Caterpillar Inc. v. Maike Cintra / rOGERIO LIMA SANTOS / Rivania Aparecida Geralda / Brasil / UDRP Account / PDR Ltd Compliance Team
Claim Number: FA2302002031699
Complainant is Caterpillar Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, Washington D.C., USA. Respondent is Maike Cintra / rOGERIO LIMA SANTOS / Rivania Aparecida Geralda / Brasil / UDRP Account / PDR Ltd Compliance Team (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lojacatshoes.com>, <lojacatboots.com>, <usecaterpillar.com>, <caterpillarcenterbrasil.com>, <calcecat.com>, registered with GoDaddy.com, LLC; PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to Forum electronically on February 14, 2023; Forum received payment on February 14, 2023.
On February 14, 2023; March 3, 2023, GoDaddy.com, LLC; PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to Forum that the <lojacatshoes.com>, <lojacatboots.com>, <usecaterpillar.com>, <caterpillarcenterbrasil.com>, and <calcecat.com> domain names are registered with GoDaddy.com, LLC or PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. GoDaddy.com, LLC; PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the GoDaddy.com, LLC; PDR Ltd. d/b/a PublicDomainRegistry.com 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 8, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 28, 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@lojacatshoes.com, postmaster@lojacatboots.com, postmaster@usecaterpillar.com, postmaster@caterpillarcenterbrasil.com, postmaster@calcecat.com. Also on March 8, 2023, 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 April 1, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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
Complainant alleges that notwithstanding differences in the domain registration records for the at-issue domain names they are nevertheless effectively controlled by the same person and/or entity. 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 instant dispute was filed with regard to five domain names. Two of the domain names, <lojacatshoes.com> and <lojacatboots.com>, have the same contact information and therefore are controlled by the same person or entity. However after considering Complainant’s evidence in support of its position that all five domain name are together controlled, the Panel finds that the three at-issue domain names, <usecaterpillar.com>, <caterpillarcenterbrasil.com>, and <calcecat.com>, are not shown to be similar enough administratively, in construction, and/or in their implementation to <lojacatshoes.com> and <lojacatboots.com>, or to each other, such as to imply that all named domain names are jointly controlled. Indeed, there are facts that tend to show to the contrary that certain nominal respondents are unrelated to the other nominal respondents. Therefore, the two domain names held by Respondent rOgerio Lima Santos, <lojacatshoes.com> and <lojacatboots.com>, will be considered in this proceedings and the <usecaterpillar.com>, <caterpillarcenterbrasil.com>, and <calcecat.com> domain names will be dismissed.
A. Complainant
Complainant contends as follows:
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”).
Complainant also has rights in the CAT mark through trademark registrations with the USPTO.
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 generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the at-issue 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 at-issue 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 Complainant’s goods, competing with Complainant, and defrauding Complainant’s customers. Further, Respondent fails to actively use some of the disputed domain names.
Respondent registered and uses the domain names in bad faith by passing off as Complainant, confusing users as to the source or affiliation of the resolving sites. Respondent is also disrupting Complainant’s business by competing with Complainant in a scheme to defraud Complainant’s customers. In addition, Respondent is not actively using some of the disputed domain names. Further, the registration of multiple infringing domain names in the current proceeding suggests a pattern of bad faith. Finally, Respondent registered the disputed domain names with constructive and/or actual knowledge of Complainant’s rights in the CATERPILLAR and CAT marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the CAT mark.
Respondent is not affiliated with Complainant and has not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the CAT trademark.
