Caterpillar Inc. v. rand
Claim Number: FA1908001858266
Complainant is Caterpillar Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is rand (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <caterpillar-service-manual.com> and <cat-manual.com>, registered with Eranet International Limited.
The undersigned certifies that he has acted independently and impartially and to the best of his her 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 August 20, 2019; the Forum received payment on August 20, 2019.
On August 28, 2019, Eranet International Limited confirmed by e-mail to the Forum that the <caterpillar-service-manual.com> and <cat-manual.com> domain names are registered with Eranet International Limited and that Respondent is the current registrant of the names. Eranet International Limited has verified that Respondent is bound by the Eranet International 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 August 29, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 18, 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@caterpillar-service-manual.com, postmaster@cat-manual.com. Also on August 29, 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 September 20, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant 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 rights in the CATERPILLAR and CAT marks through its trademark registrations with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <caterpillar-service-manual.com> and <cat-manual.com> domain names are confusingly similar to Complainant’s CATERPILLAR and CAT marks as each incorporate one of the marks in their entirety, along with a generic or descriptive term (“service” and/or “manual”), a hyphen and a “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <caterpillar-service-manual.com> and <cat-manual.com> domain names. Respondent is not licensed or authorized to use Complainant’s CATERPILLAR or CAT mark and is not commonly known by either of the at-issue domain names. Additionally, Respondent fails to use the at-issue domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s domain names purport to offer competing, unauthorized versions of Complainant’s proprietary manuals.
Respondent registered and uses the <caterpillar-service-manual.com> and <cat-manual.com> domain names in bad faith. Respondent’s registration of two (2) domain names that incorporates Complainant’s marks indicates a pattern of bad faith registration. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name where it passes off as Complainant and offers competing goods. Respondent also attempts to commercially benefit from pay-per-click links found at the domain names’ resolving website. Finally, Respondent had actual knowledge of Complainant’s CATERPILLAR and CAT marks prior to registering the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the CATERPILLAR and CAT marks through its registration of such marks 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 and CAT trademarks.
Respondent uses the at-issue domain names to display and capitalize on pay-per-click links to third parties including but not limited to links to Complainant’s competition, as well as to publically offer purported copies of Complainant’s service related manuals for commercial gain without authorization to do so.
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 each of the CATERPILLAR and CAT marks evidences Complainant’s rights in such marks 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 names each contain Complainant’s entire CATERPILLAR or CAT trademark followed by either the generic term “service manual” or “manual” respectively, and conclude with the top level domain name “.com”. The differences between the at-issue <caterpillar-service-manual.com> and <cat-manual.com> domain names and Complainant’s CATERPILLAR or CAT trademark are insufficient to distinguish either domain name from Complainant’s relevant trademark for the purposes of the Policy. In fact, the inclusion of the term “service manual” or simply “manual” in the domain names enhances any confusion between the domain names and Complainant’s trademarks as the terms suggest Complainant’s service manual related products. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <caterpillar-service-manual.com> and <cat-manual.com> domain names are each confusingly similar to Complainant’s CATERPILLAR and CAT trademark respectively. 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, Caterpillar Inc. v. Greg Poole d/b/a Industrial Tests, Inc., FA 1303230 (Forum March 12, 2010) (finding the domain name <caterpillarservices.com> confusingly similar to Complainant’s CATERPILLAR mark because “It is well established that combining descriptive or generic words with another party’s trademark in a domain name will not normally serve to avoid confusion between the domain name and the trademark. This is particularly so when the descriptive or generic word has an obvious relationship to the trademark owner’s business, products, or services. . . . The Panel is of the view that an average person seeing the Primary Domain Name [<caterpillarservices.com>] would likely believe that those words refer to services offered by Complainant.”); see also, Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”).
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 names. 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 either of the at‑issue domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “rand” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by either the <caterpillar-service-manual.com> or the <cat-manual.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 names address a website that offers unauthorized and competing version of Complainant’s proprietary manuals. Using the confusingly similar domain names to inappropriately benefit from the unauthorized use of Complainant’s intellectual property 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 General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”).
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 names were each registered and used in bad faith. As discussed below without limitation, 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) with regard to each domain name.
First, Respondent registered two domain names that include Complainant’s trademarks. Respondent’s multiple registrations of confusingly similar domain names are each similar to a trademark owned by Complainant and thus show Respondent’s pattern of inappropriate domain registration. This pattern suggests Respondent’s bad faith in the instant case pursuant to Policy ¶ 4(b)(ii). See The Toronto-Dominion Bank v. Ryan G Foo / PPA Media Services / Jinesh Shah / Whois Privacy Corp. / Domain Administratory / Fundacion Private Whois / Domain Admin / Whois Privacy Corp, FA1408001576648 (Forum Jan. 12, 2015) (“The Panel determines that Respondent’s documented history of adverse UDRP rulings, as well as Respondent’s multiple registrations relating to Complainant’s marks, are independently sufficient to constitute a pattern as described by Policy ¶ 4(b)(ii). Therefore the Panel finds bad faith under the provision.”).
Furthermore, Respondent uses the <caterpillar-service-manual.com> and <cat-manual.com> domain names to address websites designed to compete with Complainant by exploiting the trademark value of such domain names. That Respondent passes itself as Complainant and offers copies of Complainant’s proprietary service documents on websites addressed by the at-issue domain names is disruptive to Complainant’s business and shows Respondent has acted in bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA 1623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also, Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business…to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also, Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA 1579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”).
Moreover, Respondent’s relevant websites also display links to third party websites including some that compete with Complainant thereby further evidencing bad faith pursuant to Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”).
Finally, Respondent had actual knowledge of Complainant’s rights in the CATERPILLAR mark when it registered the <caterpillar-service-manual.com> and <cat-manual.com> domain names. Respondent’s actual knowledge is evident from the notoriety of Complainant’s trademarks, from the fact that Respondent registered two domain names containing two of Complainant’s trademarks, from Respondent’s use of Complainant’s CAT logo as a favicon, from Respondent’s use of Complainant’s protected intellectual property on the at-issue domain name related website(s), and from Respondent’s use of the domain names to offer Complainant’s manuals. Registering and using a confusingly similar domain 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 <caterpillar-service-manual.com> and <cat-manual.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 23, 2019
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