Caterpillar Inc. v. Client Care / Web Commerce Communications Limited / Katherine Palazzolo / Dayna Truelove / Federico Justice / Unger Tom / Paul Maurer / Anke Cole / Martina BAECKER / Nicole BOHM / Johnsson YUSUF
Claim Number: FA2212002024052
Complainant is Caterpillar Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, USA. Respondent is Client Care / Web Commerce Communications Limited / Katherine Palazzolo / Dayna Truelove / Federico Justice / Unger Tom / Paul Maurer / Anke Cole / Martina BAECKER / Nicole BOHM / Johnsson YUSUF (“Respondent”), Malaysia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <catfootwearus.com>, <caterpillarsrbija.net>, <caterpillarbotaspt.com>, <caterpillarespanazapatos.com>, <caterpillarfactoryoutlet.com>, <caterpillarscarpeitalia.com>, <caterpillarsrbija.com>, <catfootwearau.com>, <catfootwear-nz.com>, <caterpillarhrvatska.net>, <catbootoutlet.com>, <caterpillar-espana.com>, <caterpillar-romania.com>, <caterpillar-hrvatska.com>, <caterpillarespanaes.com>, and <zapatoscaterpillarespana.com>, registered with 1API GmbH; ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; Gransy, s.r.o.; Key-Systems, LLC; NameSilo, LLC; NETIM SARL.
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.
The Honorable Neil Anthony Brown KC as Panelist.
Complainant submitted a Complaint to Forum electronically on December 14, 2022; Forum received payment on December 14, 2022.
On December 15, 2022 and December 16, 2022, 1API GmbH; ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; Gransy, s.r.o.; Key-Systems, LLC; NameSilo, LLC; and NETIM SARL confirmed by e-mail to Forum that the <catfootwearus.com>, <caterpillarsrbija.net>, <caterpillarbotaspt.com>, <caterpillarespanazapatos.com>, <caterpillarfactoryoutlet.com>, <caterpillarscarpeitalia.com>, <caterpillarsrbija.com>, <catfootwearau.com>, <catfootwear-nz.com>, <caterpillarhrvatska.net>, <catbootoutlet.com>, <caterpillar-espana.com>, <caterpillar-romania.com>, <caterpillar-hrvatska.com>, <caterpillarespanaes.com>, and <zapatoscaterpillarespana.com> domain names are registered with 1API GmbH; ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; Gransy, s.r.o.; Key-Systems, LLC; NameSilo, LLC; and NETIM SARL and that Respondent is the current registrant of the names. 1API GmbH; ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; Gransy, s.r.o.; Key-Systems, LLC; NameSilo, LLC; NETIM SARL has verified that Respondent is bound by the 1API GmbH; ALIBABA.COM SINGAPORE E-COMMERCE PRIVATE LIMITED; Gransy, s.r.o.; Key-Systems, LLC; NameSilo, LLC; and NETIM SARL 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 20, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2023 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@catfootwearus.com, postmaster@caterpillarsrbija.net, postmaster@caterpillarbotaspt.com, postmaster@caterpillarespanazapatos.com, postmaster@caterpillarfactoryoutlet.com, postmaster@caterpillarscarpeitalia.com, postmaster@caterpillarsrbija.com, postmaster@catfootwearau.com, postmaster@catfootwear-nz.com, postmaster@caterpillarhrvatska.net, postmaster@catbootoutlet.com, postmaster@caterpillar-espana.com, postmaster@caterpillar-romania.com, postmaster@caterpillar-hrvatska.com, postmaster@caterpillarespanaes.com, postmaster@zapatoscaterpillarespana.com. Also on December 20, 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 January 12, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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 names 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.”
Complainant contends that the disputed domain names are under common control because the names are all constructed in a similar manner, comprised of either Complainant’s CATERPILLAR or abbreviated CAT mark and a generic term related to footwear (“footwear”) or a country (“au”). In addition, the disputed domain names are used in a similar manner. All are used for passing off as Complainant by using Complainant’s logo and mark on the websites, purporting to offer Complainant’s footwear products, and copying Complainant’s text and images from its legitimate website.
Having considered all of the evidence and submissions, the Panel finds that the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. The proceeding was thus properly filed and may go forward on that basis. In this decision, each of the named respondent parties will be referred to as “Respondent”.
PARTIES' CONTENTIONS
A. Complainant
Complainant made the following contentions.
