Caterpillar Inc. v. Thomas Huth
Claim Number: FA0307000169056
PARTIES
Complainant
is Caterpillar Inc., Peoria, IL, (“Complainant”)
represented by Gene Bolmarcich. Respondent is Thomas Huth, Dernbach, GERMANY (“Respondent”) represented by Scholz of Herzog und Steinhoff.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <catspares.com>
and <cat-spares.com>, registered with Schlund+Partner Ag.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically
on July 15, 2003; the Forum received a hard copy of the Complaint on July 18,
2003.
On
July 17, 2003, Schlund+Partner Ag confirmed by e-mail to the Forum that the
domain names <catspares.com> and <cat-spares.com> are registered with Schlund+Partner Ag and
that Respondent is the current registrant of the names. Schlund+Partner Ag verified that Respondent
is bound by the Schlund+Partner Ag registration agreement and thereby has
agreed to resolve domain-name disputes brought by third parties in accordance
with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On
July 28, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 18,
2003, 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@catspares.com and postmaster@cat-spares.com by
e-mail.
A
timely Response, in German, was received and determined to be complete August
12, 2003. An English translation of the
Response was received and determined to be complete August 14, 2003.
On august 19, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations in this proceeding:
1. Complainant has rights in the CAT mark
and associated logos.
2. Respondent registered domain names that
are identical to or confusingly similar to this mark.
3. Respondent has no rights to or legitimate
interests in the Complainant’s CAT mark.
4. Respondent acted in bad faith in
registering and using domain names containing Complainant’s mark.
B. Respondent makes the following points in
response in this proceeding:
1. Complainant’s attorney has not shown
authority to respond and
Complainant has not translated the exhibits into the German language.
2. The domain names registered by Respondent
are operated by Interpart GmbH
und
Co., KG; but Respondent Thomas Huth is “merely a contact person” for the
international sales division.
3. Werner Huth, managing director, is the
only person “having … power of
disposition.”
4. Thomas Huth has “surrendered use” of the
domain to his employer at no charge.
5. The domain names are not identical to or
confusingly similar to Complainant’s marks.
6. By inference, Respondent has rights and
legitimate interest “in the domain names” based at least in part on the generic
nature of CAT.
7. Complainant is wrong when it contends
Respondent “wrongfully registered and used” the domain names.
FINDINGS
The Panel first addresses Respondent’s suggestion that
he is a mere agent; that Complainant named the wrong Respondent; and/or that
Complainant failed to bring a claim against a person with authority. Respondent
contends that he registered the disputed domain names at the request of his
employer, Interpart GmbH und Co. KG, and that Respondent surrendered use of the
disputed domain names to the employer without charge and that he is not a
person with a right to speak for the employer.
The Panel has considered Respondent’s allegations of an
agency relationship with an employer, who allegedly has rights in the domain
name. Absent other factors that are present here, a Respondent may establish
rights in a domain name where the name was registered for a principal. See K2r Produkte AG v.
Trigano,
D2000-0622 (WIPO Aug. 23, 2000) (finding that Respondent had rights and
legitimate interests in the domain name <k2r.com> where he registered the
domain name for a website in connection with his mother’s store, "KIRK ET
ROSIE RICH").
But here, Respondent concedes his agency relationship on behalf of
Interpart
GmbH und Co. KG
as an employee, which advertises itself as a distributor of spare parts for CAT
products. Yet, Respondent registered
the domain names in question under his name and whatever the subsequent conduct
Respondent alleges, Respondent offered no documentary proof here of his
principal’s rights, his purported transfer of the domain names to someone else,
or this Respondent’s right to act on behalf of anyone other than himself.
The record shows that Respondent registered both disputed domain
names March 31, 2003; that Respondent listed himself as the Administrative
contact; and that Respondent produced no records to show any other party with
an interest in the domain names.
The Panel finds that it must decide the case based on the proof in
the record and the Panel gives greater weight to proof supported by extrinsic
objective evidence than to mere subjective statements not supported by
objective proof. Without proof, the Panel declines to consider the rights of
Respondent’s purported principle. See RC Ritzenhoff Cristal AG v. Mitsuhashi, D2000-1796 (WIPO Feb. 19,
2001) (declining to consider the rights of Respondent’s purported principal
under Policy ¶ 4(a)(ii) where Respondent alleged to have registered the domain
name for its principal but provided its own name as the registrant of record).
On the other hand, Complainant
Caterpillar established in this proceeding that it has legal and common law
rights in the CAT word mark for numerous matters, including heavy equipment
“and parts for all of the above.” Complainant established numerous
registrations with the United States Patent and Trademark Office and asserts international
protection for the mark. (Registration numbers include: 2140605, 2140606,
0564272, 0770639, 0984444, 1290411, 1579437.)
