Caterpillar Inc. v. Ziegler Jana / Cole Dieter / Client Care / Web Commerce Communications Limited / Domain Admin / Whoisprotection.cc / Courtney Luera / Benjamin ENGEL
Claim Number: FA2302002031793
Complainant is Caterpillar Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia. Respondent is Ziegler Jana / Cole Dieter / Client Care / Web Commerce Communications Limited / Domain Admin / Whoisprotection.cc / Courtney Luera / Benjamin ENGEL (“Respondent”), DE.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <caterpillarenespana.com>, <caterpillaritaliasaldi.com>, <caterpillar-mx.com>, <caterpillarnetherlands.com>, <caterpillarphilippines.com>, <caterpillarsromania.com>, <caterpillar-turkey.com>, <caterpillaruk.com>, <caterpillar-uk.com>, <caterplllaruae.com>, <catstiefel.com>, <cattromania.com>, <catwerkschoenen.com>, <chaussurescaterpillarpascher.com>, <scarpecat.com>, <werkschoenencaterpillar.com>, <caterpillarnorge.net>, <caterpillarenchile.com>, <caterpillar-peru.com>, <caterpillarankara.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; Key-Systems GmbH; Gransy, s.r.o.; NETIM SARL.
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 Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on February 14, 2023; Forum received payment on February 14, 2023.
On February 15, 2023, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; Key-Systems GmbH; Gransy, s.r.o.; NETIM SARL confirmed by e-mail to Forum that the <caterpillarenespana.com>, <caterpillaritaliasaldi.com>, <caterpillar-mx.com>, <caterpillarnetherlands.com>, <caterpillarphilippines.com>, <caterpillarsromania.com>, <caterpillar-turkey.com>, <caterpillaruk.com>, <caterpillar-uk.com>, <caterplllaruae.com>, <catstiefel.com>, <cattromania.com>, <catwerkschoenen.com>, <chaussurescaterpillarpascher.com>, <scarpecat.com>, <werkschoenencaterpillar.com>, <caterpillarnorge.net>, <caterpillarenchile.com>, <caterpillar-peru.com>, <caterpillarankara.com> domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; Key-Systems GmbH; Gransy, s.r.o.; NETIM SARL and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; Key-Systems GmbH; Gransy, s.r.o.; NETIM SARL has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; Key-Systems GmbH; Gransy, s.r.o.; NETIM SARL 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 20, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 13, 2023 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@caterpillarenespana.com, postmaster@caterpillaritaliasaldi.com, postmaster@caterpillar-mx.com, postmaster@caterpillarnetherlands.com, postmaster@caterpillarphilippines.com, postmaster@caterpillarsromania.com, postmaster@caterpillar-turkey.com, postmaster@caterpillaruk.com, postmaster@caterpillar-uk.com, postmaster@caterplllaruae.com, postmaster@catstiefel.com, postmaster@cattromania.com, postmaster@catwerkschoenen.com, postmaster@chaussurescaterpillarpascher.com, postmaster@scarpecat.com, postmaster@werkschoenencaterpillar.com, postmaster@caterpillarnorge.net, postmaster@caterpillarenchile.com, postmaster@caterpillar-peru.com, postmaster@caterpillarankara.com. Also on February 20, 2023, 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 March 21, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant, Caterpillar Inc. manufactures construction equipment. Complainant submits that it has rights in the CATERPILLAR and CAT marks based upon registration of the CATERPILLAR mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. no. 2,234,261, registered March 23, 1999) and registration of the CAT mark with the USPTO ( e.g.,Reg.No.480426, registered September 1,2015). Details of the CATERPILLAR and CAT marks have been submitted to the Panel in Compl. Ex. 24. Respondent’s <caterpillarenespana.com>, <caterpillaritaliasaldi.com>, <caterpillar-mx.com>, <caterpillarnetherlands.com>, <caterpillarphilippines.com>, <caterpillarsromania.com>, <caterpillar-turkey.com>, <caterpillaruk.com>, <caterpillar-uk.com>, <caterplllaruae.com>, <catstiefel.com>, <cattromania.com>, <catwerkschoenen.com>, <chaussurescaterpillarpascher.com>, <scarpecat.com>, <werkschoenencaterpillar.com>, <caterpillarnorge.net>, <caterpillarenchile.com>, <caterpillar-peru.com>, <caterpillarankara.com> (the Disputed Domain Names) are confusingly similar to Complainant’s CATERPILLAR and CAT marks because they incorporate the marks in their entirety or misspell the marks by including an additional letter “s” or “t”, or replace the letter “i” with “l” and add the generic, descriptive, or geographic terms “espana”, “italia”, “saldi”, “mx”, “netherlands”, “peru”, “tiendas”, “philippines”, “romania”, “turkey”, “uk”, “uae”, “stiefel”, “werkshoenen”, “chaussures”, “scarpe”, “norge”, “en chile”, and “ankara”, hyphen, and the generic top-level domain names (“gTLD”) “.net” and “.com”.
