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 Mohd Ash-Shirazi Mohd Noor of Rawang, Selangor, Malaysia. 2. The Domain Name and Registrar
The disputed domain name (“the Disputed Domain Name”) is registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 20, 2012. On February 21, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the Disputed Domain Name. On February 21, 2012, GoD, 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 February 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2012. On March 12, 2012, the Center received an email communication from the Respondent where it sought a monetary compensation from the Complainant in order to transfer the Disputed Domain Name (the text of which is reproduced under Section 5.B. below). On the same date, the Center acknowledged receipt of the Respondent’s email communication. No formal response has been filed by the Respondent and therefore, on March 16, 2012, the Center notified the parties about the commencement of the panel appointment process. On March 18, 2012, the Center received an email communication from the Respondent requesting further information about the course of the proceedings. On March 19, 2012, the Center acknowledged receipt of the Respondent’s email communication and informed the parties that the communication would be brought to the consideration of the Panel upon its appointment.
The Center appointed Jacques de Werra as the sole panelist in this matter on March 23, 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 world’s leading manufacturer of construction and mining equipment, diesel engines, gas engines, industrial gas turbines and diesel-electric locomotives. It is also a leading services provider through Caterpillar Financial Services, Caterpillar Logistics Services and Progress Rail Services.
The Complainant is the owner of more than 5800 trademark registrations for marks that contain CAT or CATERPILLAR in approximately 150 countries (together “the Trademark”).
The Complainant operates a website using the domain name . The Complainant is also the registrant of the domain name , which redirects Internet users to its website using the
domain name .
According to the Registrar’s verification response, the Disputed Domain Name was registered on October 14, 2011. It is used in connection with a parking service, which provides links pointing to third party companies some of which are competing with the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant first claims that it is the owner of the Trademark and that the Disputed Domain Name is confusingly similar to the Trademark.
The Complainant further alleges that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the Trademark in any manner. The Respondent has never used, or made preparations to use, the Disputed Domain Name or any name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. Because the Respondent is linking to websites that offer goods competitive with those offered by the Complainant, it cannot claim rights or legitimate interests in the Disputed Domain Name. 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.
The Complainant finally claims that the Respondent has acted in bad faith pursuant to paragraph 4(b)(iv) of the Policy by using the Disputed Domain Name in connection with a monetized parking page that provides links advertising goods and services competitive with the goods offered by the Complainant. In light of the widespread use and protection of the Trademark for more than 100 years, it is inconceivable that the Respondent chose the Disputed Domain Name without knowledge of Complainant’s activities and the name and trademark under which the Complainant is doing business which is a sign of bad faith. B. Respondent
The Respondent sent an email communication to the Center on March 12, 2012 stating as follows:
“I understand that your client has rights to the domain and I am agreeing to a voluntary transfer of the domain. Please bear in mind that this is not a demand but rather a suggestion, as act of good faith.
I would appreciate the amount of usd $100 only - because I spend usd $3’,000, a lot of hours in past 4 months, doing SEO works and designs then redesigns on the website.
What I ask is a lot less than having to outsource the same amount of work yourself to a third party.
And with all the works I did, I am sure the domain is worth more than that.
look forward to your response”.
No further communications or formal response has been filed by the Respondent regarding the proceedings. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Disputed Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) that the Disputed Domain Name has been registered and is being used in bad faith.
In cases in which a respondent unilaterally agrees to transfer the disputed domain name to the complainant, it has been held by previous panels that “a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements” (of the Policy). See The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132 which is cited and followed by Valero Energy Corporation, Valero Refining and Marketing Company v. RareNames, WebReg,WIPO Case No. D2006-1336; see also Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.13 confirms the flexibility granted to panels to decide on this issue .
In this case, the Panel cannot admit that the Respondent unilaterally and unconditionally agreed to transfer the Disputed Domain Name to the Complainant in view of the unclear wording of Respondent’s email communication of March 12, 2012 (see Section 5.B. above). The impression rather arises that the Respondent’s intention was to negotiate with the Complainant the conditions of transfer of the Disputed Domain Name and that it did not unilaterally give its consent to the transfer of the Disputed Domain Name to the Complainant.
