The Complainant is Caterpillar Inc. of Peoria, Illinois, United States of America, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
The Respondent is zhangxu of Xingning, Guangdong, China. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with Jiangsu Bangning Science & technology Co. Ltd (the “Registrar”). 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 the Registrar a request for registrar verification in connection with the Domain Name. On December 19, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to the Center’s request, on December 19, 2011 the Complainant confirmed that the Complaint, together with the Complaint Transmittal Coversheet, has been sent to the Respondent and the Registrar. On December 19, 2011, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On the same date, the Complainant confirmed its request that English be the language of the administrative proceeding. The Respondent did not comment on the language of proceedings by the specified due date.
The Center verified that the Complaint together with the Complainant’s confirmation 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 January 3, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 23, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2012.
The Center appointed Karen Fong as the sole panelist in this matter on February 3, 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, a publicly traded company listed on the New York Stock Exchange, is the world’s leading manufacturer of construction and mining equipment, diesel and natural gas engines, industrial gas turbines and diesel-electric locomotives. The Complainant also is a leading services provider through Caterpillar Financial Services, Caterpillar Remanufacturing Services, Caterpillar Logistics Services and Progress Rail Services. It’s 2010 sales and revenues reached US$ 42.6 billion. The Complainant serves customers in more than 180 countries around the world with more than 300 products.
The Complainant trades under the CAT and CATERPILLAR trade marks. The CATERPILLAR brand is listed by Interbrand as one of the 100 best global brands in 2010. Since at least 1991, the Complainant has licensed the CAT trade mark for use in connection with footwear to Wolverine World Wide, Inc (“the Licensee”). The CAT trade mark is registered around the world in connection with footwear and related goods and services. These trade mark registrations include the following in the United States: 1,908,556; 2,488,264 and 3,365,449, in classes 25 and 35, the earliest of which was registered in 1995. The Complainant operates a website connected to the domain name which was created on March 25, 1993. The Complainant is also the owner of the domain name which was registered in 1995. The Licensee operates the website connected to this domain name.
By reason of the long and extensive use of the CAT trade mark, it has become well known and famous worldwide.
The Respondent registered the Domain Name on November 13, 2010. The Domain Name is connected to an active website in Chinese which offers for sale and sells footwear bearing the Complainant’s CAT trade mark (“the Website”). The Website also prominently displays the Complainant’s distinctive CAT logo. The shoes bearing the Complainant’s CAT trade mark have been identified as counterfeit. The Respondent owns many other domain names that contain trade marks owned by third parties. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to the CAT trade mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the registration agreement is Chinese.
The Complainant submits in paragraph 10 of the Complaint as well as in the language submission that the language of the proceeding should be English. The Complainant contends amongst other things that the Domain Name consist of words in the English language. Conducting the proceedings in Chinese would disadvantage the Complainant as it would have to incur substantial added expense and inconvenience in having this complaint translated into Chinese.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding and is satisfied that the Respondent is familiar with the English language. The Complainant may be unduly disadvantaged by having to conduct the proceedings in Chinese. The Panel notes that all of the communications from the Center to the parties were transmitted in both Chinese and English. Further, the Respondent did not respond to the Complaint or the language of the proceeding by the specified due dates.
Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding. B. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith. C. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the trade mark CAT.
The threshold test for confusingly similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Complainant’s registered trade mark CAT is the dominant portion of the Domain Name. The addition of the descriptive term “shoes” does nothing to minimise the risk of confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy it is permissible for the Panel to ignore the generic domain suffix “.com”.
The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights.
D. Rights or Legitimate Interests
The Complainant has not licensed, consented or otherwise authorized the Respondent to use its CAT trade mark in the Domain Name or in any other manner. The Respondent is not commonly known by the Domain Name.
The Complainant contends that CAT shoes are sold only through authorized distributors and the Respondent has not been authorised by the Complainant or the Licensee to sell CAT products. The Complainant has submitted a notarized declaration from its Corporate Counsel that to the best of her knowledge the images of the footwear appearing on the Website are of counterfeit merchandise. There can be no legitimate interest in the sale of counterfeits. The Complainant has satisfied its burden of proof of showing that the Respondent lacks rights or legitimate interests in the Domain Name. (See Wellquest International, Inc. v. Nicholas Clark - WIPO Case No. D2005-0552 and Farouk Systems, Inc v. QYM,WIPO Case No. D2009-1572).
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. E. Registered and Used in Bad Faith
To succeed under the Policy, a Complainant must show that the domain name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the Complainant’s trade mark when it registered the Domain Name. The Complainant has provided sufficient evidence that the Domain Name registration post dates the CAT trade mark registrations.
In this Panel’s view, the very incorporation of the Complainant’s trade mark in the Domain Name and the display of the Complainant’s trade mark and counterfeit products on the Website confirm the Respondent’s awareness of the trade mark.
Thus, the Panel concludes that the Respondent deliberately registered the Domain Name in bad faith.
The Panel also finds that the actual use of the Domain Name is in bad faith. The products offered for sale on the Website appear to be counterfeit CAT products for reasons set out in section 6D above. The use by a respondent of a domain name which includes a well known trade mark to resolve to a website which offers and sells counterfeit products under that trade mark is evidence of bad faith registration and use. (See Burberry Limited v Jonathan Schefren,WIPO Case No.. D2008-1546 and Prada SA v Domains for Life, WIPO Case No. D2004-1019).
In addition, the Website appears to have been set up to deliberately mislead Internet users that it is connected to, authorised by or affiliated to the Complainant. This includes the use of the Complainant’s CAT logo on the Website.
From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s website is and the products sold on it are those of or authorised or endorsed by the Complainant.
Further, in this Panel’s view, the Respondent’s registration of the Domain Name prevents the Complainant from reflecting its mark in a corresponding domain name and the Respondent appears to have also engaged in a pattern of such conduct by registering multiple domain names that contain trade marks owned by other well known brand owners including “Puma”, “Asics”, “Hush Puppies”, “the North Face” and “Vans”.
The Panel therefore concludes that the Domain Name was registered and is being used in bad faith under paragraphs 4(b)(iv) and 4(b)(ii) of the 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 Domain Name be transferred to the Complainant.
Karen Fong
Sole Panelist
Dated: February 15, 2012
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