web Commerce Communications Limited / Joseph Graham
Claim Number: FA2301002029779
Complainant is Caterpillar Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia. Respondents are Joanne BURKE / Olevia Blair / Veronica Arvidsson / Client Care / Web Commerce Communications Limited / Joseph Graham (“Respondents”), US, Germany, Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <caterpillarmalaysia.com>, <caterpillar-uae.com>, <caterpillarparis.com>, <botacatbrasil.com>, <botascatportugal.com>, <catcipele.com>, <caterpillaruaeonline.com>, <caterpillarbootoutlet.com>, <caterpillarchile-cl.com>, <caterpillarcommx.com>, <caterpillar-india.com>, <caterpillar-paris.com>, <caterpillarportugalpt.com>, <caterpillarsa.com>, <catkengat.com>, <catportugaloutlet.com>, <catsafetyshoescanada.com>, <catsafetyshoesuae.com>, <catshoesegypt.com>, <catskroutz.com>, (“the Disputed Domain Names”) registered with NETIM SARL; Key-Systems GmbH; Gransy, s.r.o. and ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED (“the Registrars”).
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to Forum electronically on January 30, 2023. Forum received payment on January 30, 2023.
On January 31, 2023; February 1, 2023 and February 3, 2023, the Registrars confirmed by e-mail to Forum that the Disputed Domain Names are registered with the Registrars and that Respondents are the current registrants of the names. The Registrars have verified that Respondents are bound by the Registrars’ registration agreements and have 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 6, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 2023 by which Respondents could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondents’ registrations as technical, administrative, and billing contacts, and to postmaster@caterpillarmalaysia.com, postmaster@caterpillar-uae.com, postmaster@caterpillarparis.com, postmaster@botacatbrasil.com, postmaster@botascatportugal.com, postmaster@catcipele.com, postmaster@caterpillaruaeonline.com, postmaster@caterpillarbootoutlet.com, postmaster@caterpillarchile-cl.com, postmaster@caterpillarcommx.com, postmaster@caterpillar-india.com, postmaster@caterpillar-paris.com, postmaster@caterpillarportugalpt.com, postmaster@caterpillarsa.com, postmaster@catkengat.com, postmaster@catportugaloutlet.com, postmaster@catsafetyshoescanada.com, postmaster@catsafetyshoesuae.com, postmaster@catshoesegypt.com and postmaster@catskroutz.com. Also on February 6, 2023, the Written Notice of the Complaint, notifying Respondents of the e-mail addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents’ registrations as technical, administrative and billing contacts.
Having received no response from Respondents, Forum transmitted to the parties a Notification of Respondent Default.
On March 7, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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 Respondents.
Complainant requests that the domain names be transferred from Respondents to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Paragraph 3(c) of 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”. Paragraph 1(d) of Forum's Supplemental Rules defines “The Holder of a Domain Name Registration” as “the single person or entity listed in the registration information, as verified by the Registrar, at the time of commencement” and sub-paragraph 1(d)(i) provides that a Complainant wishing to make an argument for a single Respondent having multiple aliases must comply with Supplemental Rules 4(c) and 17(a)(i).
Complainant contends that the Disputed Domain Names are effectively controlled by the same person and/or entity, which is operating under several aliases, saying the Disputed Domain Names are constructed in the same manner using Complainant’s marks and have been used for similar websites that impersonate Complainant by using its CAT logo to identify Complainant as the owner of the websites or falsely to communicate that Respondent’s websites are authorized by or affiliated with Complainant and claiming to offer Complainant’s CATERPILLAR and CAT footwear products and/or to copy product photos and text from Complainant’s copyright-protected CATFOOTWEAR.COM website.
In the absence of any evidence to the contrary, the above circumstances demonstrate sufficient commonality as between the Disputed Domain Names to satisfy the Panel that they are commonly owned or controlled by a single person who is using multiple aliases. Henceforth this decision will refer to Joanne BURKE / Olevia Blair / Veronica Arvidsson / Client Care / Web Commerce Communications Limited / Joseph Graham as “Respondent”.
A. 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. Directly and through its licensees, Complainant also advertises and offers a wide range of footwear, apparel, headwear, and additional consumer goods under its CATERPILLAR and CAT marks, in which Complainant has rights based upon numerous registrations, including with the United States Patent and Trademark Office (“USPTO”). Each of the Disputed Domain Names is confusingly similar to Complainant’s famous CATERPILLAR and CAT trademarks.
