Caterpillar Inc. v. Umut Demirel
Claim Number: FA2102001932033
Complainant is Caterpillar Inc. (“Complainant”), represented by Stephanie H Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is Umut Demirel (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <caterpillarturkiye.com>, (‘the Domain Name’) registered with FBS Inc..
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 12, 2021; the Forum received payment on February 12, 2021.
On February 25, 2021, FBS Inc. confirmed by e-mail to the Forum that the <caterpillarturkiye.com> domain name is registered with FBS Inc. and that Respondent is the current registrant of the name. FBS Inc. has verified that Respondent is bound by the FBS Inc. 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 March 2, 2021, the Forum served the Complaint and all Annexes, including a Turkish language Written Notice of the Complaint, setting a deadline of March 22, 2021 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@caterpillarturkiye.com. Also on March 2, 2021, the Turkish language 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 29, 2021 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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.
PRELIMINARY ISSUE: REQUIRED LANGUAGE OF COMPLAINT
The Panel may note that the Registration Agreement is written in Turkish, thereby making the language of the proceedings in Turkish. The Panel may decide, per Rule 11, that because the Respondent signed an agreement in Turkish, the Complaint should be resubmitted in Turkish and the case recommenced.
Alternatively, the Panel may decide to continue the case with the English-language submission of the Complaint. See Rule 11.
Complainant has alleged that because the record shows that Respondent has knowledge of or proficiency in English, the proceeding should be conducted in English. The Panel has the discretion under UDRP Rule 11(a) it has the discretion to determine the appropriate language of the proceedings taking into consideration the particular circumstances of the administrative proceeding. See FilmNet Inc. v. Onetz, FA 96196 (Forum Feb. 12, 2001) (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). Complainant contends Respondent is conversant in English as established by (a) its selection and registration of the Domain Name that contains Complainant’s English-language mark CATERPILLAR in its entirety, (b) its registration of the Domain Name under the English-language gTLD “.com,” (c) its use of the Domain Name, shown in Exhibit 12 to the Complaint, for a website on which Respondent impersonates and attempts to pass itself off as Caterpillar, a famous U.S.-based company, for the purpose of selling unauthorized, counterfeit CATERPILLAR products, and (d) its use of Complainant’s English language marks CATERPILLAR and CAT on its website, including Complainant’s CAT Logo combined with the English terms “Licensed Merchandise” and “Caterpillar Inc.” In addition, Complainant does not have any information or evidence that Respondent does not have knowledge of or proficiency in English. Finally, Complainant would be prejudiced by a Turkish language proceeding because the translation costs are burdensome and unnecessary.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Turkish language Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English
A. Complainant
The Complainant’s contentions can be summarized as follows:
The Complainant is the owner of the mark CATERPILLAR registered, inter alia, in the USA for industrial and agricultural vehicles and footwear with first use recorded as 1904.
The Domain Name registered in 2018 is confusingly similar to the Complainant’s CATERPILLAR trade mark including it in its entirety and only adding the generic geographical term ‘Turkiye’ being Turkey in Turkish and the gTLD “.com” in each case which do not prevent this confusing similarity.
Respondent has no rights or legitimate interests in the Domain Name, is not commonly known by it and is not authorized by the Complainant.
The web site connected with the Domain Name is using the Complainant’s trade mark and logo as a masthead and the Complainant’s corporate name and the description ‘licensed products’ to offering counterfeit products. The selling of shoes purporting to be the Complainants and reference to the Complainant and use of its logo on the site shows the Respondent is aware of the Complainant and its business. Since Internet users will be duped into believing the site attached to the Domain Name is official this is not legitimate. It is registration and use in bad faith diverting Internet users for commercial gain and disrupting the Complainant’s business.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the mark CATERPILLAR registered, inter alia, in the USA for industrial and agricultural vehicles and footwear with first use recorded as 1904.
The Domain Name registered in 2018 has been used for a site purporting to sell the Complainant’s products using the Complainant’s mark and logo as a masthead and the Complainant’s corporate name and the description ‘licensed products’.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Domain Name consists of the Complainant's CATERPILLAR mark (which is registered, inter alia, in USA for industrial and agricultural vehicles and shoes with first use recorded as 1904), the generic term ‘Turkiye’ meaning Turkey in Turkish and the gTLD “.com”.
Previous panels have found confusing similarity when a respondent merely adds generic or geographical terms to a Complainant's mark. See PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that respondent does not by adding common descriptive or generic terms create new or different marks nor does it alter the underlying mark held by the Complainant). See also Dell Inc. v. Suchada Phrasaeng, FA 1745812 (Forum Sept. 28, 2017) (“Adding geographical terms does not sufficiently distinguish a domain name from a mark to prevent a finding of confusingly similarity under a Policy 4(a)(i) analysis.”). Accordingly the Panel holds that the addition of the generic term ‘Turkiye’ to the Complainant’s trade mark in the Domain Name does not prevent confusing similarity between the Domain Name and the Complainant’s mark.
The gTLD “.com” does not serve to distinguish a Domain Name from a Complainant’s mark. See Red Hat Inc. v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel holds that the Domain Name is confusingly similar to the Complainant’s registered mark
As such the Panel holds that Paragraph 4(a)(i) of the Policy has been satisfied.
Rights or Legitimate Interests
The Complainant has not authorized the use of its mark. The Respondent has not answered this Complaint and there is no evidence or reason to suggest the Respondent is, in fact, commonly known by the Domain Name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The web site attached to the Domain Name uses the Complainant's mark and its logo and corporate name as a masthead to offer suspected counterfeit goods. It does not make it clear that there is no commercial connection with the Complainant and the web site appears official. The Panel finds this use is confusing. As such it cannot amount to the bona fide offering of goods and services. See Am. Intl Group Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (finding that the Respondent's use of a confusingly similar domain name to compete with the Complainant's business did not constitute a bona fide use of goods and services.).
As such the Panelist finds that the Respondent does not have rights or a legitimate interest in the Domain Name and that the Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
In the opinion of the panelist the use made of the Domain Name in relation to the Respondent’s site is confusing and disruptive in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it offers suspected counterfeit products under the Complainant’s mark, logo and corporate name as a masthead giving the impression that the site attached to the Domain Name is official. The use of the Complainant’s logo and the reference to the Complainant and its products and corporate name on the site attached to the Domain Name shows that the Respondent is aware of the Complainant, its rights, business and products.
Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation or endorsement of the web site and the products on it likely to disrupt the business of the Complainant. See Asbury Auto Group Inc. v. Tex. Int'l Prop Assocs, FA 958542 (Forum May 29, 2007) (finding that the respondent's use of the disputed domain name to compete with the complainant's business would likely lead to confusion amongst Internet users as to the sponsorship or affiliation of a competing business and was therefore evidence of bad faith and use).
As such, the Panelist believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paragraphs 4(b)(iii) and 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <caterpillarturkiye.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: March 30, 2021
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