Caterpillar Inc. v. Jorge Anderson / Kerstin Hoffmann / Phillipp Kohler / Brandon Nichols / Frank Scherer / Burns Edward / Paul Saenger / Dieter KALB / Johanna KIRSCH / Kevin HARTMANN / Luca FREYTAG / Michael FAUST / Benjamin KASTNER / Laurie EVELYN / Katrin EBERHART / Martina HOCH / Gabriele GOTTLIEB / Leah KUHN / Stefan HERZOG / Florian FURST / Julia DAECHER / Benjamin KAISER / Ralph PROBST / Karolin GLOECKNER / Lucas WEISS
Claim Number: FA2305002043565
Complainant is Caterpillar Inc. ("Complainant"), represented by Stephanie H. Bald of Kelly IP, LLP, Washington D.C., USA. Respondents are Jorge Anderson / Kerstin Hoffmann / Phillipp Kohler / Brandon Nichols / Frank Scherer / Burns Edward / Paul Saenger / Dieter KALB / Johanna KIRSCH / Kevin HARTMANN / Luca FREYTAG / Michael FAUST / Benjamin KASTNER / Laurie EVELYN / Katrin EBERHART / Martina HOCH / Gabriele GOTTLIEB / Leah KUHN / Stefan HERZOG / Florian FURST / Julia DAECHER / Benjamin KAISER / Ralph PROBST / Karolin GLOECKNER / Lucas WEISS ("Respondents"), United States and Germany.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <catportugal.biz>, <botascaterpillarportugal.com>, <catportugal.com>, <bocancicaterpillar.com>, <botascaterpillarbogota.com>, <botascaterpillarhombreoutlet.com>, <botascaterpillarlisboa.com>, <botascaterpillarliverpool.com>, <botascaterpillaronline.com>, <botycaterpillar.com>, <catboterkek.com>, <caterpillargreece.com>, <caterpillarireland.com>, <caterpillarmunkabakancs.com>, <caterpillar-nederland.com>, <caterpillarshop-italia.com>, <caterpillarskoherre.com>, <caterpillarwarszawa.com>, <caterpillarzapatosargentina.com>, <catsportugal.com>, <catvintersko.com>, <catsportugal.top>, <caterpillar-nederland.top>, <catiportugal.top>, and <zapatoscaterpillarcolombia.net>, registered with NameSilo, LLC; NETIM SARL; PDR Ltd. d/b/a PublicDomainRegistry.com; 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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to Forum electronically on May 8, 2023; Forum received payment on May 8, 2023.
On May 8, 2023, NameSilo, LLC confirmed by email to Forum that the <catportugal.biz>, <botascaterpillarportugal.com>, and <catportugal.com> domain names are registered with NameSilo, LLC, and that Respondents
Jorge Anderson, Kerstin Hoffmann, and Phillipp Kohler, respectively, are the current registrants of the names; and verified that the registrants are bound by the NameSilo, LLC registration agreement and have thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). Corresponding verification messages were received from NETIM SARL, PDR Ltd. d/b/a PublicDomainRegistry.com, and Web Commerce Communications Limited dba WebNic.cc on May 9, 2023, in relation to the other disputed domain names and Respondents.
On May 16, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 5, 2023 by which Respondents could file a Response to the Complaint, via email to all entities and persons listed on Respondents' registrations as technical, administrative, and billing contacts, and to the postmaster username at each of the disputed domain names. Also on May 16, 2023, the Written Notice of the Complaint, notifying Respondents of the email addresses served and the deadline for a Response, was transmitted to Respondents via post and fax, to all entities and persons listed on Respondents' registrations as technical, administrative, and billing contacts.
Having received no response from Respondents, Forum transmitted to the parties a Notification of Respondent Default.
On June 12, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin 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 Respondents.
Complainant requests that the domain names be transferred from Respondents to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant alleges that the entities that control the domain names at issue are effectively controlled by the same person or entity operating under multiple 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 WIPO Overview of WIPO Panel Views on Selected UDRP Questions sets forth factors that are normally considered when a complainant is filed against multiple respondents:
[P]anels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.
Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants' identity(ies) including pseudonyms, (ii) the registrants' contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, § 4.11 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/.
Complainant notes inter alia that the domain names all combine Complainant's CATERPILLAR or CAT mark with generic, descriptive, or geographic terms, and that they are being or have been used for similar fraudulent websites that impersonate Complainant and claim to offer Complainant's footwear products for sale. The Panel also notes many other similarities among the domain names and their registration data, including the fact that more than half of them were registered on the same date, and that they appear to have been registered using false or invalid names, addresses, and telephone numbers. In addition, none of the Respondents have come forward to dispute the allegation that they are one entity acting under multiple aliases, nor to object to the inclusion of all of the domain names in this proceeding.