First use was July 13, 1988, and first use in commerce was October 20,
1988, some 15 years before Respondent registered the disputed domain
names. Complainant also asserts common
law use back to the 1940’s.
Complainant also established with
extrinsic proof that Interpart GmbH und Co. KG, the entity that Respondent
claims is the principal owner of the domain names in issue, advertises itself
on the Internet to be: “Your reliable partner for spare parts fitting JCB, CAT
and other earth moving equipment!”.
Complainant established that Respondent
is the person who registered and serves as administrative contact for the
domain names that advertise that Interpart GmbH und Co., KG distributes parts
for CAT products and asserts that it does so without any permission or license.
Complainant asserts that it has a network of licensed dealers.
Complainant established by its allegation
that Respondent has no license or permission to use Complainant’s mark and
Respondent did not refute the allegation that Respondent or his alleged
principal have no permission or license.
Instead, Respondent urges, without proof, that his principal has been
selling parts for Complainant’s equipment.
Further, other than the subjective
statements made by Respondent in his Response referenced above and set out
under Respondent’s points in response, Respondent offered no objective proof to
support any of his statements.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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;
(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.
Complainant
contends that it has established rights in the CAT mark through several
registrations with the U.S. Patent and Trademark Office, as set out above, and
including Reg. Nos. 2,421,077 (registered January 16, 2001) and 984,444
(registered May 21, 1974). Both of
these dates preceed the 2003 registration by Respondent. Complainant also alleges that it holds
several registrations worldwide for the CAT mark and contends that it has established
rights in the CAT mark through the mark’s use in commerce since 1949. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7,
2001) (finding that the Policy does not require that the mark be registered in
the country in which Respondent operates.
It is sufficient that Complainant can demonstrate a mark in some
jurisdiction); see also Fishtech,
Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that
Complainant has common law rights in the mark FISHTECH, which it has used since
1982).
Furthermore,
Complainant argues that the disputed domain names are confusingly similar to
Complainant’s mark because the disputed domain names fully incorporate the CAT
mark and merely add the generic word “spares.”
See Am. Online, Inc. v. Anytime Online Traffic School, FA 146930
(Nat. Arb. Forum Apr. 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and
merely added the descriptive terms “traffic school,” “defensive driving,” and
“driver improvement” did not add any distinctive features capable of overcoming
a claim of confusing similarity); see also Pfizer, Inc. v.
Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the
subject domain name incorporates the VIAGRA mark in its entirety, and deviates
only by the addition of the word “bomb,” the domain name is rendered
confusingly similar to Complainant’s mark).
In
addition, the Panel may find that the addition of the hyphen to Complainant’s
mark is insufficient to distinguish the <cat-spares.com>
domain name from Complainant’s CAT mark.
See Teleplace, Inc. v. De
Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that the domain
names <teleplace.org>, <tele-place.com>, and
<theteleplace.com> are confusingly similar to Complainant’s TELEPLACE
trademark); see also InfoSpace.com,
Inc. v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that
“[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE
trademark. The addition of a hyphen and .com are not distinguishing features”).
Respondent contends that since “spares” can have
several meanings besides “parts,” the disputed domain names are not confusingly
similar to Complainant’s mark because Internet users will not necessarily
conclude that the domain names refer to something offered by the Complainant or
its authorized dealers. Further, Respondent argues that “spares” describes the
Respondent’s business, and therefore does not constitute confusing similarity
pursuant to Policy ¶ 4(a)(i).
Some cases in the past would tend to support
Respondent’s view were it not for other factors. See Kittinger Co. v. Kittinger Collector, AF-0107 (eResolution May 8, 2000)
(finding that <kittingercollector.com> is not identical or confusingly
similar to a trademark of the Complainant because the use of Complainant's
trademark in this domain is purely nominative, the domain name as a whole is
descriptive of the Respondent's business, and the domain name is unlikely to
cause confusion with Complainant's business); see also Caterpillar Inc. v.
McKean, FA 97302 (Nat. Arb. Forum Aug. 6, 2001) (finding that the
<used-caterpillars.com>, <used-caterpillar.com>,
<usedcaterpillars.com>, <caterpillarsused.com> and
<used-cats.com> domain names were not confusingly similar to Complainant’s
marks because the disputed domain names describe Respondent’s business and
because the word “used” distinguishes the domain names from the marks).