Complainant, Caterpillar Inc., manufactures and sells heavy machinery, construction, and other industrial equipment, as well as apparel and footwear. Complainant has rights in the CATERPILLAR mark through numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,365,450, registered on January 8, 2008). See Compl. Exhibit 24. Complainant also has rights in the CAT mark through trademark registrations with the USPTO (e.g., Reg. No. 1,908,556, which was registered on August 1, 1995). See Compl. Exhibit 25. Respondent’s domain names are confusingly similar to the CATERPILLAR and CAT marks as one of the entire marks is included in each disputed domain name along with a descriptive and/or geographic term and “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the disputed domain names since Respondent is not licensed or authorized to use Complainant’s CATERPILLAR or CAT marks and is not commonly known by any of the disputed domain names. Additionally, Respondent does not use the disputed domain names for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent is passing off as Complainant and purportedly offering competing goods to defraud Complainant’s customers. Further, Respondent fails to use actively. one of the disputed domain names, <caterpillarespanazapatos.com>.
Respondent registered and uses the disputed domain names in bad faith by passing off as Complainant. Respondent is also disrupting Complainant’s business through purporting to offer competing goods in a scheme to defraud Complainant’s customers. In addition, Respondent is not actively using one of the disputed domain names, <caterpillarespanazapatos.com>. The registration of multiple infringing domain names in the current proceeding further suggests a pattern of bad faith. Finally, Respondent registered the disputed domain names with constructive/actual knowledge of Complainant’s rights in the CATERPILLAR and CAT marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company that manufactures and sells heavy machinery, construction, and other industrial equipment, as well as apparel and footwear.
2. Complainant has established its rights in the CATERPILLAR mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,365,450, registered on January 8, 2008).
3. Complainant has also established its rights in the CAT mark through its registration of the mark with the USPTO (e.g., Reg. No. 1,908,556, registered on August 1, 1995).
4. Respondent registered the disputed domain names on the following dates:
<catfootwearus.com> - March 4, 2021.
<caterpillarsrbija.net> - November 29, 2022.
<caterpillarbotaspt.com> - November 10, 2021.
<caterpillarespanazapatos.com> - February 9, 2022.
<caterpillarfactoryoutlet.com> - November 29, 2022.
<caterpillarscarpeitalia.com> - August 30, 2022.
<caterpillarsrbija.com> - December 10, 2021.
<catfootwearau.com> - November 10, 2021.
5. Respondent has passed itself off as Complainant and offered competing goods with the intention of defrauding Complainant’s customers and Complainant itself. Respondent has also failed to use one of the disputed domain names actively, namely the <caterpillarespanazapatos.com> 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 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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the CATERPILLAR and CAT marks through multiple trademark registrations with the USPTO (e.g., CATERPILLAR Reg. No. 3,365,450, which was registered on January 8, 2008; CAT Reg. No. 1,908,556, which was registered on August 1, 1995). See Compl. Exs. 24 and 25. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Since Complainant provides evidence of registration of the CATERPILLAR and CAT marks with the USPTO, the Panel finds that Complainant has demonstrated rights in the CATERPILLAR and CAT marks per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s CATERPILLAR and CAT marks. Complainant argues that the disputed domain names are all confusingly similar to its CATERPILLAR or CAT marks. When a domain name includes an entire mark, additional terms have been found insufficient to defeat a finding of confusing similarity. See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Similarly, gTLDs are irrelevant for purposes of Policy ¶ 4(a)(i) analysis. See Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”). Here, each domain name wholly incorporates one of the CATERPILLAR or CAT marks and merely adds a descriptive term associated with Complainant’s footwear business (e.g., “footwear”; zapatos” (the Spanish word for footwear), a geographic term or code (e.g.,“romania”; “us”), other words that are apparent from the domain names themselves and the “.com” gTLD. Therefore, the Panel finds that each of Respondent’s disputed domain names is confusingly similar to Complainant’s CATERPILLAR and CAT marks under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CATERPILLAR and CAT marks and to use them in its domain names, adding only various other words to the mark set out above and which do not negate the confusing similarity between the domain names and the trademarks;
(b) Respondent registered the domain names on the respective dates set out above;
