WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Caterpillar Inc. V. Spiral Matrix/ Kentech, Inc.,/Titan Net / NOLDC, Inc
Case No. D2006-0808
1. The Parties
The Complainant is Caterpillar Inc. of Peoria, Illinois, United States of America (the “Complainant”) and is represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
The Respondent entities in this case are Spiral Matrix, Kentech Inc. and Titan Net, all of Eldoret, Kenya and NOLDC, Inc. of New Orleans, Louisiana, United States of America (collectively the “Respondent”). The Respondent did not respond to the communications of WIPO and is unrepresented.
2. The Domain Names and Registrar
The disputed domain names are:
(All 41 domain names above herein after referred to as “Contested Domain names”)
The Contested Domain names are all registered either with Domain Contender LLC and Intercosmos Media Group, Inc dba directNIC.com. Both Registrars have the same address in New Orleans, Louisiana, United States of America.
3. Procedural History
Issuance of Complaint
3.1 The Complainant by email and by courier submitted to the World Intellectual Property Organization Arbitration and Mediation Center (“the Center”) a Complaint made pursuant to the Uniform Domain Name Dispute Resolution Policy (“Policy”), implemented by the Internet Corporation for Assigned Names and Numbers (ICANN and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date (“Rules”). The email copy of the Complaint was received by the Center by e-mail on June 27, 2006, and in hard copy on June 29, 2006. An Acknowledgment of Receipt was sent by the Center to the Complainant by email on June 30, 2006.
Confirmation of Registration Details
3.2 On June 29, 2006, the Center transmitted by way of 2 separate emails to Intercosmos Media Group, Inc dba directNIC.com and to Domain Contender LLC, both of 650 Poydras Street, Suite 1150, New Orleans, LA 70130, USA for a request for registrar verification in connection with the domain names at issue requesting it to:
(1) confirm that a copy of the Complaint was sent to the Registrar by the Complainant, as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, Paragraph 4(b);
(2) confirm that the domain name(s) at issue is/are registered with the applicable Registrar;
(3) confirm that the Respondent is the current registrant of the applicable domain name(s);
(4) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact;
(5) confirm that the Uniform Domain Name Dispute Resolution Policy applies to the disputed domain name(s);
(6) indicate the current status of the disputed domain name(s)
On the same date (June 29, 2006), both Intercosmos Media Group, Inc dba directNIC.com and Domain Contender LLC confirmed by separate e-mails that it was in receipt of the Complaint sent to itself by the Center, the applicable disputed domain names were registered with the applicable Registrars, and that the Respondent was the current registrant of the disputed domain names. The Registrars also forwarded the requested WHOIS details, confirmed that the Uniform Domain Name Dispute Resolution Policy was in effect and stated that the domain name was on “Hold” status and that the domain names would remain locked during the pending administrative proceeding.
On June 30, 2006, the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
Notification to Respondent
3.3 In accordance with the Uniform Rules, paragraphs 2(a) and 4(a), the Center having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, and that payment of the filing fee had been properly made, the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 30,�2006. In accordance with the Rules, paragraph�5(a), the due date for Response was July 20,�2006. On June 30, 2006, the Center sent a formal acknowledgement of Receipt of Complaint by way of DHL Courier and facsimile to both the Complainant and Respondent and confirmed that both a Center Case Manager as well as case number D2006-0808 had been allocated to the dispute and that the Center was obliged under Paragraph 4(a) of the Uniform Rules to determine if the Complaint satisfies the formal requirements of the Uniform Policy and the Uniform Rules.
Constitution of Administrative Panel
3.4 The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 21, 2006. The Center appointed Dr.�Colin�Yee� Cheng Ong as the sole panelist in this matter on July 21, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Uniform Rules, paragraph 7. On June�21,�2006, the Center issued to both parties a Notification of Appointment of Administrative Panel and Projected Decision Date, informing of Dr Ong’s appointment and that absent exceptional circumstances a decision would be provided by this Administrative Panel by August 4, 2006. The language of the proceedings before this Administrative Panel was conducted in the English language.
4. Factual Background
4.1 The Complainant and its activities
The Panel has looked at the Complainant’s submissions and indices containing various attached printouts from various websites, Business Week magazine inter brand 2005 report, trademark certificates and Complainant’s letters relating to the Complainant. The Panel finds that the Complainant owns valid and subsisting rights as well as Trademark registration. The Complainant is a Fortune 100 company and the world’s largest manufacturer of construction and mining equipment, diesel and natural gas engines, and industrial gas turbines and is ranked first in its industry.
