The Complainant is Caterpillar Inc. of Illinois, United States of America, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
The Respondent is A Senyk – Speckyfoureyes of Bradford, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2011. On December 16, 2011, the Center transmitted by email to Network Solutions, LLC. a request for registrar verification in connection with the disputed domain name. On December 16, 2011, Network Solutions, LLC. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2012. The Center received an email from a third party on January 4, 2012, of which the Center acknowledged receipt. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2012.
The Center appointed Michael J. Spence as the sole panelist in this matter on January 20, 2012. 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 Rules, paragraph 7. 4. Factual Background
The Complainant is the proprietor of the trade mark CATERPILLAR, which is used in more than 180 countries in relation to more than 300 products and has been in use for more than 100 years. It is one of the world’s most well-known trade marks. Since 2001 it has been registered for eyeglasses and sunglasses. The Respondent does not currently operate a website under the disputed domain name, but owns several domain names that are apparently intended for use in relation to the sale of eyeglasses. The Complainant provides a declaration from its corporate counsel proving that the Respondent has purchased eyeglasses from Complainant’s licensee prior to its registration of the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name contains its trade mark in its entirety; that the Respondent has never used, or made preparations to use, the disputed domain name; and that there is no conceivable use of the disputed domain name which would not be illegitimate and hence in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name contains the Complainant’s trade mark in its entirety. The addition of a term denoting one of the categories of good or which the mark is registered does nothing to prevent the disputed domain name from being identical or confusingly similar to the trade mark. Indeed, it only increases the confusing similarity.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name. B. Rights or Legitimate Interests
It is for the Complainant to establish, at least prima facie that the Respondent has no rights or legitimate interests in the disputed domain names (Croatia Airlines d.d. v. Modern Empire Internet Ltd. WIPO Case No. D2003-0455, Belupod.d. v. WACHEM d.o.o.WIPO Case No. D2004-0110). Nevertheless, given that in this case confusion is almost inevitable, that Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the CATERPILLAR trademark in any Manner, that there is no evidence that the Respondent has made preparations for its use, and that the Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name, it is implausible that the Respondent has any rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the Complainant has established the second element of paragraph 4(a) of the Policy in relation to the disputed domain name. C. Registered and Used in Bad Faith
The Respondent must have been aware at the time of registering the disputed domain name of the strength of the Complainant’s trade mark. Although the Respondent is not using the disputed domain name in connection with any active website whatsoever, given the global strength and long history of the Complainant’s trade mark and the fact that the Respondent had actual notice of the Complainant’s rights in the CATERPILLAR trademark through its previous purchases, it is of the Panel’s opinion that confusion will almost inevitably result from the use of the disputed domain name. Therefore, the disputed domain name was registered and is being used in bad faith.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the UDRP Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Michael J. Spence
Sole Panelist
Date: February 5, 2012
Full & Egal Universal Law Academy