Caterpillar Inc. v. WhayneCAT
Claim Number: FA1702001718187
Complainant is Caterpillar Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, Washington D.C., USA. Respondent is WhayneCAT (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <whaynecat.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 21, 2017; the Forum received payment on February 21, 2017.
On February 22, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <whaynecat.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 February 22, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2017 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@whaynecat.com. Also on February 22, 2017, 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 March 23, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant registered the CAT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 564,272, registered Sept. 23, 1952). Respondent’s <whaynecat.com> mark is confusingly similar as it merely adds the generic or descriptive word “whayne” before the full CAT mark the generic top-level domain “.com” (“gTLD”).
Respondent has no rights or legitimate interests in <whaynecat.com>. Respondent is not commonly known by <whaynecat.com>, nor is Respondent sponsored or legitimately affiliated with Complainant in any way. Complainant has not given Respondent permission to use the CAT mark in a domain name. Respondent also does not use the disputed domain for any bona fide offering of goods or services because the domain name directs the user to a website mimicking those of Complainant’s authorized representatives for commercial gain.
Respondent registered and uses the <whaynecat.com> in bad faith. Respondent, by using a confusingly similar domain name, creates a likelihood of confusion with Complainant as to the source, sponsorship, and affiliation of the domain name. Further, Respondent disrupts Complainant’s business by offering competing goods. Additionally, Respondent uses the disputed domain name to commercially benefit by passing off as Complainant’s authorized dealers—Whayne CAT and Riggs CAT. Lastly, Complainant argues that Respondent must have had actual or constructive knowledge of Complainant’s marks given Complainant’s fame, Respondent’s explicit references to Complainant’s CAT mark, and Respondent’s almost identical website as Complainant’s authorized representatives.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Caterpillar Inc., of Peoria, IL, USA. Complainant is the owner of domestic registrations for the marks CATERPILLAR and CAT and variations thereof constituting the CAT mark family. Complainant has used the CAT mark continuously since at least as early as 1948, in connection with its provision of goods and services in the heavy machinery business, including the manufacture of engines, turbines, and locomotives. Complainant licenses and authorizes others to use its marks including a licensed affiliate known as Whayne CAT, who is totally distinct and unassociated with Respondent.
Respondent is WhayneCAT of North Yorkshire, Great Britain. Respondent’s registrar’s address is listed as Mumbai, India. The Panel notes that <whaynecat.com> was registered on or about June 10, 2016.
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 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 (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.”).
Complainant is a fortune 100 company that manufactures and exports various goods, including construction and mining equipment, gas engines, industrial gas turbines, and diesel-electric locomotives. Complainant has operated under the CATERPILLAR mark for more than 100 years. Complainant registered the CATERPILLAR (e.g., Reg. No. 85,816, registered Mar. 19, 1912) and CAT (e.g., Reg. No. 564,272, registered Sep. 23, 1952) marks with the USPTO. Past panels have established that registration of a mark with the USPTO sufficiently demonstrates a complainant’s rights in a mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the USPTO). The Panel here finds that Complainant has established rights in the mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <whaynecat.com> is confusingly similar as it fully incorporates its mark and adds a descriptive or generic term and the gTLD “.com.” Prior panels have found that changing marks in these ways has not made them sufficiently distinguishable. See EMVCO, LLC c/o Visa Holdings v. Corey Grottola / Prophet Companies, FA 1649199 (Forum Dec. 22, 2015) (Holding that the addition of descriptive terms to a complainant’s mark does not serve to adequately distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).); see also State Farm Mutual Automobile Insurance Company v. New Ventures Services, Corp, FA 1647714 (Forum Dec. 17, 2015) (finding that adding the common name “John” to complainant’s STATE FARM mark was insufficient to overcome a determination of confusing similarity.). Similarly, previous panels have held that adding the gTLD “.com” is irrelevant to an analysis of confusing similarity. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Respondent’s <whaynecat.com> domain name adds the generic or descriptive word “whayne” before the full CAT mark and the gTLD “.com”. The Panel here finds that Respondent has not included elements in the domain name that would provide sufficient distinction from Complainant’s mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Complainant has met this burden.
Complainant contends that Respondent has no rights or legitimate interests in <whaynecat.com>. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “WhayneCAT” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the CAT or CATERPILLAR marks. Even where a respondent appears to be commonly known by a disputed domain name, without something given from respondent, past panels have been resistant to affording rights under Policy ¶ 4(c)(ii). See Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Additionally, Complainant states that the name used to register the domain name belongs to the authorized affiliate of Complainant, Whayne CAT. The Panel here finds that Respondent is not commonly known by <whaynecat.com> under Policy ¶ 4(c)(ii).
Complainant next argues that Respondent doesn’t use the disputed domain for any bona fide offering of goods or services because it attempts to pass off as Complainant. Passing off can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”). Complainant asserts that the domain name directs the user to a website mimicking those of Complainant’s authorized representatives, commercially benefiting the Respondent. The Panel here finds that Respondent’s use of the disputed domain lacks a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant alleges that Respondent disrupts Complainant’s business for commercial gain by creating a likelihood for confusion. Past panels have found that leading potential users to mistakenly believe that an association between a complainant and a respondent can evince bad faith, especially where a website identical to a complainant’s is arranged on respondent’s site. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). Complainant argues that Respondent’s confusingly similar domain name resolves to a webpage that prominently displays the marks and designs of Complainant’s authorized representatives, which would lead users to believe that an association existed between Complainant and Respondent when none such relationship did or does exist. The Panel here finds that the confusing similarity between Complainant’s mark and the <whaynecat.com> domain name creates potential confusion in prospective users and thus demonstrates bad faith registration and use under Policy ¶ 4(b)(iii).
Complainant next argues that Respondent registered and is using the <whaynecat.com> in bad faith by attempting to intercept users seeking Complainant’s services and commercially benefit by using a confusingly similar domain name and offering competing goods. Prior panels have concluded that conduct of this nature may evince bad faith. See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum October 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.”). Complainant alleges that Respondent uses a confusingly similar domain to sell goods identical or similar to Complainant for personal commercial benefit. The Panel here finds that Respondent attempted to commercially benefit off Complainant’s mark in bad faith.
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
As Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <whaynecat.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 6, 2017
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