Caterpillar Inc. v. Holding Account
Claim Number: FA1903001835712
Complainant is Caterpillar Inc. (“Complainant”), represented by Stephanie Bald of Kelly IP, LLP, District of Columbia, United States. Respondent is Holding Account (“Respondent”), Florida, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwcaterpillar.com>, registered with Name Nelly Corporation.
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 the Forum electronically on March 25, 2019; the Forum received payment on March 25, 2019.
On March 26, 2019, Name Nelly Corporation confirmed by e-mail to the Forum that the <wwwcaterpillar.com> domain name is registered with Name Nelly Corporation and that Respondent is the current registrant of the name. Name Nelly Corporation has verified that Respondent is bound by the Name Nelly Corporation 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 March 28, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 17, 2019 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 email@example.com. Also on March 28, 2019, 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, the Forum transmitted to the parties a Notification of Respondent Default.
On April 19, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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, the 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 name be transferred from Respondent to Complainant.
Complainant contends as follows:
Complainant is a Fortune 100 company and leading U.S. exporter, Caterpillar is the world’s largest manufacturer of construction and mining equipment, diesel and natural gas engines, industrial gas turbines, and diesel-electric locomotives.
Complainant has the rights to the CATERPILLAR mark through its trademark registration with the United States Patent and Trademark Office.
Respondent’s <wwwcaterpillar.com> domain name is confusingly similar to Complainant’s CATERPILLAR mark because Respondent incorporates Complainant’s mark in its entirety and merely adds non-distinguishing elements, mainly, the prefix “www” and the “.com” generic top level domain (“gTLD”) to the mark.
Respondent has no rights or legitimate interest in the <wwwcaterpillar.com> domain name because Respondent is not commonly known by the disputed domain name. Additionally, Respondent does not use the <wwwcaterpillar.com> domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Specifically, Respondent has offered to sell the <wwwcaterpillar.com> domain name showing that Respondent lacks a legitimate interest in using the domain name. Moreover, Respondent’s registration and use of a confusingly similar domain name that is virtually identical to Complainant’s URL, www.caterpillar.com, constitutes typosquatting which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Lastly, Respondent’s domain name resolves to a pay-per-click website featuring advertisements for various commercial websites.
Respondent registration and use of the <wwwcaterpillar.com> domain name constitutes bad faith. Respondent attempts to sell the disputed domain name for more than out-of-pocket costs. Additionally, Respondent uses the domain name to disrupt Complainant’s business and intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant. Respondent’s omission of the period in the <www.caterpillar.com> domain name constitutes typosquatting. Finally, Respondent was additionally well-aware of Complainant’s rights in the CATERPILLAR mark due to Complainant’s extensive, global use, and fame of the mark.
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the CATERPILLAR mark through its registration of such mark with the USPTO.
Respondent is not affiliated with Complainant and has not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in the CATERPILLAR trademark.
Respondent uses the at-issue domain names to display and capitalize on pay-per-click links including but not limited to links to Complainant’s competition.
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 name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the CATERPILLAR mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Additionally, the at-issue domain name contains Complainant’s entire CATERPILLAR trademark prefixed by the URL related term “www” and concluded with the top level domain name “.com.” The differences between the at-issue <wwwcaterpillar.com> domain name and Complainant’s CATERPILLAR trademark are insufficient to distinguish the domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <wwwcaterpillar.com> domain name is confusingly similar to Complainant’s CATERPILLAR trademark. 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).
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). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark 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 the at‑issue domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Holding Account” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <wwwcaterpillar.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the either at-issue domain name 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).
Respondent’s domain name addresses a website displaying pay-per-click links, some to competing third party websites. Using the confusingly similar domain names to commercially benefit from pay-per-click links shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy¶ 4(c)(iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”); see also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (Forum Jan. 1, 2015) (“The Panel finds that Respondent’s use of the <cheepcaribbean.com> name to promote links in competition with Complainant’s travel agency services does not fall within Policy ¶ 4(c)(i)’s bona fide offering of goods or services, nor does it amount to a legitimate noncommercial or fair use described in Policy ¶ 4(c)(iii).”).
Likewise, Respondent’s offer to sell the domain name, as discussed below regarding bad faith, also shows that Respondent lacks rights and legitimate interests in <wwwcaterpillar.com>. See Twentieth Century Fox Film Corporation v. Diego Ossa, FA1501001602016 (Forum Feb. 26, 2015) (“The Resolving parked page advertises the sale of the domain name with the message ‘Would you like to buy this domain?’ The Panel accepts this offer as demonstrative of Respondent’s willingness to sell the disputed domain name, and finds that such behavior provides additional evidence that Respondent lacks rights or legitimate interests in the disputed domain name.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain name was registered and used in bad faith. Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may independently conclude that Respondent acted in bad faith pursuant to Policy ¶4(a)(iii) regarding the <wwwcaterpillar.com> domain name.
First, Respondent uses the <wwwcaterpillar.com> domain name to address a website offering pay-per-click links, some of which compete with Complainant. Using the domain name in this manner is disruptive to Complainant’s business and shows Respondent to be exploiting the confusion it created between <wwwcaterpillar.com> and Complainant’s trademark so that it might inappropriately profit from Complainant’s goodwill. Using the at-issue domain name in this manner indicates bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Health Republic Insurance Company v. Above.com Legal, FA1506001622088 (Forum July 10, 2015) (“The use of a domain name’s resolving website to host links to competitors of a complainant shows intent to disrupt that complainant’s business, thereby showing bad faith in use and registration under Policy ¶ 4(b)(iii).”); see also, Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)).
Next, the at-issue domain name is listed for sale on a third party website and Respondent provides a link to the listing via its <wwwcaterpillar.com> website. Respondent’s apparent offer to sell the domain name for an amount which is in excess of its out-of-pocket costs indicates Respondent’s bad faith registration and use of the domain name per Policy ¶ 4(b)(i). See Regions Bank v. Darla atkins, FA 1786409 (Forum June 20, 2018) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs).
Moreover, Respondent engages in a form of typosquatting. Typosquatting is a practice intent on capitalizing on internet users’ inadvertent typographical errors or their misreading of a URL. In typosquatting, a respondent deliberately introduces typographical errors or misspellings into a trademark, or as here into a URL, and then uses the resulting string in a domain name, hoping that internet users will either: 1) inadvertently type the malformed string when searching for products or services related to the domain name’s target trademark, URL, or official domain name; and/or 2) in viewing the domain name will confuse it with its confusingly similar target. Here, in creating the at-issue <wwwcaterpillar.com> domain name Respondent drops the period/dot from the URL www.caterpillar.com, a legitimate URL for Complainant. Typosquatting, in itself, indicates bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also, Xerox v. Anti-Globalization Domains, FA 210224 (Forum Dec. 22, 2003 (“Respondent’s <wwwxerox.com> domain name is … is a typosquatted version of Complainant’s mark as Respondent merely omitted the period following the ‘www’ prefix that precedes Complainant’s mark in the domain name.”);
Finally, Respondent had actual knowledge of Complainant’s rights in the CATERPILLAR mark when it registered its <wwwcaterpillar.com> domain name. Respondent’s actual knowledge is, without limitation, evident from the notoriety of Complainant’s trademark and from the fact that Respondent’s <wwwcaterpillar.com> website offered links to Complainant’s competition. Registering and using a confusingly similar domain name with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwcaterpillar.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: April 21, 2019
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