national arbitration forum

 

DECISION

 

Caterpillar Inc. v. Alex Nicolov d/b/a Paragon Construction Co.

Claim Number: FA0911001293932

 

PARTIES

Complainant is Caterpillar Inc. (“Complainant”), represented by Christopher P. Foley, of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington, D.C., USA.  Respondent is Alex Nicolov d/b/a Paragon Construction Co. (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <caterpillarbg.com>, registered with GoDaddy.com, Inc.

 

PANEL

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.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 10, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 11, 2009.

 

On November 10, 2009, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <caterpillarbg.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On November 12, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 2, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@caterpillarbg.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 8, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant is a Fortune 100 company which manufactures and markets construction and mining equipment. 

 

Complainant owns registrations for the CATERPILLAR trademark with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 85,816, first issued March 19, 1912, and Reg. No. 345,499, first issued April 27, 1937).

 

Respondent has no license from or agreement with Complainant authorizing Respondent to use the CATERPILLAR mark.

 

Respondent registered the <caterpillarbg.com> domain name on July 2, 2008. 

 

The disputed domain name resolves to a website offering for sale products manufactured and sold by Complainant’s business competitors. 

 

Additionally, the website shows the title “Caterpillar BG” in a stylized font similar to the font Complainant uses when it stylizes its CATERPILLAR mark.

 

Respondent’s <caterpillarbg.com> domain name is confusingly similar to Complainant’s CATERPILLAR mark.

 

Respondent does not have any rights to or legitimate interests in the domain name <caterpillarbg.com>.

 

Respondent registered and uses the <caterpillarbg.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)   the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and

(2)   Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)   the same domain name was registered and is being used by Respondent in bad faith.

 

DISCUSSION

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."

 

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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true);  see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”

 

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:

 

i.         the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.       Respondent has no rights or legitimate interests in respect of the domain name; and

iii.      the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the CATERPILLAR trademark under Policy ¶ 4(a)(i) via its multiple registrations of the mark with the USPTO.  See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO adequate to establish rights pursuant to Policy ¶ 4(a)(i)); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that, where a complainant had submitted evidence of its mark registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).

 

The <caterpillarbg.com> domain name in comprised of Complainant’s entire CATERPILLAR mark; plus the letter combination “bg,” which is the country code top-level domain (“ccTLD”) for Bulgaria; and the generic top-level domain (“gTLD”) “.com.”  The addition of the gTLD “.com” is irrelevant for purposes of an analysis of confusing similarity under Policy ¶ 4(a)(i).  See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):

 

[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.

 

Likewise, the addition of the country-code abbreviation for Bulgaria is insufficient to alleviate the confusing similarity that arises from using Complainant’s full, unadulterated CATERPILLAR mark.  See MFI UK Ltd. v. Jones, D2003-0102 (WIPO May 8, 2003) (finding the <mfiuk.com> domain name confusingly similar to a complainant’s MFI mark because the addition of the letters “UK” were merely a common designation for the United Kingdom). 

 

Therefore, the Panel finds that the <caterpillarbg.com> domain name is confusingly similar to Complainant’s CATERPILLAR trademark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Pursuant to Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no rights to or legitimate interests in the <caterpillarbg.com> domain name.  Once that is done, the burden shifts to Respondent to show that it does indeed have rights to or legitimate interests in the disputed domain name.  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):

 

It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.

 

Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights to or legitimate interests in the disputed domain name.  Because no response was submitted in this case, we may presume that Respondent has no such rights or legitimate interests.  See also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):

 

Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).

 

We will nonetheless examine the record before us, in consideration of the factors listed in Policy ¶ 4(c), to determine if there is in it any basis for concluding that Respondent has any such rights or interests.

 

We begin by observing that Complainant asserts, and Respondent does not deny, that Respondent has no license from or agreement with Complainant authorizing Respondent to use its CATERPILLAR mark.  Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain name only as “Alex Nicolov d/b/a Paragon Construction Co.”  There being no other relevant evidence in the record, we must conclude that Respondent is not commonly known by the <caterpillarbg.com> domain name within the meaning of Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003): “Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”

 

We next note that Complainant argues, without objection from Respondent, that 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).  See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where a respondent used a complainant’s mark without authorization to attract Internet users to its website, which offered for sale products of that complainant’s business competitors); see also Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002):

 

Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).

 

Additionally, there is no dispute as to Complainant’s allegation to the effect that the website resolving from Respondent’s <caterpillarbg.com> domain name is entitled “Caterpillar BG” and that the typeface used for this title is the same as the font Complainant uses for its stylized mark.  Respondent is thus evidently passing itself off as Complainant, which is likewise neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial use pursuant to Policy ¶ 4(c)(iii). See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003):

 

It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .

 

See also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003):

 

Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

The Panel therefore finds that Complainant has satisfied the evidentiary requirements of Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

We have already concluded that the website resolving from the <caterpillarbg.com> domain name is a commercial one selling the construction and mining equipment goods of Complainant’s business competitors.  Respondent is therefore using the contested domain name, directly derived from Complainant’s CATERPILLAR trademark, to disrupt Complainant’s business by operating in competition with Complainant. This is evidence of bad faith under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that a respondent acted in bad faith in registering and using a contested domain name to attract Internet users to a website that competed with a complainant’s business); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002): “Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”

 

Given that the <caterpillarbg.com> domain name is confusingly similar to Complainant’s CATERPILLAR mark, Internet users are likely to be confused as to the possibility that Complainant has authorized or is in any way affiliated with Respondent in its use of the contested domain name as alleged. From the circumstances presented, we may presume that Respondent profits, whether by means of click-through fees or otherwise, from its employment of Complainant’s mark as alleged in the Complaint. Respondent’s attempt to profit from this behavior is additional evidence of bad faith registration and use of the disputed domain under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that a respondent’s use of the <saflock.com> domain name to offer goods competing with a complainant’s business illustrates that respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv)); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that a respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands).

 

Finally under this heading, we have already taken note of the undenied allegation of the Complaint to the effect that Respondent copied the font which Complainant employs with its CATERPILLAR mark when it designed the website resolving from the disputed <caterpillarbg.com> domain name.  This act of passing itself off as Complainant is evidence of Respondent’s bad faith registration and use of the contested domain name pursuant to Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that a respondent's use of <monsantos.com> to misrepresent itself as a complainant and thereby to provide misleading information to the public supported a finding of bad faith under the Policy); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that a respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the false impression that a complainant had endorsed or sponsored a respondent’s unapproved website).

 

For all of these reasons, the Panel finds that Complainant has satisfied its obligations under Policy ¶ 4(a)(iii).

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.

 

Accordingly, it is Ordered that the <caterpillarbg.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

 

 

Terry F. Peppard, Panelist

Dated:  December 16, 2009

 

 

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