(c) Respondent has passed itself off as Complainant and purportedly offered competing goods with the intention of defrauding Complainant’s customers and the Complainant itself. Respondent has also failed to use actively one of the disputed domain names, namely <caterpillarespanazapatos.com>;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the disputed domain names and Complainant has never licensed rights to or authorized Respondent to use the CATERPILLAR or CAT marks. In the absence of a response, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). In addition, where there is no evidence to indicate a complainant has authorized the use of a mark, it may act as support that a respondent is not commonly known by the disputed domain name and thus lacks any rights or legitimate interest in the disputed domain name. The WHOIS information for the disputed domain names list the registrants as “Client Care”,“Web Commerce Communications Limited,” “Katherine Palazzolo,” “Dayna Truelove,” “Federico Justice,” “Unger Tom,” “Paul Maurer,” “Anke Cole,” “Martina BAECKER,” “Nicole BOHM,” or “Johnsson YUSUF.” See Registrar Email Verifications. Further, there is no evidence to suggest that Respondent was authorized, licensed rights to, or otherwise permitted to use the CATERPILLAR or CAT marks. Therefore, the Panel finds that Respondent is not commonly known by, and lacks rights or legitimate interests in, the disputed domain names per Policy ¶ 4(c)(ii);
(f) Complainant contends that Respondent is seeking to pass itself off as Complainant through fraudulent sites that mimic Complainant. Panels have declined to find a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name when a respondent diverts traffic to a site that imitates a complainant. See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”).4(c)(i) & (iii).”). In this case, Complainant provides evidence that the majority of the disputed domain names resolve to sites that feature Complainant’s registered CATERPILLAR or CAT logos and marks prominently in the header; utilize Complainant’s images, text, and the same black and yellow color scheme as Complainant and its authorized retailer’s legitimate sites; and offer Complainant’s branded footwear and apparel products for sale (as well as other footwear and apparel). Compare Compl. Exs.21- 23 (Complainant and authorized retailers’ legitimate sites) with Compl. Exs. 1- 16 (sites of the disputed domain names). As the Panel agrees that Respondent is passing itself off as Complainant and confusing customers by mimicking Complainant’s website, the Panel finds that Respondent lacks a bona fide offering of goods or services and a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii);
(g)Complainant submits that the disputed domain names purport to offer goods that compete with those of Complainant. A respondent’s use of a disputed domain name to offer or display competing goods or services has been held not to satisfy Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). As noted, Respondent displays and offers for sale footwear and apparel, some of which is CATERPILLAR- or CAT-branded. See Compl. Exs. 1-16. The Panel notes that Respondent’s offer to sell competing goods supports a finding that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii);
(h) Complainant contends that at least one of the disputed domain names, <caterpillarespanazapatos.com>, is not actively used. Panels have held that the failure to make active use of a disputed domain name is not bona fide or legitimate. See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). Here, Complainant provides a screenshot showing that <caterpillarespanazapatos.com> resolves to an inactive webpage displaying the message, “Hmm. We’re having trouble finding that site.” See Compl. Ex. 4. The Panel notes Respondent’s non-use of this disputed domain name which is evidence that Respondent lacks rights or legitimate interests in the <caterpillarespanazapatos.com> domain name;
(i) Complainant submits that the disputed domain names are used for fraud. Use of a domain name for phishing or fraud has consistently been found not to constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name. See, e.g., Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”). Respondent’s domain names are frequently blocked by browsers or include warnings for phishing threats. See Compl. Exs. 1-16. Complainant also provides evidence of customer emails and contends that Respondent accepts payments without fulfilling orders. See Compl. Exs. 4, 6, 8, 15, and 16. As the Panel finds the Respondent is using the disputed domain names to defraud Complainant’s customers, it also finds that Respondent fails to make out a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent.
As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent does not have a right or legitimate interest in any of the disputed domain names.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the disputed domain names in bad faith by registering multiple domain names that include the CATERPILLAR or CAT mark. Registration of multiple infringing domain names in a single UDRP proceeding has been held to show a pattern of bad faith use and registration and therefore bad faith under Policy ¶ 4(b)(ii). See Ditec International AB / Global Preservation Systems, LLC v. ADAM FARRAR / HOSTGATOR / FRITS VERGOOSSEN / DITEC INTERNATIONAL CORPORATION / Christopher Alison, FA 1763998 (Forum Feb. 1, 2018) (“Here, Respondent registered six domain names that all include Complainant’s DITEC mark. Therefore, the Panel finds that Respondent’s multiple registrations using the DITEC mark indicates bad faith registration and use per Policy ¶ 4(b)(ii).”). Here, Respondent registered sixteen domain names including either the CATERPILLAR or CAT mark. As the Panels finds that there is a pattern of bad faith use and registration that has been demonstrated, it also finds that Respondent has acted in bad faith pursuant to Policy ¶ 4(b)(ii).
