Caterpillar Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2305002045235
Complainant is Caterpillar Inc. (“Complainant”), represented by AJ Schumacher of Kelly IP, LLP, District of Columbia, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <caterpillarg.com> (the “disputed domain name”), registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to Forum electronically on May 18, 2023; Forum received payment on May 18, 2023.
On May 19, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <caterpillarg.com> disputed domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 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@caterpillarg.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 18, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Lynda M. Braun 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the world’s largest manufacturer of construction and mining equipment, especially tractors, diesel and natural gas engines, industrial gas turbines, and diesel-electric locomotives. For more than 90 years, Complainant has been making sustainable progress possible and driving positive change on every continent by offering products and services to customers to help them develop infrastructure, energy, and natural resource assets.
Complainant claims rights in the CATERPILLAR trademark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 85,816 registered on March 19, 1912, among others) (hereinafter collectively referred to as the “CATERPILLAR Mark”). Complainant contends that Respondent’s <caterpillarg.com> disputed domain name is confusingly similar to the CATERPILLAR Mark because it incorporates the CATERPILLAR Mark in its entirety and adds the letter “g” followed by the generic Top-Level Domain (“gTLD”) “.com”.
Complainant also claims that Respondent has no legitimate interests in the <caterpillarg.com> disputed domain name since Respondent is not commonly known by the disputed domain name and Complainant has not authorized or licensed Respondent to use the CATERPILLAR Mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use, but instead, the disputed domain name resolves to a page pay-per-click links plus Respondent uses the disputed domain name to engage in typosquatting.
Finally, Complainant contends that Respondent registered and is using the disputed domain name in bad faith because Respondent registered the disputed domain name to disrupt Complainant’s business and divert customers for commercial gain. Further, Respondent registered the disputed domain name to participate in typosquatting and Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the CATERPILLAR Mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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 disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed 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 Panel finds that the disputed domain name is confusingly similar to the CATERPILLAR Mark as set forth below.
The Panel agrees with Complainant that it has rights in the CATERPILLAR Mark based upon registration with the USPTO (e.g., Reg. No. 85,816 registered March 19, 1912, among others). Registration of a mark with the USPTO is generally a valid showing of rights in a mark under Policy paragraph 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy paragraph 4(a)(i).”). Since Complainant provides evidence of its registration of the CATERPILLAR Mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy 4(a)(i).
The Panel also finds that the disputed domain name is confusingly similar to Complainant’s CATERPILLAR Mark as Respondent merely adds the letter “g” to the CATERPILLAR Mark, and then adds the gTLD “.com” to create the disputed domain name Further, the Panel concludes that Respondent lacks rights or legitimate interests in the disputed domain name and that Respondent registered and is using the disputed domain name in bad faith.
Registration of a domain name that merely adds one letter to a trademark does not distinguish the disputed domain name from the mark per Policy paragraph 4(a)(i). In addition, adding a gTLD to a complainant’s mark does not prevent a finding of confusing similarity under Policy paragraph 4(a)(i). See TXDC, L.P. v. Kevin Americain, FA 2106001953061 (Forum, July 26, 2021) (finding that the addition of the letter “s” plus the gTLD “.com” in the disputed domain name <zalesoutlets.com> do not substantially diminish the similarity between the disputed domain name and complainant's trademark ZALES OUTLET).
Here, Respondent misspells Complainant’s CATERPILLAR Mark by merely adding the letter “g” to result in “caterpillarg”, an example of typosquatting.[i] Therefore, the Panel concludes that the disputed domain name is confusingly similar to the CATERPILLAR Mark.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been established by Complainant.
Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”).
In this case, Respondent did not carry its burden to come forward with evidence of its rights or legitimate interests in the disputed domain name as it did not submit a response to the Complaint, but given the facts of this case, the Panel finds that Respondent would have been hard pressed to furnish availing arguments had it chosen to respond.
