Caterpillar Inc. v. Hulmiho Ukolen / Poste restante
Claim Number: FA1903001835991
Complainant is Caterpillar Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is Hulmiho Ukolen / Poste restante (“Respondent”), Finland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <catterpillar.com>, registered with Gransy, s.r.o..
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 26, 2019; the Forum received payment on March 26, 2019.
On April 2, 2019, Gransy, s.r.o. confirmed by e-mail to the Forum that the <catterpillar.com> domain name is registered with Gransy, s.r.o. and that Respondent is the current registrant of the name. Gransy, s.r.o. has verified that Respondent is bound by the Gransy, s.r.o. 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 April 4, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 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 postmaster@catterpillar.com. Also on April 4, 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 26, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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.
A. Complainant
Complainant is a leading United States exporter and the world’s largest manufacturer of construction and mining equipment, diesel and natural gas engines, industrial gas turbines, and diesel-electric locomotives. Complainant has rights in the trademark CATERPILLAR based upon its longstanding use of the mark since 1904 and its various registrations with the United States Patent and Trademark Office (“USPTO”), the earliest of which was filed in 1910. Complainant also operates a website at the address www.caterpillar.com. Respondent’s <catterpillar.com> domain name, registered on July 9, 2013, is confusingly similar to Complainant’s CATERPILLAR mark because it is a misspelled and typosquatted version of Complainant’s mark with the addition of a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <catterpillar.com> domain name. Respondent has not been commonly known by the disputed domain name, nor has Complainant authorized Respondent to use its CATERPILLAR mark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent operates a pay-per-click website featuring advertisements for various commercial websites. Respondent also engaged in typosquatting when it registered the disputed domain name. Furthermore, Respondent offered to sell the <catterpillar.com> domain name for a price that far exceeds its out-of-pocket registration costs.
Respondent registered and uses the <catterpillar.com> domain name in bad faith. Respondent registered the disputed domain name primarily to sell, rent, or otherwise transfer it for consideration in excess of its documented expenses. Respondent also has engaged in a pattern of bad faith registration as it has several adverse UDRP decisions against it. Further, Respondent disrupts Complainant’s business and attempts to attract, for commercial gain, users to the disputed domain name where it features competing pay-per-click links. Respondent has also engaged in typosquatting when it registered the disputed domain name. Finally, Respondent registered the disputed domain name in bad faith because Respondent had actual knowledge of Complainant’s rights in its famous CATERPILLAR mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
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 asserts rights in the CATERPILLAR trademark based upon longstanding use and registration with the United States Patent and Trademark Office (“USPTO”). Registration of a mark with a governmental authority such as the USPTO is sufficient to establish rights in the mark for purposes of Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA 1625332 (Forum July 17, 2015) (finding, “Registration of a mark with a governmental authority (or, in this case, multiple governmental authorities) is sufficient to establish rights in the mark for purposes of Policy ¶4(a)(i)”). Therefore, the Panel finds that Complainant has rights in the CATERPILLAR mark for purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <catterpillar.com> domain name is confusingly similar to Complainant’s CATERPILLAR mark because it is a misspelled version of Complainant’s mark with the addition of the “.com” gTLD. The Panel has held the addition of letters—particularly of those that create a common misspelling— with the addition of a gTLD, fails to sufficiently distinguish a domain name from a registered mark. See Coachella Music Festival, LLC v. Domain Administrator / China Capital Investment Limited, FA 1734230 (Forum July 17, 2017) (“The addition of letters—particularly of those that create a common misspelling—fails to sufficiently distinguish a domain name from a registered mark.”); 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’). Here, Respondent merely adds the letter “t” and the “.com” gTLD to the CATERPILLAR mark. Therefore, the Panel agrees with Complainant that Respondent’s <catterpillar.com> domain name is confusingly similar to the CATERPILLAR mark.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).
Complainant argues that Respondent has no rights or legitimate interests in the <catterpillar.com> domain name because Respondent has not been commonly known by the disputed domain name, nor has Complainant authorized Respondent to use its CATERPILLAR mark. Prior Panels have held that a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name. See, e.g., Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Here, the WHOIS information of record lists the registrant as “Hulmiho Ukolen / Poste restante,” and there is no other information to suggest that Respondent is known otherwise or that it was authorized to use the CATERPILLAR mark. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent does not make a bona fide offering of goods and services nor a noncommercial or fair use of the disputed domain and therefore has no rights or legitimate interests in the <catterpillar.com> name because Respondent operates a pay-per-click website featuring advertisements for various commercial websites. Panels have held that a respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services. See, e.g., Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services). In support of this contention, Complainant provides a screenshot of the disputed domain name’s resolving website showing monetized links to various third parties who are involved in the same industry as Complainant. Therefore, in light of the evidence submitted and the Respondent’s failure to file a Response or make any other submission in this case, the Panel finds that Respondent does not make a bona fide offering and noncommercial or fair use and therefore has no rights or legitimate interests in the <catterpillar.com> domain name.
Furthermore, Complainant argues that Respondent’s offer to sell the <catterpillar.com> domain name is evidence that Respondent lacks a legitimate interest in the disputed domain name. Offers to sell a disputed domain name may indicate a lack of rights or legitimate interests under Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant provides a screenshot of the “<afternic.com>” website, which lists the disputed domain name for sale at a price of $12,250.00. Therefore, the Panel finds that Respondent’s offer to sell the <catterpillar.com> domain name is evidence that Respondent lacks a legitimate interest in the disputed domain name per Policy ¶ 4(a)(ii).
