Caterpillar Inc. v. Client Care / Web Commerce Communications Limited / Domain Admin / Whoisprotection.cc
Claim Number: FA2305002044808
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 / Domain Admin / Whoisprotection.cc (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <catbootsusa.com>, <caterpillar-ankara.com>, <caterpillarbootsdubai.com>, <caterpillar-boots-singapore.com>, <caterpillarbootssouthafrica.com>, <caterpillarcanadaboot.com>, <caterpillarcanads.com>, <caterpillar-finland.com>, <caterpillarjapans.com>, <caterpillarmadrid.com>, <caterpillarnederlandnl.com>, <caterpillaroutletstoreuk.com>, <caterpillarpoland.com>, <caterpillarptonline.com>, <caterpillarsafetyshoesphilippines.com>, <caterpillarschile.com>, <caterpillarshoegreece.com>, <caterpillarshoes-canada.com>, <caterpillarshoesdubai.com>, <caterpillarshoes-egypt.com>, and <catskonorge.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on May 16, 2023; Forum received payment on May 16, 2023.
On May 17, 2023, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED confirmed by e-mail to Forum that the <catbootsusa.com>, <caterpillar-ankara.com>, <caterpillarbootsdubai.com>, <caterpillar-boots-singapore.com>, <caterpillarbootssouthafrica.com>, <caterpillarcanadaboot.com>, <caterpillarcanads.com>, <caterpillar-finland.com>, <caterpillarjapans.com>, <caterpillarmadrid.com>, <caterpillarnederlandnl.com>, <caterpillaroutletstoreuk.com>, <caterpillarpoland.com>, <caterpillarptonline.com>, <caterpillarsafetyshoesphilippines.com>, <caterpillarschile.com>, <caterpillarshoegreece.com>, <caterpillarshoes-canada.com>, <caterpillarshoesdubai.com>, <caterpillarshoes-egypt.com>, and <catskonorge.com> domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED 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 May 22, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 12, 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@catbootsusa.com, postmaster@caterpillar-ankara.com, postmaster@caterpillarbootsdubai.com, postmaster@caterpillar-boots-singapore.com, postmaster@caterpillarbootssouthafrica.com, postmaster@caterpillarcanadaboot.com, postmaster@caterpillarcanads.com, postmaster@caterpillar-finland.com, postmaster@caterpillarjapans.com, postmaster@caterpillarmadrid.com, postmaster@caterpillarnederlandnl.com, postmaster@caterpillaroutletstoreuk.com, postmaster@caterpillarpoland.com, postmaster@caterpillarptonline.com, postmaster@caterpillarsafetyshoesphilippines.com, postmaster@caterpillarschile.com, postmaster@caterpillarshoegreece.com, postmaster@caterpillarshoes-canada.com, postmaster@caterpillarshoesdubai.com, postmaster@caterpillarshoes-egypt.com, postmaster@catskonorge.com. Also on May 22, 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 June 21, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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.
Complainant alleges that notwithstanding any differences in the domain registration records for the at-issue domain names they are nevertheless effectively controlled by the same person and/or entity. 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.”
The instant dispute was filed with regard to 21 domain names. These domain names are registered through the same registrar, use @webnic.cc email addresses on the registration, and are comprised of Complainant’s CATERPILLAR or CAT mark (in one case, with the letter “s” added), and additional terms relating to footwear offerings and/or various countries. 19 of the 21 domain names have been used for similar bogus websites that use the CAT logo to deceptively identify Caterpillar as the owner or sponsor of the websites and there claim to offer Caterpillar’s CATERPILLAR and CAT footwear products. The websites associated with 2 of the 21 domain names are currently blocked by the website owner and return an “access denied” message. Thus the at-issue domain names seem more likely than not to all be related to, or controlled by, the same person, persons, or entity. Furthermore, Complainant’s position that the domain names’ registrants be treated as a single entity is unopposed. Therefore, the Panel elects to treat the at-issue domain names’ nominal registrants as a single respondent (Respondent) for the purposes of this proceeding.