However,
in this case, Respondent concedes that he knew of Complainant’s mark, and one
assumes the protected nature of Complainant’s rights in the mark, prior to
using it. The facts suggest that
Respondent sought to take advantage of Complainant’s mark and the notoriety
associated with it by placing it first in the domain names in issue. Mere placement alone suggests the greater
likelihood that Respondent intended for Internet users seeking Complainant to
end up at Respondent’s site.
The
Panel finds that Complainant satisfied the requirements of Policy ¶ 4(a)(i).
Complainant
established in this proceeding that it has legal and common law rights to and
legitimate interests in the CAT mark. Complainant asserts that Respondent lacks
such rights or legitimate interests in the disputed domain names because
Respondent is not commonly known by the disputed domain names or by the CAT
mark. Complainant further argues that
Respondent lacks rights in the disputed domain names because Respondent is
neither affiliated with Complainant nor licensed to use Complainant’s
marks. See Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior
rights in the domain name precede Respondent’s registration; (3) Respondent is
not commonly known by the domain name in question); see also Compagnie de Saint
Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no
rights or legitimate interest where Respondent was not commonly known by the
mark and never applied for a license or permission from Complainant to use the
trademarked name).
Furthermore,
Complainant asserts that Respondent lacks rights in the disputed domain names
because Respondent competes with Complainant by selling Complainant’s used
parts without a license from Complainant to do so. See G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12,
2002) (finding Respondent’s use of the disputed domain name to solicit
pharmaceutical orders without a license or authorization from Complainant does
not constitute a bona fide offering of goods or services under Policy ¶
4(c)(i)); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum
Jan. 7, 2002) (finding no “bona fide” offering of goods or services where
Respondent used Complainant’s mark without authorization to attract Internet
users to its website, which offered both Complainant’s products and those of
Complainant’s competitors).
Respondent first contends that Complainant’s assertion
that the disputed domain names belong to Respondent is inaccurate. That concession itself would tend to suggest
that Respondent has conceded that Respondent has no rights to or legitimate
interest in the domain names. Yet,
Respondent also asserts that he is merely a commercial employee of Interpart
GmbH und Co. KG and that he registered the disputed domain names at the request
of his employer. Respondent further
alleges without proof that he surrendered use of the disputed domain names to
his employer at no charge. When
determining if Respondent has rights or legitimate interests in the disputed
domain names, the Panel has discretion to take into consideration Respondent’s
alleged agency relationship with its employer; but here Respondent concedes his
agency relationship on behalf of Interpart GmbH und Co. KG as an employee and the documents show that his
employer advertises itself as a distributor of spare parts for CAT
products. Yet, Respondent registered
the domain names in question under his name and whatever the subsequent conduct
of Respondent, this Respondent offered no documentary proof of his principal’s
rights, his purported transfer to someone else, or this Respondent’s right to
act on any one other than himself. In
this action Respondent has shown no rights that are legitimate rights or
interest in the domain names containing in their entirety Complainant’s CAT
mark. Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding no rights or legitimate interests where (1) Respondent is not a
licensee of Complainant; (2) Complainant’s prior rights in the domain name
precede Respondent’s registration; (3) Respondent is not commonly known by the
domain name in question). Furthermore,
Respondent also claims that he has made a bona fide
offering of goods using the disputed domain names because Interpart GmbH und
Co. KG sells parts, including parts made by Complainant, that fit both
Complainant’s and other manufacturers’ machines. He then contends that although Interpart GmbH und Co. KG is not
contractually integrated into Complainant’s dealer network, it lawfully stocks
Complainant’s product line and offers for sale original spare parts
manufactured by Complainant. Respondent
further contends that Interpart GmbH und Co. KG is entitled to use Complainant’s
trademarks for purposes of describing its offering of goods. Although some
cases have held that it is a bona fide use to have a website that “describes
the content of the site,” they do not apply here. See Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13,
2001) (stating that “Respondent is using the domain <groceryoutlet.com>
for a website that links to online resources for groceries and similar goods.
The domain is therefore being used to describe the content of the site,” as
evidence that Respondent was making a bona fide offering of goods or services
with the disputed domain name); see also Verkaik v. Crownonlinemedia.com,
D2001-1502 (WIPO Mar. 19, 2002) (finding that Respondent’s use of the disputed
domain name to make a bona fide offering of services bestowed rights and
legitimate interests in the domain name).
Here Respondent is knowingly using
Complainant’s mark as the initial enticement to Internet users to get them to
do business with Respondent and Respondent concedes that he does so without
authority in a manner that competes with Complainant’s authorized dealer
network for spare parts.
