Caterpillar Inc. v. David M.
Ravo
Claim Number: FA0705000991824
PARTIES
Complainant is Caterpillar Inc. (“Complainant”), represented by Christopher
P. Foley, of Finnegan Henderson Farabow Garrett &
Dunner L.L.P.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <caterpillarsales.com>, registered
with AIT,
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.
Roberto A. Bianchi as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 22, 2007; the
National Arbitration Forum received a hard copy of the Complaint on May 23, 2007.
On May 29, 2007, AIT, Inc. confirmed by e-mail to the National
Arbitration Forum that the <caterpillarsales.com> domain name is
registered with AIT, Inc. and that
Respondent is the current registrant of the name. AIT, Inc.
has verified that Respondent is bound by the AIT,
Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 31, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of June 20, 2007 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@caterpillarsales.com by e-mail.
A timely Response was received and determined to be complete on June 18, 2007.
On June 22, 2007, The Forum received an Additional Submission from
Complainant, in accordance to The Forum’s Supplemental Rule # 7. Respondent did not reply to this submission. The Panel will consider Complainant’s
Additional Submission.
On June 25, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Roberto A. Bianchi as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends the following:
-
Caterpillar is a Fortune 100 company and the
world’s largest manufacturer of construction and mining equipment, diesel and
natural gas engines, and industrial gas turbines. Caterpillar is ranked first in its
industry.
-
The
disputed domain name is confusingly similar to Complainant’s famous and
federally registered trademark CATERPILLAR. In use since 1904, the CATERPILLAR mark
enjoys unquestionable fame as a result of extensive and long use and
advertising, and favorable public acceptance and recognition worldwide. This
mark has become one of the most recognized brands in the world, and was ranked
one of the “Top 100 Brands” and valued at more than $4,500,000,000 by
Interbrand in 2006. Caterpillar over the years has extensively and
widely advertised and promoted its products and services under this mark.
-
Respondent
does not have any rights or a legitimate interest in the domain name at issue
because it trades on the goodwill of Complainant’s CATERPILLAR mark, and
Respondent’s use of that mark is unauthorized.
Respondent is not and has never been a licensee of Complainant. Respondent is not and has never been
otherwise authorized by Complainant to use its CATERPILLAR mark.
-
Respondent’s registration and use of the domain
name in dispute meet the bad faith element set forth in Section 4(b)(iv) of the
UDRP. Respondent has used the domain
name to intentionally attract, for commercial gain, Internet users to his
pay-per-click website by creating a likelihood of confusion with Complainant
and its CATERPILLAR mark as to the source, sponsorship, affiliation, and/or
endorsement of Respondent’s website.
B. Respondent
Respondent’s contentions are as follows:
- Prior to 2006 Respondent had never heard from Caterpillar Inc. Respondent is solely responsible for managing all aspects of <caterpillarsales.com>. From the time Respondent purchased the domain name from a registrar in 2001 until 2006 the domain name was not pointed anywhere and the domain name was dark. Approximately a month or two before Respondent’s first communication with Caterpillar Inc. (February 2006), he decided to send the domain name to a pay-per-click service named Domain Hop, and to provide himself with domain performance. Respondent was unaware of the specific content placed on <caterpillarsales.com>. You may pick a “category” when utilizing Domain Hop services for a domain name, and subsequently Domain Hop personnel will install the content, but you will have no input into the specific type of content placed on the newly formed website. Several months ago Respondent terminated his relationship with Domain Hop.
- The communications Respondent received from Caterpillar Inc. (February 2006) and the subsequent phone call that Respondent placed to Complainant’s attorney Mr. Sommers in 2006 had one salient point: “Transfer the domain to Caterpillar Inc.” As a result of what Respondent perceived as egregious behavior on the part of Caterpillar Sales Inc., and after taking a good look at the website, he decided to do the only fair thing; terminate the website, which he did within 12 hours of the call. After receiving an e-mail from the registrar stating that they were locking <caterpillarsales.com>, Respondent decided to initiate an action for the then dark domain name, which Respondent had been considering for some time: “to have <caterpillarsales.com> potentially yield interest from people around the world that have a focus or interest in Caterpillars, Butterflies and or Gardens.”
- Currently the domain name in dispute is pointed to another pay-per-click service named Hot Keys, a choice that was made many months ago and well before the receipt of the current Complaint. The distinct difference with this pay-per-click service is that Respondent controls the appearance of the website and the content. This penultimate step allows Respondent to have a functional website that contains much of the content and customer focus that he envisioned while the final website is being created, which is scheduled for completion midsummer of 2007.