The Complainant is the owner of the trademark and service mark CATERPILLAR which has been in use since 1904. The CATERPILLAR mark has been used extensively and advertised and was ranked one of the “Top 100 Brands” and valued at more than $4,000,000,000 by Interbrand in 2005 as seen in Business Week.
4.2 Complainant’s Activities
The Complainant contends that:
The Complainant has submitted that it has sold many billions of dollars worth of products under the CATERPILLAR mark and had given as an example, the statistics that Caterpillar had worldwide sales and revenue in excess of U.S. $ 36,000,000,000 in 2005. The Complainant submitted that it spends millions of dollars every year to advertise and promote its products and services under the CATERPILLAR mark and that it extensively promotes its products and services under the CATERPILLAR mark on the Internet. The Complainant had used its websites accessible via the domain names CATERPILLAR.COM and CAT.COM as a worldwide information and distribution channel for its business since 1993 and, receives many millions of hits each month.
The Complainant has continuously used CATERPILLAR as a trade name, trademark, and service mark since 1904, and owns registrations for the CATERPILLAR word and design mark in more than 150 countries around the world. In the United States alone, the Complainant showed print outs of its registrations from United States Patent and Trademark Office’s online database, which including the following representative registrations:
a. Registration No. 85,816, first used September 1, 1904, filed November 18, 1910, issued March 19, 1912, covering goods in International Class 7 (engines and machines).
b. Registration No. 85,748, first used 1910, filed August 19, 1911, issued March�12,�1912, covering goods in International Class 4 (lubricants).
c. Registration No. 345,499, first used September 1904, filed December 12, 1936, issued April 27, 1937, covering goods in International Class 7 (tractors, engines, and machinery).
d. Registration No. 1,911,472, first used June 1988, filed October 28, 1993, issued August 15, 1995, covering goods in International Class 25 (footwear).
e. Registration No. 2,234,261, first used January 1990, filed March 23, 1998, issued March 23, 1999, covering goods in International Class 25 (apparel).
4.3 Respondent’s Activities
The Respondent is the registrant of the 41 contested domain names that have been registered with both Intercosmos Media Group, Inc dba directNIC.com and Domain Contender LLC. The Respondent does not appear to have used the domain name in connection with any bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the UDRP. The Respondent has instead offered all of the 41 Contested Domain Names for sale on a website at the domain.
5. Parties’ Contentions
A. Complainant
(i) Identical or Confusingly Similar
The Complainant contends that the domain names currently used by Respondent are confusingly similar to Complainant’s trademarks. The Complainant’s earlier registered trademarks in the United States Trademark Office and other countries are prima facie evidence of their validity.
The Respondent’s domain names , , , , , , , , , , , , , , , , , , , ,, , , , , and SHOESCATERPILLAR.COM are confusingly similar to Complainant’s CATERPILLAR mark because each is comprised of Complainant’s mark or a common misspelling with generic terms.
The Complainant submits that combining Complainant’s CATERPILLAR mark or misspellings with generic terms or misspelled generic terms is insufficient to distinguish the Domain Names from Complainant’s mark. The Complainant submits that the contested Domain Names are confusingly similar to Complainant’s CATERPILLAR mark because “The mere addition of descriptive or generic words to a famous mark, however, does not eliminate the similarity between the domain name and the trademark.”, citing from the previous WIPO decision of Caterpillar Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275.
The Complainant relied upon the decision of Yahoo! Inc. v. Gianluca Deiana d/b/a Ayhooo Inc, NAF FA0410000339579, where in the Panel there had found the domain name and among others confusingly similar to the complainant’s YAHOO! mark because “the addition of generic terms to a common misspelling of [c]omplainant’s mark is sufficient to establish that such domain names are confusingly similar to [c]omplainant’s mark”.
The Complainant submitted that the domain names , , , , , , , , , and are confusingly similar to Complainant’s CATERPILLAR mark because each is a misspelling of Complainant’s CATERPILLAR mark. The Complainant submitted that previous UDRP Panels have consistently held that misspelling a trademark is not sufficient to distinguish the disputed domain name from the complainant’s mark and had provided as an example the decision of Caterpillar Inc. v. Center for Ban on Drugs, NAF FA0603000661437.
The Complainant submitted that the domain name is confusingly similar to Complainant’s CATERPILLAR mark because it is comprised of the CATERPILLAR mark and the geographic term “India.” Combining Complainant’s CATERPILLAR mark with a geographic term is not sufficient to distinguish the Domain Name from Complainant’s mark.