Respondent does not have rights or legitimate interests in the Disputed Domain Names. Respondent is not licensed or authorized to use Complainant’s CATERPILLAR and CAT marks and is not commonly known by any of the Disputed Domain Names. Respondent also does not use the Disputed Domain Names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent attempts to pass itself off as Complainant.
Respondent registered the Disputed Domain Names in bad faith with actual knowledge of Complainant’s rights in the CATERPILLAR and CAT marks. Respondent has engaged in a pattern of bad faith registration by registering multiple domain names in the instant case. Respondent uses the Disputed Domain Names in bad faith to disrupt Complainant’s business by offering competing products for sale and creating a likelihood of confusion with Complainant by passing itself off as Complainant for commercial gain.
The facts of this case are essentially identical to the facts in four recent favorable
UDRP decisions, Caterpillar v. Client Care (NAF FA2210002015314), Caterpillar v. Client Care (NAF FA2211002022244), Caterpillar v. Client Care (NAF FA2212002024052), and Caterpillar v. Ackermann (NAF FA2212002024293) that ordered the transfer of 56 domain names to Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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 shown that it has rights in the CATERPILLAR and CAT marks based upon registrations with the USPTO (CATERPILLAR, Reg. No. 2,234,261, registered March 23, 1999 and CAT, Reg. No. 4804267, registered September 1, 2015). The Panel finds each of the Disputed Domain Names to be confusingly similar to Complainant’s CATERPILLAR and CAT trademarks because they incorporate one or other of the marks in their entirety and add the generic, descriptive, or geographic words “Malaysia”, “uae”, “Paris”, “bota”, “botas”, “cipele”, “boot”, “outlet”, “Chile”, “com”, “cl”, “mx”, “India”, “Portugal”, “pt”, “sa”, “safety”, “shoes”, “Canada”, “Egypt”, and the third party mark “Skroutz”, none of which suffices to distinguish any of the Disputed Domain Names from either of Complainant’s marks. The inconsequential generic top-level domain name (“gTLD”) “.com” may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The Disputed Domain Names were registered as follows, in each case many years after Complainant has shown that its CATERPILLAR and CAT trademarks had become famous worldwide:
<caterpillarmalaysia.com> March 23, 2021
<caterpillar-india.com> September 3, 2021
<caterpillarparis.com> September 12, 2021
<caterpillar-paris.com> September 14, 2021
<caterpillar-uae.com> March 28, 2022
<caterpillaruaeonline.com> May 31, 2022
<caterpillarcommx.com> July 22, 2022
<caterpillarsa.com> December 5, 2022
<catportugaloutlet.com> December 5, 2022
<catsafetyshoescanada.com> December 5, 2022
<catsafetyshoesuae.com> December 5, 2022
<catshoesegypt.com> December 5, 2022
<botascatportugal.com> December 7, 2022
<catcipele.com> December 7, 2022
<catkengat.com> December 7, 2022
<catskroutz.com> December 7, 2022
<botacatbrasil.com> December 17, 2022
<caterpillarportugalpt.com> January 9, 2023
<caterpillarchile-cl.com> January 10, 2023
<caterpillarbootoutlet.com> January 11, 2023.
Complainant has provided screenshots showing that, before some of the websites were blocked by Cisco as phishing websites or resolved to browser error messages, all the Disputed Domain Names resolved to websites displaying Complainant’s marks and offering competing shoe products.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the Disputed Domain Names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the Disputed Domain Names. See Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014). Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the Disputed Domain Names in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iv) by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainant’s famous CATERPILLAR and CAT trademarks when Respondent registered the twenty Disputed Domain Names and that Respondent’s registration of multiple domain names evinces bad faith registration under Policy ¶ 4(b)(ii). See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013).
Further, the Panel is satisfied that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites, by creating a likelihood of confusion with Complainant’s marks as to the source of Respondent’s websites and of the goods promoted on those websites. This demonstrates registration and use in bad faith to attract users for commercial gain under Policy ¶ 4(b)(iv).
Complainant has established this element.
DECISION
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 <caterpillarmalaysia.com>, <caterpillar-uae.com>, <caterpillarparis.com>, <botacatbrasil.com>, <botascatportugal.com>, <catcipele.com>, <caterpillaruaeonline.com>, <caterpillarbootoutlet.com>, <caterpillarchile-cl.com>, <caterpillarcommx.com>, <caterpillar-india.com>, <caterpillar-paris.com>, <caterpillarportugalpt.com>, <caterpillarsa.com>, <catkengat.com>, <catportugaloutlet.com>, <catsafetyshoescanada.com>, <catsafetyshoesuae.com>, <catshoesegypt.com>, <catskroutz.com> domain name be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: March 10, 2023.
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