Caterpillar Inc. v. mat maccormic / cattoolsus
Claim Number: FA2104001941026
Complainant is Caterpillar Inc. (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is mat maccormic / cattoolsus (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cattools.us>, registered with Tucows Domains 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 9, 2021; the Forum received payment on April 9, 2021.
On April 12, 2021, Tucows Domains Inc. confirmed by e-mail to the Forum that the <cattools.us> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 13, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 3, 2021 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@cattools.us. Also on April 13, 2021, 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 7, 2021, 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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 contends as follows:
Complainant, Caterpillar Inc., is the world’s largest manufacture of construction and mining equipment.
Complainant has rights in the CAT mark based on registration of such mark with the United States Patent and Trademark Office (“USPTO”). Complainant also owns and uses the domain name <cattools.com>.
Respondent’s <cattools.us> domain name is confusingly similar to Complainant’s mark because it simply adds the descriptive term “tools” and the “.us” county code top-level domain (“ccTLD”) to the CAT mark.
Respondent lacks rights and legitimate interests in the <cattools.us> domain name. Respondent is not commonly known by the at-issue domain name and Complainant has not authorized Respondent to use the CAT mark. Additionally, Respondent does not use the <cattools.us> domain for any bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domain to pass off as Complainant and offer unauthorized/counterfeit products for sale.
Respondent registered or uses the <cattools.us> domain name in bad faith. Respondent passes itself off as Complainant and offers unauthorized products for sale. Additionally, Respondent had constructive and/or actual knowledge of Complainant’s rights in the CAT mark based on the fame of the mark and Respondent’s efforts to pass itself off as Complainant on the resolving website for the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the CAT mark.
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 name after Complainant acquired rights in the CAT trademark.
Respondent’s <cattools.us> domain name addresses a website that features Complainant’s CAT logo and other intellectual property while offering products for sale that are falsely labeled with Complainant’s CAT mark and logo.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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 CAT mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).
The at-issue domain name contain Complainant’s entire CAT trademark followed by the generic term “tools” and concludes with the top level country code domain name “.us”. The differences between the at-issue <cattools.us> domain name and Complainant’s CAT trademark are insufficient to distinguish the domain name from Complainant’s CAT trademark for the purposes of the Policy. In fact, the inclusion of the term “tools” in the domain name enhances any confusion between Respondent’s domain name and Complainant’s trademark as the term suggests Complainant’s products and by its juxtaposition with Complainant’s mark creates a domain name that mimics the second level of Complainant’s genuine domain name, <cattools.com>. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <cattools.us> domain name is confusingly similar to Complainant’s CAT 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); see also, Caterpillar Inc. v. Greg Poole d/b/a Industrial Tests, Inc., FA 1303230 (Forum Mar. 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 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 either of the at‑issue domain name.
WHOIS information for the at-issue domain name identifies its registrant as “mat maccormic / cattoolsus” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by the <cattools.us> domain name. The Panel therefore concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(iii). 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 <cattools.us> domain name addresses a website that displays Complainant’s CAT logo and offers products that are falsely labeled with Complainant’s CAT mark and logo. Using the confusingly similar domain name to inappropriately benefit from the unauthorized use of Complainant trademark to offer what appear to be counterfeit products for sale shows neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii), nor a legitimate noncommercial or fair use under Policy¶ 4(c)(iv). See Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization).
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. As discussed below without limitation, circumstances are present from which the Panel may conclude that Respondent acted in bad faith regarding the <cattools.us> domain name pursuant to Policy ¶4(a)(iii).
As mentioned above concerning rights and legitimate interests, Respondent uses the <cattools.us> domain name to pass itself off as Complainant and to address a website designed to compete with Complainant by exploiting the domain name trademark value in furtherance of selling unauthorized or counterfeit products. Doing so is disruptive to Complainant’s business and also shows that Respondent is attempting to attract internet users to its commercial website. Respondent’s use of the domain name in this manner evidences that Respondent has acted in bad faith under Policy ¶¶ 4(b)(iii) and (iv). See CWC Direct LLC v. Ju Yu, FA1501001599464 (Forum Feb. 16, 2015) (“As Respondent is using the disputed domain name to sell counterfeit or unauthorized goods bearing the COLDWATERCREEK mark, the Panel finds evidence of Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iii).”); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
Moreover, Respondent had actual knowledge of Complainant’s rights in the CAT mark when it registered <cattools.us>. Respondent’s actual knowledge is evident from the notoriety of Complainant’s CAT trademark, from the fact that Respondent displays Complainant’s intellectual property on Respondent’s <cattools.us> website, and from Respondent’s use of the domain name to offer counterfeit versions Complainant products. Registering and using the confusingly similar <cattools.us> domain with knowledge of Complainant’s rights in such domain name demonstrates Respondent’s bad faith 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 usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cattools.us> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 10, 2021
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