- In an effort to provide additional genuineness Respondent requests as a remedy the restricted use of the domain and not the relief that Complainant seeks which is to transfer the domain name.
C. Additional Submissions
In its Additional Submission of June 22, 2007, Complainant contends as
follows:
-
Respondent has done nothing to overcome
Caterpillar’s showing of its trademark rights in the CATERPILLAR mark that were
established in 1904―more than 95 years before Respondent registered the
disputed domain name in April 2001.
-
Respondent does not deny that the domain name is
confusingly similar to Caterpillar’s CATERPILLAR mark.
-
Respondent admits that he has used the domain
name for commercial gain via pay-per-click websites. Respondent admits that he has registered
additional domain names that incorporate the third-party trademarks NEW HOLLAND,
JEEP, and ALFA ROMEO.
-
Respondent’s removal of the construction-related
pay-per-click website does not demonstrate any rights of Respondent in the
domain name. Respondent controls and is
responsible for the domain name, regardless of whether Respondent allows a
third party to use the domain name for websites. Respondent’s subsequent use of the domain
name for a pay-per-click website relating to insects and gardening cannot meet
the requirements of a bona fide offering of goods or services defined in
the UDRP as occurring before notice
of the dispute because such use commenced after notice to Respondent of this
dispute, which was Caterpillar’s February 8, 2006 cease-and-desist letter.
-
Respondent’s
attempt to claim descriptive fair use has no credibility in view of (1) the
fact that the second word in the disputed domain name, “sales,” has nothing to
do with insects and gardening, (2) Respondent’s prior use of the disputed
domain name for a construction-related pay-per-click website, (3) his
registration of a similar domain name, <newhollandsales.com>, that incorporates the mark NEW HOLLAND
owned by Caterpillar’s competitor, and (4) his use of the <newhollandsales.com> domain name
for a construction-related pay-per-click website and, by Respondent’s
admission, to promote a New Holland dealership.
Finally, Respondent’s attempt to bolster his descriptive fair use claim
with respect to the <caterpillarsales.com> domain name by
inventing similar descriptive fair use claims for his other trademark-related
domain names (<hotjeep.com>,
<hotalfa.com>, <hotalfas.com>, <hotalfaromeo.com> and <hotafaromeo.com>) is completely
undermined by his use of those domain names for commercial pay-per-click
websites.
FINDINGS
The Panel finds that the <caterpillarsales.com>
domain name is confusingly similar to the CATERPILLAR trademark in which
Complainant has rights. Respondent lacks
any rights to or legitimate interests in the domain name in dispute. By selecting a domain name that fully
incorporates a famous trademark, and using it as a lure to generate traffic for
a pay-per-click website, Respondent is found to have registered and used the
domain name in bad faith.
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.
Per
its trademark registrations granted by the USPTO, Complainant has evidenced
that it has rights in the famous CATERPILLAR mark. The addition of a generic word (“sales”) only
reinforces the overall impression of confusing similarity to the CATERPILLAR
mark because sales of the goods and services protected by the mark are the
obvious means to obtain profit for a business corporation such as
Complainant. See Gen. Media
Commc’ns, Inc. v. Digital Video Distribution Ltd., FA 97338
(Nat. Arb. Forum July 9,
2001) (finding that the addition of a generic word to Complainant’s famous mark
does not change the mark but makes the <penthousemovies.com> domain name confusingly similar to
Complainant’s PENTHOUSE mark); see also Arthur Guinness Son & Co.
(Dublin) Ltd. v. Tim Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of the Complainant combined with a generic word or term).
Accordingly,
the Panel finds that the disputed domain name is confusingly similar to
Complainant’s mark.
Complainant
contends that Respondent trades on the goodwill of Complainant’s CATERPILLAR
mark, without any authorization from Complainant, and that Respondent is not
and has never been otherwise authorized by Complainant to use its CATERPILLAR
mark. Complainant having made a prima facie case that Respondent lacks
rights or legitimate interests in the domain name, the burden shifts to
Respondent to show he does have rights or legitimate interests. See
Hanna-Barbera Prods.,
Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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 Policy
¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have
rights or legitimate interests in a domain name).
For his
part, Respondent failed to establish any circumstance allowing the Panel to
infer anything in his favor under this head.
