Caterpillar Inc. v. Angie Arendt / DIAHOST .CO / keith mosley
Claim Number: FA1805001789701
Complainant is Caterpillar Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, Washington DC, USA. Respondent is Angie Arendt / DIAHOST .CO / keith mosley (“Respondent”), Georgia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <caterpillar-online.com>, <caterpillar-outlet.com> and <caterpillar-work.com>, registered with NameSilo, LLC.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 31, 2018; the Forum received payment on May 31, 2018.
On June 1, 2018, NameSilo, LLC confirmed by e-mail to the Forum that the <caterpillar-online.com>, <caterpillar-outlet.com> and <caterpillar-work.com> domain names are registered with NameSilo, LLC and that Respondent is the current registrant of the names. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC 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 June 6, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 26, 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@caterpillar-online.com, postmaster@caterpillar-outlet.com, and postmaster@caterpillar-work.com. Also on June 6, 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 July 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is the world’s largest manufacturer of construction and mining equipment, diesel, and natural gas engines, industrial gas turbines, and diesel-electric locomotives. Complainant has rights in the CATERPILLAR mark based on registration of the mark in the United States in 1912. The mark is also registered elsewhere around the world and it is famous.
Complainant alleges that the disputed domain names are confusingly similar to its mark because they incorporate the entire mark plus a generic term, a hyphen, and a generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights and legitimate interests in the disputed domain names because Respondent is not commonly by the disputed domain names nor has Complainant authorized Respondent to use the mark in any way. Respondent fails to use the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent used the disputed domain names to pass off as Complainant in order to sell counterfeit goods and services that compete directly with those offered by Complainant. Complainant cites UDRP precedents to support its position.
Respondent registered and uses the disputed domain names in bad faith because Respondent attempts to pass off as Complainant to offer fraudulent goods and services that compete directly with those offered by Complainant. This ultimately disrupts Complainant’s business. Additionally, Respondent has engaged in a pattern of bad faith registration by registering multiple domain names that contain Complainant’s mark. Finally, Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain names. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark CATERPILLAR and uses it to market a wide range of construction and mining equipment, and related accessories and clothing.
Complainant’s rights in its mark date back to 1912. The mark is famous.
The disputed domain names were registered on December 28, 2017.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
Respondent used the disputed domain name to resolve to websites offering counterfeit versions of Complainant’s products. The websites prominently displayed Complainant’s marks.
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.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
The Panel finds that the domain names are under common control because the three domain names are constructed in the same manner, were registered on the same date with the same and registrar, have been used in the same way, and use Cloudfare servers. Also, the registrant used the same privacy service for all three domain names. These elements are sufficient to find that the domain names were registered by the same domain name holder. See The Valspar Corporation v. Zhou Zhiliang / zhouzhiliang / Zhiliang Zhou / Eric Chow / Visspa Ltd., FA100800133934 (Forum Sept. 28, 2010); see also BBY Solutions, Inc. v. White Apple / Dev Kumar, FA1805001787251 (Forum June 20, 2018).
The disputed domain names are confusingly similar to Complainant’s CATERPILLAR mark, as they incorporate the entire mark in the domain names, with the addition of the generic terms “online,” “outlet,” and “work,” as well as a hyphen and the “.com” gTLD. The addition of a generic term, a hyphen, and a gTLD are not sufficient changes to distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from the complainant’s registered mark). Accordingly, the Panel finds that the disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has not authorized Respondent to use the CATERPILLAR mark in any way. Respondent is not commonly known by the disputed domain names: where a response is lacking relevant WHOIS information may be used to identify the respondent. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally lack of authorization from a complainant to use its’ mark may be further evidence that a respondent is not commonly known by a domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Here, the WHOIS information identifies the registrant of the <caterpillar-online.com> domain name as “Angie Arendt” and the registrant of the <caterpillar-outlet.com> and <caterpillar-work.com> domain names as “keith mosley.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).
Respondent fails to use the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain names to pass off as Complainant in order to sell counterfeit products. Specifically, Complainant provides evidence showing that Respondent used the disputed domain names to sell apparently counterfeit versions of Complainant’s products. Use of a domain name to pass off as a complainant in an attempt to sell unauthorized goods may not be considered a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). Therefore, the Panel finds that Respondent failed to use the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). Further, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s famous mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain names.
Indeed, as already noted, Respondent used the disputed domain names to offer competing counterfeit products; this disrupts Complainant’s business. Use of a domain name to disrupt complainant’s business by offering competing unauthorized products may be evidence of bad faith under Policy ¶ 4(b)(iii). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum December 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”); see also Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain and thus demonstrating bad faith per Policy ¶ 4(b)(iv) by creating confusion as to the complainant’s connection with the website by selling counterfeit products); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). Therefore, the Panel finds that Respondent registered and uses the disputed domain names in bad faith according to Policy ¶ 4(b)(iii) and ¶ 4(b)(iv).
Further, Respondent has engaged in a pattern of bad faith and registration by registering multiple domain names that contain Complainant’s mark. A respondent who registers multiple domain names that include infringing trademarks bay be found to be acting in bad faith under Policy ¶ 4(b)(ii). See Radisson Hotels Internation, Inc. v. Yue Mei Wang / Wang Yue Mei aka Pei Jun Gan / Gan Pei Jun / Jun Yu He / He Jun Yu / Denliyan, FA1504001615349 (Forum June 1, 2015) (“The Panel agrees that Respondent’s registration of the <radissonbluplazachongqing.com>, <radissonbluchongqingshapingba.com>, <radissonplazahoteltianjin.com>, and <radissonbluhotelshanghai.com> domain names, which all infringe on Complainant’s mark, constitutes bad faith under Policy ¶ 4(b)(ii).”). Accordingly, the Panel finds that Respondent has engaged in a pattern of bad faith and registration under Policy ¶ 4(b)(ii).
Finally, Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the mark: the resolving websites prominently displayed Complainant’s mark. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain names and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <caterpillar-online.com>, <caterpillar-outlet.com>, and <caterpillar-work.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: July 2, 2018
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