Finally, Complainant argues that Respondent has no rights or legitimate interests in the <catterpillar.com> domain name because the disputed domain name constitutes typosquatting, and typosquatting does not evidence a bona fide offering of goods or services or a legitimate noncommercial or fair use. Prior Panels have held that a respondent’s act of typosquatting provides additional evidence that respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Pham Dinh Nhut, FA1502001605819 (Forum Apr. 17, 2015) (“Respondent’s acts of typosquatting provide additional evidence that respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).”). This Panel agrees and finds that the obvious typosqatting of the CATERPILLAR mark by the <catterpillar.com> domain name further supports a finding that the Respondent has no rights or legitimate interests in the domain per Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered the <catterpillar.com> domain name in bad faith because Respondent had actual knowledge of Complainant’s rights in its famous CATERPILLAR mark. Actual knowledge of a complainant’s mark may support a finding of bad faith under Policy ¶ 4(a)(iii). See InfoSpace, Inc. v. Greiner, FA 227653 (Forum Mar. 8, 2004) (“Respondent’s domain name is a simple and popular variation of a trademark commonly used by typosquatters – the addition of the ‘www’ prefix to a known trademark, in this case the DOGPILE mark. Such a domain name evidences actual knowledge of the underlying mark prior to the registration of the domain name, and as Respondent failed to submit any evidence to counter this inference [sic], Respondent’s actions evidence bad faith registration of the disputed domain name.”) Here, Complainant asserts the worldwide fame of Complainant’s mark, Respondent’s selection and registration of the disputed domain name, which is a typosquatted version of Complainant’s CATERPILLAR mark, and the fact that Respondent’s website associated with the domain name directly refers to Complainant’s CATERPILLAR mark and its products. It argues that these factors all evince Respondent’s actual knowledge prior to registration. The Panel agrees and finds that Respondent registered the <catterpillar.com> domain name in bad faith because Respondent had actual knowledge of Complainant’s rights in its CATERPILLAR mark.
Complainant next argues that Respondent’s registration of the <catterpillar.com> domain name constitutes bad faith because Respondent registered the disputed domain name to sell, rent, or otherwise transfer it for consideration in excess of its documented expenses. Attempting to sell a disputed domain name for more than out-of-pocket costs may demonstrate bad faith under 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). Here, Complainant provides a printout showing Respondent’s offer to sell the <catterpillar.com> domain name on <afternic.com> at a price of $12,250.00. Therefore, the Panel finds that Respondent registered the disputed domain name in bad faith to sell, rent, or otherwise transfer it for consideration in excess of its documented expenses per Policy ¶ 4(b)(i).
Complainant further contends that Respondent’s registration of the <catterpillar.com> domain name is part of a pattern of bad faith registration and use of domain names. A pattern of bad faith registration can be established by a showing of prior adverse UDRP precedent and such a pattern can indicate bad faith per Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA1209001464477 (Forum Nov. 30, 2012) (finding that where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants this established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Complainant includes a list of prior UDRP cases where Respondent, “Ukolen,” has been ordered to transfer ownership of domain names including at least one in which the Panel noted held that its pattern of conduct evidenced bad faith. Kellogg North America v. Ukolen, FA 1649542 (Forum Jan. 4, 2016) (“Respondent has been a respondent in a lengthy series of UDRP decisions in which panels have found that it registered and used domain names in bad faith. . . . Under Policy ¶ 4(b)(ii), this constitutes a pattern of abusive registrations and uses which stands as proof of Respondent’s bad faith in the registration and use of the <kashicereal.com> domain name.”). This Panel therefore determines that the registration and use of the <catterpillar.com> domain name is part of a pattern of conduct and is evidence of Respondent’s bad faith per Policy ¶ 4(b)(ii).
Next, Complainant asserts Respondent’s registration and use of the <catterpillar.com> domain name constitutes bad faith because Respondent disrupts Complainant’s business by using the disputed domain name for a pay-per-click website that references Complainant, its CATERPILLAR mark, and its products, unfairly competing with Complainant for internet traffic, and interfering with Complainant’s ability to control the use of its federally registered CATERPILLAR mark. Use of a disputed domain name to disrupt a complainant’s business by featuring competing pay-per-click links may demonstrate bad faith under Policy ¶¶ 4(b)(iii) and/or (iv). See block.one v. Negalize Interactive Things, FA 1798280 (Forum Aug. 21, 2018) (“Offering links to competing products or services can demonstrate bad faith under Policy ¶ 4(b)(iii) where a respondent registers a domain name that is confusingly similar to the mark of another.”); see also HEB Grocery Company, LP v. Nikolay Schastenko / SEO Ukraine, FA 1789019 (Forum July 3, 2018) (“Complainant provides screenshots of the domain name’s resolving website and claims, without contradiction that Respondent commercially benefits from an ‘Affiliate Program’ in which users are redirected to job-oriented websites such as ‘Snagajob’ and ‘Monster.’ Therefore, Respondent’s use of the <hebcareers.net> domain name to attract users for commercial gain demonstrates bad faith per Policy ¶ 4(b)(iv).”) Complainant provides a screenshot of the disputed domain name’s resolving website in support of this contention and it is clear to this Panel that it contains monetized links to companies in Complainant’s industry. In light of the above and in the absence of any Response or other submission by the Respondent, the Panel finds that Respondent’s registration and use of the <catterpillar.com> domain name constitutes bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <catterpillar.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: April 30, 2019
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