Caterpillar Inc. v. Client Care / Web Commerce Communications Limited / Arvidsson Gottfrid / Ewan GARNER / Marie Foerster / Vanessa Kaestner / Hueber Marie
Claim Number: FA2211002022244
Complainant is Caterpillar Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia. Respondent is Client Care / Web Commerce Communications Limited / Arvidsson Gottfrid / Ewan GARNER / Marie Foerster / Vanessa Kaestner / Hueber Marie (“Respondent”), MY.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <caterpillarshoescanada.com>, <caterpillarshoecanada.com>, <caterpillaroutletcanada.com>, <caterpillarcanadasale.com>, <caterpillarcanadaca.com>, <caterpillarcanadaboots.com>, <catbootcanada.com>, <catbootscanada.com>, <catworkbootscanada.com>, <caterpillarbootscanada.com>, <caterpillarsalecanada.com>, and <caterpillarincanada.com>, registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; Hosting Concepts B.V. d/b/a Registrar.eu; Key-Systems GmbH; NETIM SARL; and Web Commerce Communications Limited dba WebNic.cc.
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 Forum electronically on November 30, 2022; Forum received payment on November 30, 2022.
On December 1, 2022 and December 2, 2022, ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; Hosting Concepts B.V. d/b/a Registrar.eu; Key-Systems GmbH; NETIM SARL; and Web Commerce Communications Limited dba WebNic.cc confirmed by e-mail to Forum that the <caterpillarshoescanada.com>, <caterpillarshoecanada.com>, <caterpillaroutletcanada.com>, <caterpillarcanadasale.com>, <caterpillarcanadaca.com>, <caterpillarcanadaboots.com>, <catbootcanada.com>, <catbootscanada.com>, <catworkbootscanada.com>, <caterpillarbootscanada.com>, <caterpillarsalecanada.com>, and <caterpillarincanada.com> domain names are registered with ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; Hosting Concepts B.V. d/b/a Registrar.eu; Key-Systems GmbH; NETIM SARL; and Web Commerce Communications Limited dba WebNic.cc and that Respondent is the current registrant of the names. ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; Hosting Concepts B.V. d/b/a Registrar.eu; Key-Systems GmbH; NETIM SARL; and Web Commerce Communications Limited dba WebNic.cc has verified that Respondent is bound by the ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; Hosting Concepts B.V. d/b/a Registrar.eu; Key-Systems GmbH; NETIM SARL; and Web Commerce Communications Limited dba WebNic.cc registration agreements 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 December 6, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 2022 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@caterpillarshoescanada.com, postmaster@caterpillarshoecanada.com, postmaster@caterpillaroutletcanada.com, postmaster@caterpillarcanadasale.com, postmaster@caterpillarcanadaca.com, postmaster@caterpillarcanadaboots.com, postmaster@catbootcanada.com, postmaster@catbootscanada.com, postmaster@catworkbootscanada.com, postmaster@caterpillarbootscanada.com, postmaster@caterpillarsalecanada.com, postmaster@caterpillarincanada.com. Also on December 6, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On December 31, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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: 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 as the websites displayed at these domains are essentially identical and are used for the same purpose, namely to sell counterfeit versions of Complainant’s products. None of the named respondents has contested Complainant’s allegation that the disputed domain names are all controlled by the same entity. 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).
Consequently, the Panel will rule on all the contested domain names, and the registrants are collectively referred to as “Respondent”.
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. For more than 90 years, Complainant has been making sustainable progress possible and driving positive change on every continent by offering products and services to customers to help them develop infrastructure, energy, and natural resource assets. Complainant principally operates through its three product segments: Construction Industries, Resource Industries, and Energy & Transportation. Complainant also provides financing and related services through its Financial Products segment. Complainant’s commercial success under the CATERPILLAR and CAT marks has been tremendous. Over the years, Complainant has sold many billions worth of products and services under the CATERPILLAR and CAT marks. For example, Complainant had worldwide sales and revenues around U.S. $51,000,000,000 in 2021. Complainant has 160 authorized dealers located in countries around the world including the United States. Together, Complainant’s authorized dealers serve 193 countries. Complainant, directly and through its licensees, advertises and offers a wide range of footwear, apparel, headwear, and additional consumer goods under its CATERPILLAR and CAT marks, and has done so for decades. Complainant’s branded merchandise is widely promoted and sold in thousands of retail outlets worldwide. Complainant has rights in the CATERPILLAR and CAT marks through their registration in the United States in, respectively, 1912 and 1949. The marks are registered elsewhere around the world and they are famous.