Respondent further
contends that Interpart GmbH und Co. KG has rights in the disputed domain names
because the company has managed its legitimate product line for approximately
sixteen years, which is prior to the registration of the CATERPILLAR and CAT
marks. Respondent offered no proof to support that contention.
Respondent also urges that Complainant’s
CAT mark is generic. Where a mark is
generic, a Respondent may show rights. See
Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb.
19, 2001) (finding that Respondent has rights and legitimate interests in the
domain name where “Respondent has persuasively shown that the domain name is
comprised of generic and/or descriptive terms, and, in any event, is not
exclusively associated with Complainant’s business”); see also Tough Traveler, Ltd.
v. Kelty Pack, Inc, D2000-0783 (WIPO Sept. 28, 2000) (finding that
Respondent had a legitimate interest in the domain name,
<kidcarrier.com>, as a generic term for a class of products that
Respondent sells). Respondent’s
contention is contrary to the proof. Complainant urges that the CAT mark is
synonymous with Complainant’s heavy machinery. It is CAT spares that Respondent
sells in competition with Complainant and Respondent’s own use of the term CAT
shows that the mark has international recognition along with an international
nexus with Complainant’s poducts.
The
Panel finds that Complainant satisfied the requirements of Policy ¶ 4(a)(ii).
Complainant contends that Respondent had
actual or constructive knowledge of Complainant’s rights in the CAT mark
because the CAT mark is recognized worldwide, and that therefore Respondent
registered the disputed domain names in bad faith. The Panel finds that Respondent knew of Complainant’s rights in
the CAT mark prior to registering the domain names in issue because Respondent
knew of Complainant’s business and had sold Complainant’s parts. See Digi Int’l, Inc. v. DDI Sys., FA
124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively”); see also Exxon Mobil Corp. v. Fisher, D2000-1412
(WIPO Dec. 18, 2000) (finding that Respondent had actual and constructive
knowledge of Complainant’s EXXON mark given the worldwide prominence of the
mark and thus Respondent registered the domain name in bad faith).
In addition, Complainant asserts that
Respondent has engaged in bad faith because Respondent attempted to benefit
commercially from the goodwill associated with the CAT mark by registering
domain names that fully incorporate the CAT mark and causing Internet user
confusion as to the domain names’ source, sponsorship, affiliation, etc. See G.D. Searle & Co. v.
Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that
Respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to
attract Internet users to its commercial website); see also State Fair
v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding
bad faith where Respondent registered the domain name <bigtex.net> to
infringe on Complainant’s goodwill and attract Internet users to Respondent’s
website). The Panel agrees. Respondent’s placement of Complainant’s mark
first in the domain names seems calculated to opportunistically capitalize on
Complainant’s goodwill and to cause Internet users to believe that Complainant
was the source or sponsor of the domain names.
The Panel further finds that Respondent
registered and used the disputed domain names in bad faith because Respondent
competes with Complainant and the disputed domain names fully incorporate
Complainant’s mark. See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000)
(transferring the <fossilwatch.com> domain name from Respondent, a watch
dealer not otherwise authorized to sell Complainant’s goods, to Complainant).
Respondent
conceded that he knew of Complainant’s CATERPILLAR mark but contended that he
had no reason to know that CAT had existing trademark protection because he
believed the word “cat” was generic. See
e.g. Anticybersquatting Consumer Protection Act, 15 U.S.C. §1125
(d)(1)(B)(ii), "[b]ad faith intent … shall not be found in any case in
which the court determines that the person believed and had reasonable grounds
to believe that the use of the domain name was a fair use or otherwise lawful.” Respondent himself used the mark CAT as an
identifier for the heavy equipment that Caterpillar manufactures. Respondent has no reasonable grounds for
believing that CAT was generic when Respondent used CAT in a manner consistent
with the protected mark.
Finally,
under his agency challenge, Respondent stated that Interpart GmbH und Co. KG is
using the disputed domain names; therefore, Complainant cannot establish that
Respondent used the domain names in bad faith; that Interpart GmbH und Co. KG
is using the domain names to make a bona fide offering of goods; and that
although Interpart GmbH und Co. KG is not
contractually integrated into Complainant’s dealer network, it lawfully stocks
Complainant’s product line and offers for sale original spare parts manufactured
by Complainant. The Panel has already held that Respondent offered no proof to
enable the Panel to give weight to any of his statements in that area but the
Panel notes that even if Interpart GmbH und Co. KG is doing these things, it
has not shown a right to do so under the Complainant’s CAT mark.
The Panel finds
that Complainant met the requirements of Policy
¶ 4(a)(iii).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <catspares.com>
and <cat-spares.com> domain names be TRANSFERRED from
Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: September 2, 2003.
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