Under the circumstances, the Panel considers it appropriate to treat the disputed domain names as being under the common control of a single person or entity (hereinafter "Respondent"). See, e.g., HRB Innovations, Inc. v. Domain Holdings / Domain Admin / Ben, FA 2043831 (treating domain names as being under common control in similar circumstances); Caterpillar Inc. v. Juliane Ackermann / Christine Gersten / Katja Holtzmann / Doreen Bieber / Stefan Busch / Bernd Trommler / Cynthia Reynolds / Client Care / Web Commerce Communications Limited / Joseph Graham / Deana Rosario / Troy Cleveland / Bridgett Locklear / Sylvia Edwards / Kenneth Goldstein, FA 2024293 (Forum Jan. 17, 2023) (same); Caterpillar Inc. v. Client Care / Web Commerce Communications Ltd. / Arvidsson Gottfrid / Ewan GARNER / Marie Foerster / Vanessa Kaestner / Hueber Marie, FA 2022244 (Forum Dec. 31, 2022) (same); Caterpillar Inc. v. Client Care / Web Commerce Communications Ltd. / Kristin Fischer / Nadine Zimmerman / Yvonne FAUST / marcel baier, FA 2015314 (same).
A. Complainant
Complainant is a Fortune 100 company and the world's largest manufacturer of construction and mining equipment, diesel and natural gas engines, industrial gas turbines, and diesel-electric locomotives. Complainant has used the CATERPILLAR mark in connection with heavy-industry equipment and related products and services since at least as early as 1904, and the CAT mark since at least as early as 1948. Complainant also uses the CATERPILLAR and CAT marks in connection with other products, including apparel and footwear. Complainant owns trademark registrations for CATERPILLAR and CAT in standard character and design form in more than 150 countries including the United States, and asserts that both marks are famous worldwide.
Respondent registered the disputed domain names between March 2021 and January 2023 using false or invalid names, addresses, and telephone numbers. The domain names are being or have been used for similar fraudulent websites that impersonate Complainant and claim to offer Complainant's footwear products, using product photos and text copied from Complainant's website. Complainant alleges, with supporting evidence, that Respondent accepts payment for orders but does not actually ship the ordered products. Complainant states that Respondent is not commonly known by the domain names and is not authorized to use Complainant's mark.
Complainant contends on the above grounds that each of the disputed domain names is confusingly similar to its CATERPILLAR or CAT mark; that Respondent lacks rights or legitimate interests in the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
Each of disputed domain names incorporates Complainant's registered CATERPILLAR or CAT trademark, adding various generic, descriptive, or geographic terms and a top-level domain. These alterations do not substantially diminish the similarity between the domain names and Complainant's mark. See, e.g., Caterpillar Inc. v. Juliane Ackermann et al., FA 2024293, supra (finding <caterpillar-greece.com>, <botascaterpilarportugal.com>, <catportugal.top>, <caterpillarargentina.net>, <caterpillarmalaysia.net>, <caterpillarireland.net>, and other domain names confusingly similar to CATERPILLAR or CAT). The Panel considers each of the disputed domain names to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain names incorporate Complainant's registered marks without authorization, and they are being used for fraudulent websites that attempt to pass off as Complainant to promote competing and likely nonexistent products. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Caterpillar Inc. v. Juliane Ackermann et al., FA 2024293, supra (finding lack of rights or interests in similar circumstances); Caterpillar Inc. v. Client Care et al., FA 2022244, supra (same); Caterpillar Inc. v. Client Care et al., FA 2015314, supra (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain names.
Finally, Complainant must show that the disputed domain names were registered and are being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered a domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered 25 domain names incorporating Complainant's marks using false or invalid registration data, and has used the domain names for fraudulent websites that attempt to pass off as Complainant to promote competing and likely nonexistent products. Such circumstances are indicative of bad faith registration and use under the Policy. See, e.g., Caterpillar Inc. v. Juliane Ackermann et al., FA 2024293, supra (finding bad faith registration and use in similar circumstances); Caterpillar Inc. v. Client Care et al., FA 2022244, supra (same); Caterpillar Inc. v. Client Care et al., FA 2015314, supra (same). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <catportugal.biz>, <botascaterpillarportugal.com>, <catportugal.com>, <bocancicaterpillar.com>, <botascaterpillarbogota.com>, <botascaterpillarhombreoutlet.com>, <botascaterpillarlisboa.com>, <botascaterpillarliverpool.com>, <botascaterpillaronline.com>, <botycaterpillar.com>, <catboterkek.com>, <caterpillargreece.com>, <caterpillarireland.com>, <caterpillarmunkabakancs.com>, <caterpillar-nederland.com>, <caterpillarshop-italia.com>, <caterpillarskoherre.com>, <caterpillarwarszawa.com>, <caterpillarzapatosargentina.com>, <catsportugal.com>, <catvintersko.com>, <catsportugal.top>, <caterpillar-nederland.top>, <catiportugal.top>, and <zapatoscaterpillarcolombia.net> domain names be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: June 16, 2023
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