A. Complainant
Complainant contends as follows:
Complainant, Caterpillar Inc., is a manufacturer of construction and mining equipment, diesel, natural gas engines, industrial gas turbines, and diesel-electric locomotives and offers other merchandise such as branded footwear.
Complainant has rights in the CAT and CATERPILLAR marks through its registration of the marks with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <catbootsusa.com>, <caterpillar-ankara.com>, <caterpillarbootsdubai.com>, <caterpillar-boots-singapore.com>, <caterpillarbootssouthafrica.com>, <caterpillarcanadaboot.com>, <caterpillarcanads.com>, <caterpillar-finland.com>, <caterpillarjapans.com>, <caterpillarmadrid.com>, <caterpillarnederlandnl.com>, <caterpillaroutletstoreuk.com>, <caterpillarpoland.com>, <caterpillarptonline.com>, <caterpillarsafetyshoesphilippines.com>, <caterpillarschile.com>, <caterpillarshoegreece.com>, <caterpillarshoes-canada.com>, <caterpillarshoesdubai.com>, <caterpillarshoes-egypt.com>, and <catskonorge.com> domain names are confusingly similar to Complainant’s marks as they add generic, descriptive, and/or geographic terms while one domain name misspells the mark by adding an “s” and all of the domain names append the “.com” generic top-level domain.
Respondent lacks rights and legitimate interests in the at-issue domain names. Respondent is not commonly known by any of the at-issue domain names, nor has Complainant authorized or licensed Respondent to use its CAT or CATERPILLAR marks. Respondent does not use the at-issue domain names for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead passes off as Complainant while offering competing products or services. Additionally, Respondent fails to make active use of some of the domain names.
Respondent registered and uses the at-issue domain name in bad faith. Respondent engages in a pattern of bad faith registration and use by registering multiple confusingly similar domain names. Additionally, Respondent disrupts Complainant’s business and attracts users for commercial gain. Furthermore, Respondent fails to make active use of some of the domain names and registered the each domain name with knowledge of Complainant’s rights in the CAT and CATERPILLAR marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the CAT and CATERPILLAR marks.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the CAT and CATERPILLAR trademarks.
Respondent uses most at-issue domain names to address websites mimicking Complainant’s genuine website and offering unauthorized CAT and CATERPILLAR related products for sale while holding two of the domain names inactively by shuttering their access.
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”).
The at-issue domain names are each confusingly similar to a mark in which Complainant has rights.
Complainant’s USPTO trademark registration for CAT and/or CATERPILLAR sufficiently demonstrate Complainant’s rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s at issue domain names are confusingly similar to Complainant’s CAT and/or CATERPILLAR marks. The domain names each consist of the CAT or CAT and CATERPILLAR marks (CAT being present in CATERPILLA R) followed by generic, descriptive, and/or geographic terms with all followed by the “.com” top level. In one domain name the letter “s” is added to the CATERPILLAR mark. The differences between any of the at-issue domain names and Complainant’s CAT and/or CATERPILLAR trademarks are insufficient to distinguish any domain name from Complainant’s marks for the purposes of the Policy. Therefore, the Panel finds pursuant to Policy ¶ 4(a)(i) that Respondent’s at-issue domain names are each confusingly similar to one of Complainant’s trademarks. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy); see also Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”); see also Bank of America Corporation v. Above.com Domain Privacy, FA 1629452 (Forum Aug. 18, 2015) (finding that the <blankofamerica.com> domain name contains the entire BANK OF AMERICA mark and merely adds the gTLD ‘.com’ and the letter ‘l’ to create a common misspelling of the word ‘bank.’).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of each at-issue domain name. Respondent is not authorized to use Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of any of the at‑issue domain names. See Charter Communications Holding Company, LLC v. Taha Shaikh / Tskdesigners, FA 1814475 (Forum Nov. 25, 2018) (finding no rights or legitimate interests in <spectrumfeature.com> because complainant never gave respondent permission to use the mark in any manner and “Panels may use these assertions as evidence that no rights or legitimate interests exist in a disputed domain name.”).
