Caterpillar Inc. v. Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd
Claim Number: FA1804001782231
Complainant is Caterpillar Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <catlifttrucks.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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 17, 2018; the Forum received payment on April 17, 2018.
On April 19, 2018, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <catlifttrucks.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 April 20, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 10, 2018 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@catlifttrucks.com. Also on April 20, 2018, 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 15, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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, Caterpillar Inc., is the world’s largest manufacturer of construction and mining equipment, diesel and natural gas engines, industrial gas turbines, and diesel-electric locomotives. Complainant uses its CAT mark to promote its products and services and established rights in the mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 778,638, registered Oct. 13, 1964). See Compl. Ex. 12. Respondent’s <catlifttrucks.com> domain name is confusingly similar to Complainant’s CAT mark because it merely adds the descriptive terms “lift trucks” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <catlifttrucks.com> domain name because Respondent is not authorized to use the CAT mark and is not commonly known by the disputed domain name. Moreover, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to resolve to a website that features pay-per-click advertisements that directly compete with Complainant. Further, Respondent’s attempts to sell the disputed domain name is evidence that Respondent has no legitimate interests in the disputed domain name.
Respondent registered and is using the <catlifttrucks.com> domain name in bad faith. Respondent made a general offer to sell the disputed domain name. Additionally, Respondent disrupts Complainant’s business by using the disputed domain name to divert users to a website featuring pay-per-click advertisements that compete with Complainant’s business. Furthermore, Respondent had actual knowledge of Complainant’s rights prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. The disputed domain name was registered on August 24, 1999.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in or to the disputed domain name; and that Respondent has engaged in bad faith use and registration of the disputed domain name.
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.”).
The Panel finds that the disputed domain name, <catlifttrucks.com>, is confusingly similar to Complainant’s famous, valid and subsisting trademark, CAT. Complainant has adequately pled its rights and interests in and to this trademark. Respondent arrives at the disputed domain name by merely appending the generic words “lift” and “trucks” to the end of this trademark and adding the g TLD “.com.” This is insufficient to distinguish the disputed domain name from Complainant’s trademark.
As such, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent has no right, permission or license to register the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent is not using the <catlifttrucks.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims that Respondent uses the domain name to resolve to a website that features competing, pay-per-click advertisements. Use of a disputed domain name to feature competing pay-per-click hyperlinks or advertisements may not be considered to be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See McGuireWoods LLP v. Mykhailo Loginov / Loginov Enterprises d.o.o, FA1412001594837 (Forum Jan. 22, 2015) (“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant provided screenshots of the <catlifttrucks.com> website, which indicate that the site features advertisements and hyperlinks related to “forklifts,” presumably for Complainant’s competitors. See Compl. Ex. 14.
As such, the Panel finds that Respondent’s use of the disputed domain name to resolve to a website featuring competing hyperlinks is not a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
Moreover, Complainant argues Respondent made a general offer to sell the <catlifttrucks.com> domain name. Offers to sell a disputed domain name may indicate that a respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant provides a screenshot from Sedo.com, a domain name selling website, which indicates that the <catlifttrucks.com> domain name is for sale with a minimum offer of $90 US dollars. See Compl. Ex. 15.
As such, the Panel finds that Respondent’s attempts to sell the disputed domain name indicates Respondent lacks rights or legitimate interests per Policy ¶ 4(a)(ii).
The Panel points out that Complainant apparently waited nearly 20 years to bring this claim. This Panel, however, lacks the power of laches and may not dismiss this case solely on the fact that Complaint delayed too long. In addition, the delay, however long, here might be justifiable as the harm is continuing and ongoing.
As such, the Panel finds that Respondent has no rights or legitimate interests in and to the disputed domain name.
The Panel also finds that Respondent engaged in bad faith uses and registration for the 20 years that it possessed the disputed domain name. Respondent registered and is using the <catlifttrucks.com> domain name in bad faith because Respondent is apparently attempting to sell the disputed domain name for an amount in excess of out-of-pocket expenses. Offering a disputed domain name for sale may be evidence of bad faith under Policy ¶ 4(b)(i). See Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that the respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates the respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(i).). Complainant provided screenshots from Sedo.com, a domain name selling website, which indicates that the <catlifttrucks.com> domain name is for sale for a minimum offer of $90 US dollars. See Compl. Ex. 15.
As such, the Panel finds that Respondent’s general offer to sell the disputed domain name is evidence of bad faith per Policy ¶ 4(b)(i).
Additionally, Complainant contends that Respondent’s use of the <catlifttrucks.com> domain name disrupts Complainant’s business by diverting Internet users to a website featuring competing, pay-per-click advertisements and hyperlinks. Use of a disputed domain name to resolve to a website featuring competing, pay-per-click advertisements or hyperlinks may be evidence of bad faith under Policy ¶¶ 4(b)(iii). See Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA1411001591638 (Forum Jan. 16, 2015) (finding that where the complainant operated in the computer industry and the respondent used the disputed domain name to offer competing computer related links, the respondent was disrupting the complainant’s business offerings in violation of Policy ¶ 4(b)(iii)). Screenshots of the <catlifttrucks.com> website indicate that the site features hyperlinks for “Cat Lift Trucks,” “Toyota Forklift,” and “Yale Forklift Truck.” See Compl. Ex. 14.
As such, the Panel finds that Respondent is using the domain name to disrupt Complainant’s business and that Respondent registered and is using the domain name in bad faith under Policy ¶ 4(b)(iii).
It also appears that Respondent uses the domain name to create confusion with Complainant’s mark for commercial gain. Use of a domain name to create confusion as to the source, sponsorship, affiliation or endorsement therein for commercial gain may evidence bad faith. See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Complainant provided a screenshot of the <catlifttrucks.com> website, which indicates the site contains pay-per-click advertisements and hyperlinks related to “forklift” products. See Compl. Ex. 14. Consequently, the Panel finds that Respondent attempted to create confusion with Complainant’s mark for commercial gain and also finds that Respondent used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant claims Respondent had actual knowledge of Complainant’s rights in the CAT mark prior to registering the <catlifttrucks.com> domain name. Given the fame of Complainant’s mark and the totality of the circumstances, the Panel finds that Respondent had actual knowledge of Complainant’s prior rights and interests in and to the trademark CAT.
As such, the Panel finds that Respondent engaged in bad faith use and registration of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <catlifttrucks.com> domain name transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: May 16, 2018
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