Caterpillar Inc. v. GREENWHITE TECHNOLOGIES / KENNEDY IBEH
Claim Number: FA1904001841277
Complainant is Caterpillar Inc. (“Complainant”), represented by Stephanie Bald of Kelly IP, LLP, Washington DC, USA. Respondent is GREENWHITE TECHNOLOGIES / KENNEDY IBEH (“Respondent”), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bullcatus.com>, registered with Name.com, Inc.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on April 30, 2019; the Forum received payment on April 30, 2019.
On May 1, 2019, Name.com, Inc. confirmed by e-mail to the Forum that the <bullcatus.com> domain name (the Domain Name) is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 6, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of May 28, 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@bullcatus.com. Also on May 6, 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 May 29, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 the world’s largest manufacturer of construction and mining equipment, diesel and natural gas engines, industrial gas turbines, and diesel-electric locomotives. It has rights in the CAT mark based upon its registration of that mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 778,638, registered Oct. 13, 1964). Respondent’s <bullcatus.com> Domain Name is confusingly similar to Complainant’s CAT mark because it wholly incorporates the mark, merely adding the terms “bull” and “us,” as well as the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the Domain name. Respondent is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use because the name falsely suggests an affiliation with Complainant, and the web site resolving from it passes off as and impersonates the web site of an authorized dealer of Complainant’s products and services and offers or purports to offer goods of Complainant’s competitors and of Complainant for sale. Further, Respondent is not commonly known by the Domain Name.
Respondent registered and uses the Domain Name in bad faith. It attempts to attract Internet traffic to its web site by creating confusion as to the source, sponsorship, affiliation or endorsement of its web site, it disrupts the business of Complainant, it impersonates and passes off as the site of an authorized dealer of Complainant’s products, and Respondent had actual knowledge of Complainant and its CAT mark when it registered the Domain Name.
B. Respondent
Respondent did not 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 provides that in order to obtain an order cancelling or transferring a domain name, Complainant must prove each of the following three elements:
(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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO 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 as follows with respect to the matters at issue in this proceeding:
The CAT mark was registered to Caterpillar Tractor Co. with the USPTO (Reg. No. 778,638) on October 13, 1964 and was subsequently assigned to Complainant. Complaint Exhibit 10. Registration of a mark with the USPTO is sufficient to establish rights in the mark for the purposes of Policy ¶ 4(a)(i). 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).”). As assignee and current owner of the CAT mark, Complainant has sufficient rights in the mark to bring and maintain this proceeding.
Respondent’s <bullcatus.com> Domain Name is confusingly similar to Complainant’s mark as it incorporates the CAT mark verbatim, merely adding the terms “bull” and “us,” as well as the “.com” gTLD. These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). The addition of generic, descriptive, or geographic terms and a gTLD to a complainant’s mark are insufficient to negate a finding of confusing similarity pursuant to Policy ¶ 4(a)(i). Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)), Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sep. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy ¶ 4(a)(i) analysis.”). Further, the WIPO Overview 3.0 at ¶ 1.7, states that the test for confusing similarity “typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name, and this establishes its confusing similarity to Complainant’s mark.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the CAT mark, in which Complainant has substantial and demonstrated rights.
Rights or Legitimate Interests
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to the respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to respondent of the dispute, respondent has used or has made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) respondent (as an individual, business or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or
(iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or other fair use because the name resolves to a web site which impersonates Complainant’s authorized dealers and competes directly with Complainant, and (ii) Respondent is not commonly known by the Domain Name. These allegations are supported by competent evidence.
Complaint Exhibit 11 is a screenshot of the web site resolving from the Domain Name. It features the name Bull Cat at the top and purports to offer Caterpillar equipment for sale or rent, Caterpillar spare parts, and refurbishing services. It says that it is preparing to launch its global distributorship and partnership in every country, beginning in 2019. It uses graphics, text, layout and appearance very similar to those used by authorized Caterpillar dealers, screenshots of whose web sites are displayed in Complaint Exhibit 9. It lists its address as essentially the same as Complainant’s address (105 Lake Cook Drive instead of 510 Lake Cook Drive) in Deerfield, Illinois, and falsely impersonates an employee of Complainant. Respondent is thus impersonating and passing off as an authorized dealer or representative of Complainant. Using a confusingly similar domain name to pass off as a complainant does not qualify as a bona fide offering of goods or services for the purposes of Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iii). 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).”).