The Complainant submitted that the domain names , , , and are confusingly similar to Complainant’s CATERPILLAR mark because each incorporates Complainant’s mark and a third party mark (DENTSU, HOLT, MITSUBISHI, and ZIEGLER, respectively). The mark HOLT is owned by Caterpillar’s authorized dealers Holt of California and Holt Cat in Texas, and Holt is also the name of Caterpillar’s co-founder Benjamin Holt. The mark ZIEGLER is owned by Caterpillar’s authorized dealer Ziegler, Inc. in Minnesota, and the mark MITSUBISHI is owned by Caterpillar’s partner Mitsubishi Heavy Industries, Ltd. The Complainant submitted that combining the Complainant’s CATERPILLAR mark with third party marks is not sufficient to distinguish the Domain Names from Complainant’s mark. The Complainant submitted that this contention is particularly true where the added mark identifies a business partner of Complainant that is closely associated with Complainant, or where the added name identifies Complainant’s co-founder. It relied upon the US decision of WeddingC Inc. v. Albert Jackson, NAF FA0405000273990.
(ii) Rights or Legitimate Interests
According to paragraph�4(b) (ii) of the Policy, the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the 41 contested domain names. The Respondent registered the domain names only after Complainant had established rights in its CATERPILLAR marks.
The Complainant has contended that the Respondent cannot demonstrate any legitimate interest in the contested Domain Names and that the Respondent’s activities in using the contested domain names for a pay-per-click website featuring links to websites offering Complainant’s products and products offered by Complainant’s competitors is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under the UDRP
(iii) Registered and Used in Bad Faith
The Complainant submits that Respondent’s actions evidence bad faith use and registration of the Contested Domain Names under�paragraph�4(b)(iv) of the Policy, because it is using the Contested Domain Names in bad faith to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation, or endorsement of its websites.
The Complainant submits that the Respondent’s registration and use of the Domain Names meet the bad faith element set out in Section 4(b)(iii) of the UDRP. The Respondent disrupts Complainant’s business and unfairly competes with Complainant by using the Domain Names for commercial pay-per-click websites advertising competing products.
The Complainant further submits that the Respondent’s registration and use of the Domain Names meet the bad faith element set forth in Section 4(b)(i) of the UDRP because Respondent had registered the Domain Names to sell, rent, or otherwise transfer them for valuable consideration in excess of its documented out-of-pocket expenses. The Complainant relied upon the fact that the Respondent had offered to sell the Domain Names on its KENYATECH.COM website and on some websites associated with the Domain Names.
The Complainant submitted that the Respondent’s registration and use of the domain names , , , , , , , , , and constituted “typosquatting” in bad faith because the Respondent had registered and uses these Domain Names to take advantage of Internet users who mistype Complainant’s domain name when attempting to reach Complainant’s website. The Complainant relied upon the US decision of Caterpillar Inc. v. Center for Ban on Drugs (NAF FA0603000661437) wherein the Panel had ordered the transfer of the domain name because “Use of a typosquatted version of Complainant’s mark in the disputed domain name is further evidence of bad faith registration and use...”
B. Respondent
The Respondent did not submit any response.
6. Discussion and Findings
The Panel finds that the proceedings have been conducted in accordance with the Uniform Rules and the Policy. The procedural history of this case raises the question as to whether Respondent has received notice of this proceeding. Having gone through the series of communications as set out above under the section on procedural history, the Panel concludes that the Center has notified the Respondent of this proceeding and has discharged its responsibility under paragraph 2(a) of the Uniform Rules. The Panel finds that the proceedings have been conducted in accordance with the Uniform Rules and the Policy. According to Paragraph 14 (a) of the Uniform Rules, where there is a failure by the respondent to provide a response to the allegations of the complainant, as in the present case, the Panel is directed to make a decision on the administrative proceedings on the basis of the complaint and in accordance with Paragraph 14 (b), the Panel shall “draw such inferences there from as it considers appropriate”
The Respondent has been accorded with the opportunity to provide submissions and evidence to dispute the claims of the Complainant. If the Respondent chooses not to present any such evidence, an inference may be made that such evidence would not have been favorable to the Respondent, or that he accepts the claims of the Complainant, or even that he does not wish to respond or defend his perceived interest in the trademark. In such case of silence by the Respondent, the Complainant shall then continue with his case and shall have to prove the three elements that are required by the Policy without opposition than the Complainant’s own ability to explain them. (See: PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700; Easyjet Airline Company Ltd. v. Andrew Steggles, WIPO Case No. D2000-0024 and Franpin, S.A. v. Paint Tools, S.L,. WIPO Case No. D2000-0052).