Consequently, it cannot be admitted that the Respondent gave a “genuine unilateral consent” to transfer the Disputed Domain Name to the Complainant. It is also clear that no settlement was reached between the parties (which could have lead to the termination of the proceedings pursuant to paragraph 17 of the Rules).
In light of the above, the Panel must decide the dispute on the basis of the relevant rules of the Policy. A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has rights in the Trademark in many jurisdictions around the world and that the Trademark is well-known.
A comparison between the Disputed Domain Name and the Trademark shows that the Disputed Domain Name is confusingly similar to the Trademark, given that the Disputed Domain Name fully integrates the element “caterpillar”, which is distinctive.
As a result, based on the rights of the Complainant in the Trademark and on the confusing similarity between the Trademark and the Disputed Domain Name, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous UDRP panels have consistently ruled that paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the Complainant has made a prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
In the Panel’s opinion, the Complainant has made a prima facie case against the Respondent. The Respondent indeed registered the Disputed Domain Name which fully integrates the Trademark owned by the Complainant and uses it in connection with a pay-per-click landing page pointing to products of competitors of the Complainant.
The Complainant has also established that the Respondent has not been commonly known by the Disputed Domain Name and that it is not making a legitimate or fair use of the Disputed Domain Name.
The Panel thus accepts the Complainant’s prima facie showing and it was consequently up to the Respondent to come forward with evidence of a right to or legitimate interests in the Disputed Domain Name, which has not been done given Respondent’s absence of participation in these proceedings.
In addition, the Panel notes that the Respondent has used the Disputed Domain Name in connection with a link farm parking page pointing to the services offered by third parties which are in competition with the Complainant. As recognized by many UDRP panels, it is well-established that operating a link farm parking page using a distinctive trademark in a domain name, and providing connection to goods and/or services which are competing with those of the trademark owner, does not establish rights or legitimate interests. See, e.g., Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp.,WIPO Case No. D2010-1404; VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager,WIPO Case No. D2010-0925; O, Inc. v. Metro Media,WIPO Case No. DME2009-0001; Fifth Third Bancorp v. Texas International Property Associates,WIPO Case No. D2007-0537; MasterCard International Incorporated v. Paul Barbell,WIPO Case No. D2007-1139; Shaw Industries Group, Inc., and Columbia Insurance Company v. Parth Shah,WIPO Case No. D2007-1368; and Alfa Laval AB and Alfa Laval Corporate AB v. A,WIPO Case No. D2007-1881.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name pursuant to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent registered or acquired the Disputed Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Name registration to the Complainant (the owner of the trademark or service mark) or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the Disputed Domain name;
(ii) circumstances indicating that the Respondent registered the Disputed Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the Respondent registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the Respondent intentionally is using the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to its website 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 the Respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
In this case, the Panel holds that the Respondent registered the Disputed Domain Name in bad faith because the Trademark distinctively identify the Complainant and the Complainant’s services so that the choice of the Disputed Domain Name cannot be reasonably explained otherwise than as a reference to the Trademark of the Complainant. The Respondent’s bad faith in the registration and use of the Disputed Domain Name is confirmed by the fact that the Disputed Domain Name is used in connection with a pay-per-click parking page pointing to services some of which are offered by Complainant’s competitors. Such use has consistently been held as a bad faith registration and use of a domain name. See, e.g., Serta Inc. v. Charles Dawson,WIPO Case No. D2008-0147; Bayerische Motoren Werke AG v. bmwrider llc,WIPO Case No. D2008-0610; Roust Trading Ltd. v. AMG LLC,WIPO Case No. D2007-1857; Express Scripts Inc. v. Windgather Investments Limited/ Mr. Cartwright,WIPO Case No. D2007-0267; Sports Saddle, Inc. v. Johnson Enterprises.,WIPO Case No. D2006-0705.
For these reasons, the Panel considers that the Complainant has established that the Disputed Domain Name was registered and is being used in bad faith by the Respondent pursuant to paragraph 4(a)(iii) of the Policy. 7. Decision
For all 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.
Jacques de Werra
Sole Panelist
Dated: April 6, 2012
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