Respondent uses the at-issue domain to pass off as Complainant in furtherance of a phishing scheme
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for its CAT mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
The at-issue domain names contain Complainant’s entire CAT trademark prefixed by “loja” and suffixed with “shoes” in one case and “boots” in the other, with both domain names concluding with the top level domain name “.com”. The differences between Respondent’s <lojacatshoes.com> and <lojacatboots.com> domain names, and Complainant’s CAT trademark are insufficient to distinguish either domain name from Complainant’s trademark for the purposes of the Policy. Therefore, the Panel finds that pursuant to Policy ¶ 4(a)(i) Respondent’s <lojacatshoes.com> and <lojacatboots.com> domain names are each confusingly similar to Complainant’s CAT trademark. See Empowered Medical Solutions, Inc. d/b/a QRS-Direct and QRS Magnovit AG v. NULL NULL / QUANTRON RESONANCE SYSTEMS / JIM ANDERSON / HTR / unknown HTR / HTR, FA 1784937 (Forum June 8, 2018) (“Adding or removing descriptive terms or a gTLD is insufficient to differentiate a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).”).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain names. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of either at‑issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
WHOIS information for the <lojacatshoes.com> and <lojacatboots.com> domain name identifies the domain names’ registrant as “rOGERIO LIMA SANTOS” and the record before the Panel contains no evidence that otherwise tends to prove that Respondent is commonly known by either the <lojacatshoes.com> or <lojacatboots.com> domain name. The Panel therefore concludes that Respondent is not commonly known by either <lojacatshoes.com> or <lojacatboots.com> for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent used the confusingly similar <lojacatshoes.com> and <lojacatboots.com> domain names to pass off as Complainant and address websites mimicking Complainant’s website. Notably, Respondent’s websites display Complainant’s images, text, and color schemes. There, Respondent purports to offer products for sale that compete with Complainant’s offering. Using the at-issue domain name to pass off as Complainant in furtherance offering competitive goods for sale is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i)., nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bittrex, Inc. v. Caroline Alves Maia, FA 1796113 (Forum Aug. 6, 2018) (finding the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
As discussed below without limitation, circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
First, on its face the complaint shows that Respondent has registered multiple domain names containing Complainant’s trademarks. Respondent’s registrations show a pattern of bad faith and indicate Respondent’s bad faith pursuant to Policy ¶ 4(a)(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).”).
Next, Respondent used the confusingly similar <lojacatshoes.com> and <lojacatboots.com> domain names to pass itself off as Complainant. Notably and as mentioned above, the websites associated with such domain names mimic Complainant genuine online presence and compete with Complainant. Using the domain names in this manner is disruptive to Complainant’s business and shows Respondent to be exploiting the confusion between the <lojacatshoes.com> and <lojacatboots.com> domain names and Complainant’s trademark for commercial gain thereby indicating Respondent’s bad faith under Policy ¶¶ 4(b)(iii) and (iv). See 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.”); see also, ZIH Corp. v. ou yang lin q, FA 1761403 (Forum Dec. 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). Additionally since it appears that Respondent’s business plan centers around fraudulently taking orders but shipping no products, Respondent’s conniving further demonstrates 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.”); see also 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).
Moreover, Respondent had actual knowledge of Complainant’s rights in the CAT mark when it registered <lojacatshoes.com> and <lojacatboots.com> as domain names. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademark and from the fact that Respondent’s related websites featured Complainant’s trademarks and logos and were made to appear as if sponsored by Complainant. Respondent’s registration and use of the <lojacatshoes.com> and <lojacatboots.com> domain names with knowledge of Complainant’s rights in CAT further indicates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy regarding <lojacatshoes.com> and <lojacatboots.com>, the Panel concludes that relief shall be GRANTED as to such domain names.
Accordingly, it is Ordered that the <lojacatshoes.com> and <lojacatboots.com> domain names be TRANSFERRED from Respondent to Complainant. Furthermore, since the <usecaterpillar.com>, <caterpillarcenterbrasil.com>, and <calcecat.com> domain names have not been shown to be under common control by a single person or entity the proceedings are dismissed without prejudice as to the <usecaterpillar.com>, <caterpillarcenterbrasil.com> and <calcecat.com> domain names.
Paul M. DeCicco, Panelist
Dated: April 4, 2023
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