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
the disputed domain name. 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 and competes with Complainant in furtherance of a phishing
scheme. Additionally, Respondent inactively holds the
Disputed Domain Names.
Respondent registered and uses the Disputed Domain Names in bad faith. Respondent has a pattern of
bad faith registration by registering multiple domain names in the instant
case. Respondent disrupts its business by offering competing products for sale.
Respondent creates a likelihood of confusion with
Complainant by passing off as Complainant in furtherance of a phishing scheme. Respondent
had actual or constructive knowledge of Complainant’s rights in the CATERPILLAR
and CAT marks. Respondent inactively holds the Disputed Domain Names.
Respondent registered the Disputed Domain Names variously on October 30, 2022, April 9, 2022, February 22, 2022, October 19, 2021, December 7, 2022, September 14, 2022, August 18, 2022, November 16, 2022, December 8, 2021, September 28, 2021, January 30, 2023, March 18, 2021, January 10, 2023, September 17, 2021, and August 2, 2022.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a prominent United States company engaged in the manufacture of construction equipment and the provision of related goods and services.
2. Complainant has established its rights in the CATERPILLAR and the CAT trademarks based upon its registration of the CATERPILLAR mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. no. 2,234,261, registered March 23, 1999) and registration of the CAT mark with the USPTO ( e.g.,Reg.No.480426, registered September 1, 2015).
3. Respondent registered the Disputed Domain Names variously on October 30, 2022, April 9, 2022, February 22, 2022, October 19, 2021, December 7, 2022, September 14, 2022, August 18, 2022, November 16, 2022, December 8, 2021, September 28, 2021, January 30, 2023, March 18, 2021, January 10, 2023, September 17, 2021, and August 2, 2022.
4.
Respondent has
caused the disputed domain names to be used in attempts to pass itself off as
Complainant and compete with Complainant in furtherance of a phishing scheme
and otherwise holds the Disputed Domain Names inactively.
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”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has submitted that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. 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 contends that the Disputed Domain Names are owned by the same entity and/or under common control because they are constructed similarly, using generic, descriptive, or geographic terms relating to footwear offerings, and include Complainant’s marks and photos of its products. Having considered all of the evidence and the circumstances of the present proceeding, the Panel finds that the Disputed Domain Names are commonly owned/controlled by a single Respondent who is using multiple aliases.
The proceeding was therefore properly instituted and may go forward on that basis.
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the CATERPILLAR and CAT marks based upon its registration of the CATERPILLAR mark with the USPTO (e.g., Reg. no. 2,234,261, registered March 23, 1999) and other trademark agencies and registration of the CAT mark with the USPTO (e.g.,Reg.No.480426, registered on September 1, 2015).
Therefore, the Panel accepts that it has been proved as submitted that Complainant owns the trade name, trademark, and service mark CATERPILLAR, that its rights in the CATERPILLAR mark date back to at least as early as 1904, that Complainant also owns the trade name, trademark, and service mark CAT and that its rights in the CAT mark date back to at least as early as 1948.
Registration of a mark with multiple trademark agencies including the USPTO is a valid showing of rights under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Muhammad Shahzad, FA 1787738 (Forum June 19, 2018) (“Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i).”). Since Complainant has provided evidence of registration of the CATERPILLAR and CAT marks with the USPTO, the Panel finds that Complainant has established its rights in the CATERPILLAR and CAT marks under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s CATERPILLAR and CAT marks. Complainant argues that the Disputed Domain Names are confusingly similar to Complainant’s CATERPILLAR and CAT marks because they incorporate the marks in their entirety or misspell the marks by including an additional letter “s” or “t”, or replace the letter “i” with “l” and add the generic, descriptive, or geographic words “espana”, “italia”, “saldi”, “mx”, “netherlands”, “peru”, “tiendas”, “philippines”, “romania”, “turkey”, “uk”, “uae”, “stiefel”, “werkshoenen”, “chaussures”, “scarpe”, “norge”, “en chile”, and “ankara”, hyphen, and the gTLD “.net” and “.com”. Misspelling a mark, adding or removing generic, descriptive, or geographic terms, and gTLDs are insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”). Therefore, the Panel finds the Disputed Domain Names are confusingly similar to Complainant’s CATERPILLAR and CAT marks under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CATERPILLAR and CAT marks and to use them in its domain names;
(b) Respondent registered the Disputed Domain Names variously on October 30, 2022, April 9, 2022, February 22, 2022, October 19, 2021, December 7, 2022, September 14, 2022, August 18, 2022, November 16, 2022, December 8, 2021, September 28, 2021, January 30, 2023, March 18, 2021, January 10, 2023, September 17, 2021, and August 2, 2022.