Secondly, Complainant also argues that Respondent is attracting and confusing customers as to the source or affiliation of the disputed domain names by passing itself off and consequently the domain names and websites themselves as the Complainant. Previous Panels have determined that a respondent’s use of a domain name to attract Internet traffic to a site that passes itself off as a complainant evinces bad faith disruption of a complainant’s business pursuant to Policy ¶ 4(b)(iii). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). Passing off has also been held as evidence of bad faith attraction for commercial gain pursuant to Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 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.”). As mentioned above, Respondent’s sites display the CATERPILLAR or CAT mark and logo, as well as Complainant’s content, color scheme, and products. See Compl. Exs. 1-16. As the Panel agrees that Respondent is passing itself off as Complainant, it finds bad faith under Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv).
Thirdly, Complainant argues that Respondent is disrupting its business by offering competing goods for sale. Prior panels have agreed, finding a respondent’s use of a disputed domain name to display or offer for sale competing goods or services constitutes bad faith disruption of a complainant’s business per Policy ¶ 4(b)(iii). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum December 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products). Here, Respondent displays and offers for sale footwear and apparel, some of which is CATERPILLAR- or CAT-branded. See Compl. Exs. 1-16. As the Panel agrees that Respondent is competing with Complainant, it finds that the foregoing is further evidence of bad faith pursuant to Policy ¶ 4(b)(iii).
Fourthly, Complainant submits that Respondent’s non-use of a disputed domain name, namely <caterpillarespanazapatos.com>, also evinces bad faith. When a respondent fails to make active use of a disputed domain name, Panels have held that a respondent acts in bad faith according to Policy ¶ 4(b)(iii). See Dermtek Pharmaceuticals Ltd. v. Sang Im / Private Registration, FA1310001522801 (Forum Nov. 19, 2013) (holding that because the respondent’s website contained no content related to the domain name and instead generated the error message “Error 400-Bad Request,” the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). In this case, one of the disputed domain names, <caterpillarespanazapatos.com>, results in an error message. See Compl. Ex. 4. As the Panel agrees, this fact is additional support for the Panel’s finding of bad faith under Policy ¶ 4(a)(iii).
Fifthly, Complainant argues that Respondent is using the disputed domain names for fraud and has thus demonstrated bad faith registration or use of the domain names. Use of a disputed domain name to phish for personal or financial information or otherwise defraud consumers is independent evidence of bad faith under Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”). As noted previously, Respondent’s domain names are frequently blocked by browsers or include warnings for phishing threats. See Compl. Exs. 1-16. Complainant also provides copies of customer emails and complaints that Respondent accepts payments without fulfilling orders. See Compl. Exs. 4, 6, 8, 15, and 16. As the Panel finds that Respondent is using the disputed domain names to defraud Complainant’s customers and the Complainant, it also finds bad faith use and registration pursuant to Policy ¶ 4(a)(iii).
Sixthly, Complainant submits that Respondent knew of Complainant’s rights in the CATERPILLAR and CAT marks when registering the disputed domain names. Prior UDRP decisions have generally declined to find bad faith on the basis of constructive knowledge. However, it is open to the Panel to determine that Respondent had actual knowledge of Complainant’s rights, as actual knowledge will adequately demonstrate bad faith registration per Policy ¶ 4(a)(ii). See 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.”). To support its submission, Complainant points to the marks’ international fame and reputation, as well as Respondent’s use of the disputed domain names to imitate Complainant, offer competing services, and perpetrate fraud. As the Panel determines that Respondent had actual knowledge of Complainant’s rights in the CATERPILLAR and CAT marks, it finds that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain names using the CATERPILLAR and CAT marks and in view of the conduct that Respondent has engaged in when using the domain names, Respondent registered and used them in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <catfootwearus.com>, <caterpillarsrbija.net>, <caterpillarbotaspt.com>, <caterpillarespanazapatos.com>, <caterpillarfactoryoutlet.com>, <caterpillarscarpeitalia.com>, <caterpillarsrbija.com>, <catfootwearau.com>, <catfootwear-nz.com>, <caterpillarhrvatska.net>, <catbootoutlet.com>, <caterpillar-espana.com>, <caterpillar-romania.com>, <caterpillar-hrvatska.com>, <caterpillarespanaes.com>, and <zapatoscaterpillarespana.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown KC
Panelist
Dated: January 13, 2023
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