Caterpillar Inc. v. Bobby Miles d/b/a Western
Cowboy Art
Claim Number: FA1006001331174
PARTIES
Complainant is Caterpillar Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <caterpillarskidsteer.us>,
registered with Fast Domain 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.
Louis E. Condon as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on June 22, 2010; the Forum received a hard copy
of the Complaint on June 22, 2010.
On June 22, 2010, Fast Domain Inc. confirmed by e-mail to the Forum that
the <caterpillarskidsteer.us> domain name is registered with Fast Domain Inc. and that Respondent is
the current registrant of the name. Fast
Domain Inc. has verified that Respondent is bound by the Fast Domain Inc.
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with the U. S. Department of Commerce’s
usTLD Dispute Resolution Policy (the “Policy”).
On June 23, 2010, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of July 13, 2010 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules
for usTLD Dispute Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On July 19, 2010, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Louis E. Condon 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. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <caterpillarskidsteer.us> domain name is confusingly similar to Complainant’s CATERPILLAR mark.
2.
Respondent does not have any rights or
legitimate interests in the <caterpillarskidsteer.us> domain name.
3.
Respondent registered and used the <caterpillarskidsteer.us>
domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Caterpillar Inc., is a
manufacturer of construction and mining equipment, diesel and natural gas
engines, industrial gas turbines, tractors, loaders, and other heavy-industry
equipment. Complainant owns multiple
trademark registrations for its CATERPILLAR mark with the United States Patent
and Trademark Office (“USPTO”):
Reg. No. 85,812 issued Mar. 19, 1912;
Reg. No. 345,499 issued Apr. 27, 1937; and
Reg. No. 2,448,848 issued May 8, 2001.
Respondent, Bobby Miles d/b/a Western Cowboy Art, registered the <caterpillarskidsteer.us> domain name
on June 6, 2008. The disputed domain
name resolves to a website advertising Respondent’s own inventory of
Complainant’s skid steer loaders along with pay-per-click links to third-party
websites offering competing construction equipment and other unrelated
websites.
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 the 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 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 the 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 the 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights; and
(2) the 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.
Identical
and/or Confusingly Similar
Complainant owns multiple trademark
registrations for its CATERPILLAR mark with the USPTO:
Reg. No. 85,812 issued Mar. 19,
1912;
Reg. No. 345,499 issued Apr. 27,
1937; and
Reg. No. 2,448,848 issued May 8, 2001.
The Panel finds Complainant has rights in the CATERPILLAR mark for the purposes of Policy ¶ 4(a)(i) by virtue of these federal trademark registrations. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to [UDRP] ¶ 4(a)(i).”).
Complainant argues that Respondent’s <caterpillarskidsteer.us> domain name is confusingly similar to Complainant’s CATERPILLAR mark because the disputed domain name begins with Complainant’s mark and adds only the phrase “skidsteer,” which refers to a product offered by Complainant, and the country-code top-level domain (“ccTLD”) “.us.” The Panel finds that the addition of a word or phrase that is descriptive of Complainant’s products or business does not differentiate the disputed domain name from Complainant’s mark and may even increase the confusing similarity. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to [UDRP] ¶ 4(a)(i).”). The Panel also finds that the presence of a ccTLD does not diminish confusing similarity under Policy ¶ 4(a)(i). See Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (“[T]he addition of a ccTLD is irrelevant to the [UDRP] ¶ 4(a)(i) analysis, as a top-level domain is require of all domain names.”); see also Allied Building Prods. Corp. v. Henkel, FA 827652 (Nat. Arb. Forum Dec. 11, 2006) (“[I]t is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis.”). Thus, the Panel finds that Respondent’s <caterpillarskidsteer.us> domain name is confusingly similar to Complainant’s CATERPILLAR mark according to Policy ¶ 4(a)(i).
The Panel finds
Policy ¶ 4(a)(i) has been satisfied.
Rights
or Legitimate Interests
Complainant alleges that Respondent does not have any rights or legitimate interests in the <caterpillarskidsteer.us> domain name. The burden shifts to Respondent to prove that he does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) when the Complainant makes a prima facie case in support of its allegations. The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume Respondent does not have rights or legitimate interests in the disputed domain name. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also 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 [UDRP].”). However, in the interest of fairness, the Panel will examine the record to determine whether Respondent holds any rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <caterpillarskidsteer.us> domain name. Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant argues that Respondent is not commonly known by the <caterpillarskidsteer.us> domain name. In addition to not having any license or authorization to use Complainant’s mark, the WHOIS information fails to identify Respondent as the disputed domain name, listing the registrant instead as “bobby miles d/b/a Western Cowboy Art.” The Panel finds that this lack of evidence supporting that Respondent is commonly known by the disputed domain name indicates that Respondent does not have rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent uses the <caterpillarskidsteer.us> domain name to redirect Internet users to a webpage advertising Respondent’s sale of Complainant’s skid steer loaders. Complainant asserts, and the Panel finds, that Respondent’s use of the disputed domain name to compete with Complainant in the sale of Complainant’s own products is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial use according to Policy ¶ 4(c)(iv). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); see Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use).
Complainant also argue that Respondent’s website resolving from the <caterpillarskidsteer.us> domain name features pay-per-click advertisements to both unrelated websites and websites offering construction equipment and other products produced by Complainant’s competitors. The Panel finds that the appropriation of Complainant’s CATERPILLAR mark to advertise pay-per-click links to Complainant’s competitors does not comport with the bona fide offering of goods or services or legitimate noncommercial or fair use requirements of Policy ¶¶ 4(c)(ii) and 4(c)(iv). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds
Policy ¶ 4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
Complainant contends that Respondent’s <caterpillarskidsteer.us> domain name redirects Internet users to Respondent’s own website which competes with Complainant in two ways: Respondent advertises his own inventory of Complainant’s skid steer loaders and displays pay-per-click links to Complainant’s competitors offering similar products. The Panel finds that Respondent’s sale of skid steer loaders casts Respondent as a competitor of Complainant and his use of Complainant’s mark to compete with Complainant through personal sales and the advertisement of pay-per-click links is disruptive to Complainant’s business. The Panel finds Respondent’s activities therefore demonstrate that he registered and uses the disputed domain name in bad faith according to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to UDRP ¶ 4(b)(iii).”); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under UDRP ¶ 4(b)(iii)).
Complainant alleges
that Respondent both sells Complainant’s products and advertises pay-per-click
links on the <caterpillarskidsteer.us>
domain name. Respondent’s activities
therefore give him the opportunity to profit in two ways: from the sale of goods (Complainant’s skid
steer loaders) and from the click-through fees generated as the diverted
Internet users click on any of the pay-per-click links. The Panel finds that Respondent’s efforts to
profit by using Complainant’s well-known mark to attract Internet users and create
confusion reveal bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Velv,
LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that
the respondent’s use of the <arizonashuttle.net> domain name, which
contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic
to the respondent’s website offering competing travel services violated UDRP ¶
4(b)(iv)); see also Univ. of Houston Sys. v.
Salvia Corp., FA 637920 (Nat. Arb. Forum Mar.
21, 2006) (“Respondent is using the
disputed domain name to operate a website which features links to competing and
non-competing commercial websites from which Respondent presumably receives
referral fees. Such use for Respondent’s
own commercial gain is evidence of bad faith registration and use pursuant to UDRP
¶ 4(b)(iv).”).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <caterpillarskidsteer.us> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: July 23, 2010
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