In support, the Panel finds that Respondent is not commonly known by the disputed domain name or any name similar to it, nor has Complainant authorized or licensed Respondent to use a misspelling of Complainant’s CATERPILLAR Mark in the disputed domain name. In addition, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use.
The Panel also concludes that Respondent does not use the disputed domain name for a bona fide offering of goods and services or legitimate noncommercial or fair use because the resolving website displays pay-per-click links featuring a series of advertising links for third party services, many of whom offer products and services in direct competition with those offered under Complainant’s CATERPILLAR Mark. Using a disputed domain name to resolve to a page with pay-per-click competing links does not constitute a bona fide offering of goods and services or legitimate noncommercial or fair use pursuant to Policy paragraphs 4(c)(i) and (iii). See The Toronto-Dominion Bank v. GEORGE WASHERE, FA 1785311 (Forum June 7, 2018) (“Respondent’s confusingly similar <esecuretdbank.com> domain name references a website displaying links to competing third parties as well as links to Complainant and various unrelated third parties. Using a domain name in this manner shows neither a bona fide offering of goods or services under Policy paragraph 4(c)(i), nor a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii).”); see also Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
This Panel finds that, based on the record, Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy as described below.
First, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Second, Respondent registered and is using the disputed domain name in bad faith as Respondent engaged in typosquatting. See Cost Plus Management Services, Inc. v. xushuaiwei, FA 1800036 (Forum Sep. 7, 2018) (“Typosquatting itself is evidence of relevant bad faith registration and use.”). Here, Respondent engaged in typosquatting by adding the letter “g” to the CATERPILLAR Mark (resulting in “caterpillarg”). Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Third, the fame of the CATERPILLAR Mark, which was used and registered by Complainant far in advance of Respondent’s registration of the disputed domain name, renders it wholly implausible that Respondent created the disputed domain name independently. Moreover, where a disputed domain name is so obviously connected with a well-known name, product or service, its use by someone with no connection to the name, product or service indicates opportunistic bad faith. Therefore, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the CATERPILLAR Mark, and this constitutes bad faith under Policy paragraph 4(a)(iii). It therefore strains credulity to believe that Respondent had not known of the Complainant or its CATERPILLAR Mark when registering the disputed domain name. Thus, as here, prior knowledge of a complainant’s trademarks before registering a confusingly similar domain name is sufficient to find bad faith under Policy paragraph 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).
Fourth, the Panel concludes that Respondent registered and is using the <caterpillarg.com> disputed domain name for bad faith disruption of the Complainant’s business for commercial gain. Under Policy paragraphs 4(b)(iii) and (iv), using a disputed domain name to host parked, pay-per-click competing links is generally considered evidence of bad faith disruption for commercial gain. See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”).
Fifth, Respondent has engaged in a long-standing pattern of cybersquatting in registering multiple domains that infringe on the trademarks of other brand owners. Such cases demonstrate that Respondent has engaged in an extensive pattern of conduct designed to infringe upon the trademarks of others, indicative of bad faith. Evidence that a respondent previously registered domain names containing third-party trademarks establishes a pattern of cybersquatting, demonstrating bad faith registration and use. See Liberty Mutual Insurance Company v. Gioacchino Zerbo, FA1299744 (Forum Feb. 3, 2010). Respondent has been subject to numerous UDRP proceedings in the past. Where a respondent has been subject to multiple past UDRP proceedings, the Panel may find bad faith per Policy paragraph 4(b)(ii). Nearly 400 UDRP cases or more have been successfully brought against Respondent, and the registered domain names in those cases were transferred to each of the Complainants. See Tommy John, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico, FA2001001878688 (Forum Feb. 6, 2020) (finding bad faith registration and use pursuant to Policy paragraph 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings in which panels ordered the transfer of the disputed domain names containing the trademarks of the complainants). Here, since Respondent has registered and is using disputed domain names containing third-party trademarks; such conduct is indicative of bad faith registration and use.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) has been established by 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 <caterpillarg.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: June 24, 2023
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