The Panel should not decide in the complainant’s favor solely because of the reason of the Respondent’s default (See: Cortefiel S.A. v. Miguel Garc�a Quintas, WIPO Case No. D2000-0140). Under paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements of its case:
(i) The Respondent’s domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) The Respondent’s domain names have been registered and are being used in bad faith.
Under paragraph 15(a) of the Rules, this Panel must “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”.
(a) The Complainant has the Right to the Mark/Domain Name and the Respondent’s Domain Name is Identical or confusingly similar
The Panel finds that the Complainant, as registered proprietor of the CATERPILLAR Trademarks, has established rights in those trademarks, sufficient for the purposes of paragraph�4(a) of the Rules. The panel finds that there is a confusing similarity between the Complainant’s CATERPILLAR trademarks and the Contested Domain names. The test as to what constitutes “confusing similarity” in such proceedings as these, in the Panel’s opinion, is whether or not an informed potential customer of the rightful services would, during the process of looking at the domain name, reasonably believe that the website to be accessed was operated by, or on behalf of the owner of a trademark in connection with that owner’s business. The essential function of a trademark was to guarantee the identity of the origin of the marked product to the consumer by enabling him to distinguish the product or service from others which had another origin. Thus, a risk that the public might believe that the goods or services in question came from the same or economically linked undertakings constituted a likelihood of confusion. See Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer Inc, European Court of Justice decision [1999] RPC 117. And see PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700.
The likelihood of confusion has to be appreciated globally, taking account of all relevant factors and the more distinctive the earlier mark the greater would be the likelihood of confusion. Where the association between the domain name and the trademark would cause the end user to believe wrongly that the respective services came from the same or economically linked undertakings, there would be a likelihood of confusion. See Ellerman Investments Ltd. and another v. C-Vanci [2006] EWHC 1442 and see PRL USA Holdings, Inc. v. Yan Shif WIPO Case No. D2006-0700.
The deliberate misspelling of the disputed domain names is not sufficient to distinguish the disputed domain name from the complainant’s marks. The Panel concludes that the Complainant has established paragraph 4(a)(i) of the Policy.
(b) The Respondent has no rights or legitimate interests in respect of the domain name
According to Policy, paragraph�4(b) (ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the domain name. Paragraph�4(c) of the Policy sets out three elements, any of which shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The Complainant has established prima facie evidence that none of the three elements establishing legitimate interests or rights mentioned in paragraph 4(a)(ii) of the Policy applies. In such instance, the burden of proof shifts on the Respondent to rebut the evidence (see, Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806).
The Respondent did not register the disputed domain name in connection with a bona fide offering of goods and services pursuant to Policy Paragraph 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Paragraph 4(c)(iii) of the Policy. See PRL USA Holdings, Inc. v. Lucas Cobb, WIPO Case No. D2006-0162.
Where, as here, Complainant’s marks and name are so well-known and so widely recognized, and have been used in the United States and 20 other countries for so many years, in the circumstances, there can be no legitimate rights or plausible use by Respondent.
The Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the disputed domain name and, accordingly, paragraph�4(a)(ii) of the Policy is satisfied.
(c) Registration and Use in Bad Faith
Paragraph 4(b)(iv) of the Policy provides that one of the circumstances evidencing registration and use of a domain name in bad faith is that, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line locations, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the respondent’s web site or location or of a product or service on the respondent’s web site or location. See PRL USA Holdings, Inc. v. Yan Shif, WIPO Case No. D2006-0700 and Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co, WIPO Case No.�D2000-0163 (“The domain name is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad�faith.”)
Registration of a domain name that is confusingly similar or identical to a famous trademark by any entity, which has no relationship to that mark, is itself sufficient evidence of bad faith registration and use (see Centurion Bank of Punjab Limited v. West Coast Consulting, LLC, WIPO Case No. D2005-1319).
The panel does find that in view of the submitted evidence, and in the specific circumstances of this case, there is a very strong inference that the Respondent’s purpose of registering the domain name was for commercial gain in bad faith within the meaning of the Policy.
The Panel finds that the Complainant has established that the disputed domain names were registered and are being used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Uniform Rules, the Panel orders that the contested domain names,
, , , , ,, >, , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , ,
be transferred to the Complainant.
Dr. Colin Yee Cheng Ong
Sole Panelist
Dated: August 4, 2006
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