Additionally, Respondent’s web site offers competitors’ products, primarily spare parts, for sale. Using a disputed domain to sell competing goods likewise fails to qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Gumwand Inc. v. jared brading, FA 1794058 (Forum Aug. 6, 2018) (finding that use of a confusingly similar domain name to resolve to a website which purported to sell chewing gum-removal equipment which was either counterfeit versions of Complainant’s goods, or goods which competed directly with Complainant’s chewing gum-removal equipment business, was not a bona fide offering of goods or services or a legitimate noncommercial or fair use within Policy ¶¶ 4(c)(i) or (iii)), Caterpillar v. Nicolov, FA1293932 (Forum Dec. 16, 2009) (“. . . the <caterpillarbg.com> domain name resolves to a commercial website offering the goods of Complainant’s business competitors. This is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or a fair use of the contested domain name under Policy ¶ 4(c)(iii).”).
The information furnished to the Forum by the registrar lists the registrant of the Domain Name as “Greenwhite Technologies,” and the contact name as “Kennedy Ibeh.” Neither of these names bears any resemblance to the Domain Name. UDRP panels have consistently held that, in the absence of evidence to the contrary, a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The Panel is satisfied that Respondent has not been commonly known by the Domain Name within the meaning of Policy ¶ 4(c)(ii).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name;
(ii) respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that respondent has engaged in a pattern of such conduct;
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of respondent’s web site or location or of a product of service on respondent’s web site or location.
The evidence of Respondent’s uses of the Domain Name discussed above in connection with the rights or legitimate interests analysis also supports a finding of bad faith registration and use upon the foregoing grounds set forth in the Policy and upon additional grounds adopted by UDRP panels over the years. First, it is evident that Respondent registered and is using the Domain Name intentionally to attract, for commercial gain, Internet users to its website at <bullcatus.com> by creating a likelihood of confusion with Complainant and its CATERPILLAR mark as to the source, sponsorship, affiliation, and endorsement of that web site. This fits clearly within the circumstances articulated by Policy ¶ 4(b)(iv) and constitutes evidence of bad faith. Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Second, Respondent registered and is using the <bullcatus.com> Domain Name to pass off as an authorized dealer of Complainant’s products and services. Respondent’s web site also offers for sale products of some of Complainant’s competitors. This disrupts Complainant’s business. Respondent’s purpose and intent, of course, is to divert business away from Complainant and its authorized dealers to its own business entity, and this qualifies Respondent as a competitor of Complainant. Respondent’s registration and use of the Domain Name in this manner fits squarely within the circumstances articulated by Policy ¶ 4(b)(iii) and is compelling evidence of fad faith. LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)).
Third, Respondent’s passing off as and impersonating authorized dealers of Complainant is also, in and of itself, evidence of bad faith registration and use. Policy ¶ 4(b) recognizes that mischief can assume many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and the mere act of using a Domain Name to pass off as a complainant has often been held by UDRP panels to be evidence of bad faith. Caterpillar v. Comercio e Importaciones EIRL, FA 097083 (Forum May 31, 2001) (holding respondent’s use of Complainant’s CAT logo “is indicative of an attempt to mislead potential customers into believing that Respondent is associated with or authorized by Caterpillar.”).
Finally, it is evident from the close similarity between Complainant’s mark and the web sites of its authorized dealers on the one hand and Respondent’s Domain Name and web site on the other that Respondent had actual knowledge of Complainant’s marks in January 2019, when it registered the Domain Name. See, Complaint Exhibit 1 for registration date. This is further supported by the fact that in selecting the Domain Name, Respondent copied and took advantage of Complainant’s longstanding practice of permitting its authorized dealers to incorporate the CAT mark into their own domain names, e.g., <albancat.com>, <miltoncat.com> and others described in the Complaint and illustrated in Complaint Exhibit 9. In light of the open ended, non-exclusive nature of Policy ¶ 4(b), actual knowledge of a complainant’s rights in a mark prior to registering an identical or confusingly similar domain name has often been held to be evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). 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).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <bullcatus.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
May 31, 2019
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