Complainant alleges that the disputed domain names are virtually identical and confusingly similar to its CATERILLAR or CAT marks because each domain name incorporates one of the marks in its entirety and merely adds a geographic or otherwise generic term and the “.com” generic top-level domain (“gTLD”). Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names and Complainant has not authorized or licensed to Respondent any rights in its marks. Respondent does not use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, the disputed domain names resolve or resolved to pages that display Complainant’s mark and distinctive logo and purport to sell counterfeit versions of Complainant’s branded products. Respondent uses at least one of the disputed domain names to engage in phishing. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain names in bad faith. Respondent has engaged in a pattern of bad faith registration and use. Respondent registered the disputed domain names in order to disrupt Complainant’s business and divert customers for commercial gain. Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in its marks. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has registered trademarks for the marks CATERPILLAR and CAT and uses them to market a variety of goods, including footwear and apparel. The marks were registered in, respectively, 1912 and 1949.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
The disputed domain names were registered between September 2021 and October 2022.
The resolving websites purport or purported to offer for sale counterfeit versions of Complainant’s products; they display Complainant’s mark and distinctive logo. At least one of the disputed domain names is used in furtherance of phishing. Respondent has engaged in a pattern of bad faith registration and use of domain names.
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”).
Each of the disputed domain names incorporates one of Complainant’s CATERPILLAR or CAT marks in its entirety and merely adds a generic and/or geographic term along with a gTLD. The addition of a gTLD and a generic and/or geographic term fails sufficiently to distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). Therefore the Panel finds that the disputed domain names are confusingly similar to Complainant’s marks per Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its marks. Respondent is not commonly known by the disputed domain names: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. 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). Here, the WHOIS information for the disputed domain names lists “Client Care / Web Commerce Communications Limited / Arvidsson Gottfrid / Ewan GARNER / Marie Foerster / Vanessa Kaestner / Hueber Marie” as the registrant. Therefore the Panel finds that Respondent is not commonly known by the disputed domain names per Policy ¶ 4(c)(ii).
The disputed domain names resolve or resolved to websites that display Complainant’s mark and distinctive logo and purport to offer for sale counterfeit versions of Complainant’s products. Where the respondent uses a domain to sell counterfeit versions of Complainant’s goods, the Panel may find the respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum Aug. 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization); see also Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”). Therefore the Panel finds that Respondent fails to use the disputed domain names to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Further, Complainant presents evidence showing that Respondent used at least one of the disputed domain names to take an order which was not fulfilled, thus fraudulently acquiring the personal and financial information of Internet users seeking Complainant’s products. This constitutes phishing and indicates a lack of rights or legitimate interest in a disputed domain name. See Allianz of Am. Corp. v. Bond, FA 690796 (Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Thus, on this ground also, the Panel finds that Respondent fails to use the disputed domain names to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
For all the above reasons, 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 marks. 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, the resolving websites offer or offered for sale counterfeit versions of Complainant’s products. This is indicative of bad faith registration and use per Policy ¶ 4(b)(iv). See Crocs, Inc. v. jing dian, Case No. FA1410001587214 (Forum Dec. 12, 2014) (finding bad faith where the respondent used the disputed domain name to display the complainant’s marks to sell unauthorized goods); see also Swarovski Aktiengesellschaft v. ailong c ailong xiong, Case No. FA1407001571172 (NAF Sept. 5, 2014) (finding bad faith where respondent used the disputed domain name in connection with a website purportedly offering unauthorized goods of Complainant and stating that the respondent’s bad faith was “apparent in that [r]espondent is profiting from the likelihood Internet users will mistakenly believe the goods sold through the domain name’s website are legitimate…”); see also Hunter Fan Co. v. MSS, FA 98067 (Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also Hunter Fan Co. v. MSS, FA 98067 (Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also H-D Michigan, LLC v. Ross, FA 1250712 (Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion and thus demonstrates bad faith per Policy ¶ 4(b)(iv)); 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). The Panel therefore finds that Respondent registered and uses the disputed domain names in bad faith per Policy ¶ 4(b)(iv).
Further, also as already noted, Respondent used at least one of the disputed domain names to phish for Internet users’ personal information. This is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Maniac State, FA 608239 (Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also Hess Corp. v. GR, FA 770909 (Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
Further, Respondent registered the disputed domain names with actual knowledge of Complainant’s mark: the resolving websites display Complainant’s mark and distinctive logo, and photos of Complainant’s products. 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 Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant cites numerous UDRP cases in which Respondent was found to have registered and used domain names in bad faith. Previous findings of bad faith registration of a domain name may be evidence of bad faith under Policy ¶ 4(b)(ii). See DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Therefore, the Panel finds that Respondent registered and uses the disputed domain Name in bad faith under Policy ¶ 4(b)(ii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <caterpillarshoescanada.com>, <caterpillarshoecanada.com>, <caterpillaroutletcanada.com>, <caterpillarcanadasale.com>, <caterpillarcanadaca.com>, <caterpillarcanadaboots.com>, <catbootcanada.com>, <catbootscanada.com>, <catworkbootscanada.com>, <caterpillarbootscanada.com>, <caterpillarsalecanada.com>, <caterpillarincanada.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: December 31, 2022
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