The WHOIS information for the at-issue domain names identifies the domain names’ registrant as “Client Care / Web Commerce Communications Limited / Domain Admin / Whoisprotection.cc.” and the record before the Panel contains no evidence that tends to prove that any nominal registrant is commonly known by one of the at-issue domain names. The Panel therefore concludes that Respondent is not commonly known by any of the at-issue domain names for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Almost all of Respondent’s at-issue domain names are used to pass off as Complainant and address websites that purport to offer products that compete with Complainant’s footwear offering. Two at-issue domain names appear to be held passively as their access is blocked and an error message is returned in lieu of substantive content. Passively holding the domain names constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain names per Policy ¶¶ 4(c)(i) or (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).”); see also Alcon, Inc. v. ARanked, FA 1306493 (Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also, CrossFirst Bankshares, Inc. v. Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”).
Given the forgoing, Complainant satisfies its initial burden and shows Respondent’s lack of rights and legitimate interests in the at-issue domain names under Policy ¶ 4(a)(ii).
As discussed below without being exhaustive, bad faith circumstances are present from which the Panel concludes that Respondent registered and used the at-issue domain names in bad faith pursuant to Policy ¶ 4(a)(iii).
First, Respondent registered the 21 confusingly similar domain names that are the subject of the instant dispute. In so doing, Respondent reveals a pattern of domain name abuse that points to Respondent’s bad faith under Policy ¶ 4(b)(ii). See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum Feb. 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)).
Next, Respondent uses most of the at-issue domain names to pass itself off as Complainant and address websites designed to appear as if controlled or sponsored by Complainant while offering similar or identical footwear products to Complainant’s offerings. Respondent’s use of the confusingly similar domain names in this manner disrupts Complainant’s business, commercially exploits the confusing similarity that Respondent created between Complainant’s trademarks and each of the at-issue domain names, and indicates Respondent’s bad faith registration and use of the at-issue domain names per Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also, G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract internet users to its commercial website to sell the complainant’s products). Two of the domain names are inactive. Respondent’s passive holding such domain names shows Respondent’s bad faith registration and use of the inactive confusingly similar domain names under Policy ¶ 4(a)(iii). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (“Respondent registered and is using the domain name in bad faith under Policy ¶ 4(a)(iii) because Respondent uses the domain name to host an inactive website.”); see also, Solar Turbines v. Ogunade (NAF FA1810001811640) (“. . . Respondent inactively holds the <solarsturbines.com> domain name, thereby supporting a finding of bad faith registration and use under Policy ¶ 4(a)(iii).”).
Moreover, Respondent had actual knowledge of Complainant’s rights in the CAT and CATERPILLAR marks when it registered the at-issue domain names. Respondent’s actual knowledge is evident given the notoriety of Complainant and its trademarks; given Respondent’s registration of multiple domain names incorporating Complainant’s trademarks; and given Respondent’s use of many of the domain names to pass itself off as Complainant. Respondent’s registration of multiple confusingly similar domain names with knowledge of Complainant’s trademark rights in CAT and CATERPILLAR further shows Respondent’s bad faith registration and use regarding each at-issue domain names pursuant to 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); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <catbootsusa.com>, <caterpillar-ankara.com>, <caterpillarbootsdubai.com>, <caterpillar-boots-singapore.com>, <caterpillarbootssouthafrica.com>, <caterpillarcanadaboot.com>, <caterpillarcanads.com>, <caterpillar-finland.com>, <caterpillarjapans.com>, <caterpillarmadrid.com>, <caterpillarnederlandnl.com>, <caterpillaroutletstoreuk.com>, <caterpillarpoland.com>, <caterpillarptonline.com>, <caterpillarsafetyshoesphilippines.com>, <caterpillarschile.com>, <caterpillarshoegreece.com>, <caterpillarshoes-canada.com>, <caterpillarshoesdubai.com>, <caterpillarshoes-egypt.com>, and <catskonorge.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 22, 2023
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