He admits that his first use of the domain name consisted of parking the
domain name with Domain Hop on a pay-per-click basis. It appears that the resulting content dealt
with construction, a business sector clearly associated with Complainant’s
activities. Such kind of use of the
domain name cannot qualify as a legitimate noncommercial or fair use of the
domain name pursuant to Policy ¶ 4(c)(iii) because it showed a clear intent to
misleadingly divert consumers looking for Complainant’s website. Since several links appearing on this first
website were related to companies competing with Complainant, the domain name
was not used in connection with a bona fide offering of goods or
services, pursuant to Policy ¶ 4(c)(i). See Black & Decker Corp. v. Clinical
Evaluations, FA 112629 (Nat.
Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed
domain name to redirect Internet users to commercial websites, unrelated to the
complainant and presumably with the purpose of earning a commission or
pay-per-click referral fee did not evidence rights or legitimate interests in
the domain name).
Nor is
the present content of the website at the domain name at issue, associated with
insects and gardens, evidence of rights or legitimate interests in the domain
name since it was posted after having received Complainant’s cease-and-desist
letter of February 8, 2006.
The
Panel concludes that the second requirement of the Policy is met.
Respondent’s
assertion that he did not know Complainant’s company before he registered the
disputed domain name cannot have much weight, given Respondent’s domicile in
Respondent
registered several domain names apparently corresponding to well-known or
famous marks owned by third parties. The
Panel believes that Respondent’s explanations for each of these domain name
registrations are much less than satisfactory, and that these registrations
evidence a pattern of conduct revealing bad faith registration as described in
Policy ¶ 4(b)(ii)
(“You have registered the domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain
name, provided that you have engaged in a pattern of such conduct”). With respect to <newhollandsales.com>, Respondent points to “an existing direct
primary link to a bona fide New Holland dealer (So Cal Tractor Sales), known to
Respondent” and whom Respondent “is proud to make the primary beneficiary of
NewHollandSales.com.” However,
Respondent has not proved that he has received any authorization from New
Holland or from said dealer to own the domain name or to post such link. Respondent explains that he purchased the
<hotalfaromeo.com> and
<hotalfas.com> domain names
because he owns a 1966 Alfa Romeo Giulia Sprint Veloce, and this car is “hot.”
According to Respondent, both Alfa Romeo domain names will most likely have
Respondent’s car pictured in them, but the primary beneficiary of those two
domains will be Santo’s Auto Service, a specialist in Alfa service and a
primary mechanic for the Alfa Club of Southern California (a group Respondent
raced with back in the 1980’s) and Respondent’s personal mechanic today. Respondent asserts that he looks forward to
developing these domains into websites with plenty of Santo’s input later in
2007. As to <hotjeep.com>, a Jeep Wrangler purportedly existing in
Respondent’s garage, in Respondent’s opinion, is also “hot.” Future plans for this domain, says
Respondent, will include a
Respondent’s
arguments are unconvincing; he fails to submit even summary evidence of any
plans for developing any of these domain names.
Respondent appears to rely simply on his owning a car to establish
rights in a domain name corresponding to the vehicle’s trademark. However, mere ownership of an article
does not equal a present or future bona fide use of the domain name
corresponding to such article’s brand, pursuant to Policy ¶ 4(b)(i). This paragraph clearly refers to a use of, or
demonstrable preparations to use, the domain name or a name corresponding to
the domain name in connection with a bona fide offering of goods
or services. Respondent does not appear
to be offering, or to have plans to offer, any goods or services. Further, the Panel agrees with Complainant
that Respondent’s claims of descriptive fair use of <hotjeep.com>, <hotalfa.com>,
<hotalfas.com> and <hotalfaromeo.com> is undermined by
his use of those domain names for commercial pay-per-click websites.
Respondent
admits that he parked the domain name with Domain Hop, and that content related
to Complainant’s industry was posted on the corresponding website. Respondent’s argument that he could not
control such content must be rejected; it was Respondent’s exclusive decision
to cause his domain name to generate revenue from the visits of Internet users
looking for Complainant’s mark and website, on a pay-per-click basis, while he
most likely receives a share of the resulting profits. This circumstance is evidence of bad faith
registration and use of the domain name.
See Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”).
The
Panel is satisfied that the disputed domain name was registered and is being
used in bad faith.
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 <caterpillarsales.com> domain name be
TRANSFERRED from Respondent to Complainant.
Roberto A. Bianchi, Panelist
Dated: July 9, 2007
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