Caterpillar Inc. v. Andrea Vernor / Gary Willis / CAT
Claim Number: FA2306002048008
Complainant is Caterpillar Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is Andrea Vernor / Gary Willis / CAT (“Respondent”), Alabama, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <careerscaterpillarcat.com> and <careerscaterrpillar.com>, registered respectively with NameCheap, Inc. and Google LLC.
PANEL
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to Forum electronically on June 7, 2023; Forum received payment on June 7, 2023.
On June 7, 2023, NameCheap, Inc. and Google LLC confirmed by e-mail to Forum that the <careerscaterpillarcat.com> and <careerscaterrpillar.com> domain names are registered with NameCheap, Inc. and Google LLC and that Respondent is the current registrant of the names. NameCheap, Inc. and Google LLC have verified that Respondent is bound by the NameCheap, Inc. and Google LLC 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 June 12, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 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@careerscaterpillarcat.com, postmaster@careerscaterrpillar.com. Also on June 12, 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 July 11, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Alan L. Limbury 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
Paragraph 3(c) of 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”. Paragraph 1(d) of Forum's Supplemental Rules defines “The Holder of a Domain Name Registration” as “the single person or entity listed in the registration information, as verified by the Registrar, at the time of commencement” and sub-paragraph 1(d)(i) provides that a Complainant wishing to make an argument for a single Respondent having multiple aliases must comply with Supplemental Rules 4(c) and 17(a)(i).
Complainant contends that the <careerscaterpillarcat.com> and <careerscaterrpillar.com> domain names are effectively controlled by the same person and/or entity, which is operating under several aliases, noting that the domain names were registered in the same time frame of late April/early May 2023, are similarly constructed and are both used for job scam activities.
In light of these contentions and in the absence of any response, the Panel concludes that, on the balance of probabilities, the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases. Hence this decision refers to Andrea Vernor / Gary Willis / CAT as “Respondent”.
A. Complainant
Complainant is the world’s largest manufacturer of construction and mining equipment, diesel and natural gas engines, industrial gas turbines, and diesel-electric locomotives. The <careerscaterpillarcat.com> and <careerscaterrpillar.com> domain names are confusingly similar to Complainant’s famous and federally registered trademark CATERPILLAR.
Respondent has no rights or legitimate interest in the domain names because they contain and trade on the goodwill of Complainant’s CATERPILLAR and CAT marks and its employment-related website at “www.careers.caterpillar.com”. Respondent is not and has not been commonly known by the domain names and has never been a licensee of Complainant or otherwise authorized by Complainant to use its CATERPILLAR or CAT marks. Respondent’s registration and use of the domain names for fraudulent activities, namely, attempting to pass itself of as Complainant and soliciting or phishing for the personal and confidential information of Internet users seeking employment with Complainant, does not constitute a bona fide offering of goods or services nor a legitimate non-commercial or fair use.
Respondent’s registration and use of the domain names to impersonate Complainant constitutes bad faith. Respondent disrupts Complainant’s business by using the domain names for fraudulent passing off and phishing activities; unfairly competing with Complainant for Internet traffic; and interfering with Complainant’s ability to control use of Complainant’s marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has established all the elements entitling it to relief.
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”).
Complainant has shown that it has rights to the CAT and CATERPILLAR marks through current registrations with the USPTO (e.g., CAT, Reg. No. 0770639, registered June 2, 1964, and CATERPILLAR, Reg. No. 0085816, registered March 15, 1912).
The Panel finds Respondent’s <careerscaterpillarcat.com> domain name to be confusingly similar to Complainant’s CATERPILLAR and CAT marks, since it incorporates both marks in their entirety and differs only by the addition of the word “careers”, which does nothing to distinguish the domain name from the marks.
The Panel finds Respondent’s <careerscaterrpillar.com> domain name to be confusingly similar to Complainant’s CATERPILLAR mark, since it incorporates that mark in its entirety and differs only by the addition of the word “careers” and the letter “r”. In each case the inconsequential “.com” generic top-level domain (“gTLD”) may be ignored.
Complainant has established this element.
Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain names for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain names, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <careerscaterpillarcat.com> and <careerscaterrpillar.com> domain names were registered respectively on May 14, 2023 and April 30, 2023, many years after Complainant has shown that its CAT and CATERPILLAR marks had become famous. The <careerscaterrpillar.com> domain name resolves to a website prominently displaying Complainant’s name and CATERPILLAR mark, featuring photographs and other material copied from Complainant’s website, and seeking the personal and confidential information of Internet users seeking employment with Complainant.
Respondent has used the <careerscaterpillarcat.com> domain name in email sent from the address <annie@careerscaterpillarcat.com> purporting to be from the “Head HR Director of Caterpillar”, using content from Complainant’s website and attempting to conduct a fraudulent online job interview to solicit the recipient’s personal information.
These circumstances, together with Complainant’s assertions, are sufficient to constitute a prima facie showing of absence of rights or legitimate interests in respect of the domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show that it does have rights or legitimate interests in the <careerscaterpillarcat.com> and <careerscaterrpillar.com> domain names. See JUUL Labs, Inc. v. Dryx Emerson / KMF Events LTD, FA1906001849706 (Forum July 17, 2019).
Respondent has made no attempt to do so.
The Panel finds that Respondent has no rights or legitimate interests in respect of the domain names.
Complainant has established this element.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain names in bad faith for purposes of paragraph 4(a)(iii) of the Policy, including:
(iii) Respondent has registered the domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on its website or location.
The circumstances set out above in relation to the second element satisfy the Panel that Respondent was fully aware of Complainants’ famous CAT and CATERPILLAR marks when Respondent registered the <careerscaterpillarcat.com> and <careerscaterrpillar.com> domain names and that Respondent is using the domain names in bad faith for the purpose of phishing for sensitive personal information by impersonating Complainant. Further, that Respondent registered both domain names in bad faith primarily for the purpose of disrupting the business of a competitor and uses the typosquatted <careerscaterrpillar.com> domain name intentionally to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant and its CATERPILLAR mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website. This demonstrates registration and use in bad faith under Policy ¶ 4(b)(iii) and (iv).
Complainant has established this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <careerscaterpillarcat.com> and <careerscaterrpillar.com> domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: July 13, 2023.
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