(c) Respondent has caused the disputed
domain names to be used in attempts to pass itself off as Complainant and
compete with Complainant in furtherance of a phishing scheme and otherwise holds the Disputed Domain Names inactively;
(d) Respondent has engaged in these activities without the consent
or approval of Complainant;
(e) Complainant argues that Respondent does not have rights or legitimate interests in the Disputed Domain Names because Respondent is not licensed or authorized to use Complainant’s CATERPILLAR and CAT marks and is not commonly known by the disputed domain names. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. The WHOIS information for the disputed domain name lists the registrant as “Ziegler Jana / Cole Dieter / Client Care / Web Commerce Communications Limited / Domain Admin / Whoisprotection.cc / Courtney Luera / Benjamin ENGEL.” See Registrar Verification Email. Therefore, the Panel finds that Respondent is not commonly known by the Disputed Domain Names per Policy ¶ 4(c)(ii);
(f) Complainant contends 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 uses them to attempt to pass itself off as Complainant in furtherance of a phishing scheme. Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant provides screenshots of the Disputed Domain Names’ resolving webpages showing use of Complainant’s marks, and offerings of Complainant’s products or competing shoe products for sale. See Compl. Ex. 1-20. Thus, the Panel finds Respondent does not provide a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii);
(g) Complainant argues Respondent inactively holds the Disputed Domain Names. Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant provides screenshots of the Disputed Domain Names’ resolving webpages showing various error messages that the webpage is unavailable. See Compl. Ex. 3, 6, 11, 13-16. Therefore, the Panel finds that Respondent does not provide a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii);
(h) Complainant submits that Respondent competes with Complainant’s business by offering its products for sale. Respondent’s use of a disputed domain to sell products related to Complainant without authorization does not amount to a bona fide offering of goods or services under policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016 (Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors). Here, the Panel notes that Complainant provides screenshots of the Disputed Domain Names’ resolving webpages showing use of Complainant’s marks, and offerings of Complainant’s products or competing shoe products for sale. See Compl. Ex. 1-20. Thus, the Panel finds that Respondent does not provide a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a formal Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in the Disputed Domain Names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the Disputed Domain Names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the Disputed Domain Names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent has a pattern of bad faith registration by registering multiple domain names in the instant case. Registering multiple domain names in an instant case may constitute bad faith under Policy ¶ 4(b)(ii). 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).”). There are 20 Disputed Domain Names in the instant case. Therefore, the Panel finds that Respondent registered and uses the Disputed Domain Names in bad faith under Policy ¶ 4(b)(ii).
Secondly, Complainant submits that Respondent disrupts its business by offering competing products for sale. A Respondent’s use of a disputed domain name to offer competing products or services disrupts complainant’s business within the meaning of Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business). Here, the Panel again notes that Complainant provides screenshots of the Disputed Domain Names’ resolving webpages showing use of Complainant’s marks, and offerings of Complainant’s products or competing shoe products for sale. See Compl. Ex. 1-20. Thus, the Panel finds Respondent registered and uses the Disputed Domain Names in bad faith under Policy ¶ 4(b)(iii).
Thirdly, Complainant contends Respondent creates a likelihood of confusion with Complainant by passing itself off as Complainant in furtherance of a phishing scheme. 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 itself off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). Here, the Panel again notes that Complainant provides screenshots of the Disputed Domain Names’ resolving webpages showing use of Complainant’s marks, and offerings of Complainant’s products or competing shoe products for sale. See Compl. Ex. 1-20. Aa the Panel agrees, it finds Respondent registered and uses the Disputed Domain Names in bad faith under Policy ¶¶ 4(b)(iii), 4(b)(iv) & 4(a)(iii).
Fourthly, Complainant submits that Respondent had actual or constructive knowledge of Complainant’s rights in the CATERPILLAR and CAT marks because of the fame of the marks and Respondent’s use of the Disputed Domain Names. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore finds that Respondent registered the Disputed Domain Names in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"). Here, Complainant provides in evidence its 2021 annual report showing the success of the marks and the panel again notes that Complainant provides screenshots of the Disputed Domain Names’ resolving webpages showing use of Complainant’s marks and offerings of Complainant’s products or competing shoe products for sale. See Compl. Ex. 1-20. Therefore, the Panel finds Respondent registered and uses the Disputed Domain Names in bad faith under Policy ¶ 4(a)(iii).
Fifthly, Complainant argues that Respondent inactively holds the Disputed Domain Names. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400- Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). Here, the Panel notes that Complainant provides screenshots of the Disputed Domain Names’ resolving webpages showing various error messages that the webpage is unavailable. See Compl. Ex. 3, 6, 11, 13-16. Thus, the Panel finds Respondent registered and uses the Disputed Domain Names in bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <caterpillarenespana.com>, <caterpillaritaliasaldi.com>, <caterpillar-mx.com>, <caterpillarnetherlands.com>, <caterpillarphilippines.com>, <caterpillarsromania.com>, <caterpillar-turkey.com>, <caterpillaruk.com>, <caterpillar-uk.com>, <caterplllaruae.com>, <catstiefel.com>, <cattromania.com>, <catwerkschoenen.com>, <chaussurescaterpillarpascher.com>, <scarpecat.com>, <werkschoenencaterpillar.com>, <caterpillarnorge.net>, <caterpillarenchile.com>, <caterpillar-peru.com>, <caterpillarankara.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: March 22, 2023
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