The Complainant is Caterpillar, Inc. of Peoria, Illinois , United States of America ("USA"), represented by Hogan Lovells (Paris) LLP, France.
The Respondents are Yanh Chao of Kiev Oblast, Ukraine and Domain Admin, Privacy Protection Service INC d/b/a PrivacyP of Queensland, Australia. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with PDR Ltd. d/b/a PublicDomainR (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 7, 2014. The Center transmitted its request for registrar verification to the Registrar the same day. The Registrar replied on October 9, 2014, confirming that it is the registrar of the Domain Name, that the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP") applies, that the Domain Name was registered on May 6, 2011, and expires on May 6, 2015, and that the language of the registration agreement is English. The Registrar identified the registrant as Yanh Chao of Kiev Oblast, Ukraine and provided the full contact details held on its WhoIs database. The Registrar also stated that it had not received a copy of the Complaint.
The Center invited the Complainant on October 9, 2014, to amend the Complaint in the light of the information as to the identity of the registrant received from the Registrar. The Complainant submitted an amended Complaint on October 14, 2014, adding Yanh Chao as a respondent.
The Center verified that the amended Complaint satisfied the formal requirements of the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Complaint to the Respondents and the proceedings commenced on October 16, 2014. The hard copy of the Complaint could not be delivered to the Respondent, Yanh Chao, since the street address provided to the Registrar did not exist.
In accordance with paragraph 5(a) of the Rules, the due date for Response was November 5, 2014. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on November 6, 2014.
The Center appointed Jonathan Turner as the sole panelist in this matter on November 13, 2014. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the amended Complaint complied with applicable formal requirement, was duly notified to the Respondents and has been submitted to a properly constituted Panel in accordance with the UDRP, the Rules and the Supplemental Rules. 4. Factual Background
The Complainant is a leading manufacturer of construction and mining equipment, diesel and gas engines, industrial gas turbines and diesel-electric locomotives. It is a successor in business to the Holt Caterpillar Company formed in 1909 and was created following a merger with another company in 1925. It now operates in more than 500 locations in over 180 countries around the world and had revenues of nearly USD 66 billion in 2013.
One of the Complainant's principal brands is a logo of the word CAT. The Complainant has registered its CAT logo and the word CAT as trademarks in the USA, the European Union and the Ukraine.
The Complainant provides detailed manuals to enable its "CAT" equipment to be properly and safely used and maintained. The Complainant operates a dedicated website for these manuals at "". The Complainant also operates websites at "" and "", and uses other domain names including the word CAT, such as , , , , , , , etc. The Complainant also uses the name CAT on social media pages, such as "/catproducts", "/catauctions" and "/catproducts".
The Domain Name has been pointed to a website offering or purporting to offer for sale copies of manuals for the Complainant's CAT products. On May 31, 2013, the Complainant sent a cease and desist letter to the then registrant of the Domain Name, Ekaterina Mineeva of Kiev Oblast, Ukraine. The Complainant did not receive any reply to this letter, but the registration of the Domain Name was changed shortly afterwards to record the Respondent, PrivacyP, as the registrant. On July 8, 2014, the Complainant's lawyers sent a letter to PrivacyP asking it to identify the underlying registrant so that it could pursue proceedings against the latter, including a complaint under the UDRP. PrivacyP replied referring to a form which could be used to contact the underlying registrant and stating that a trademark infringement claim could be brought only after filing a UDRP complaint. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its registered trademark CAT, in that it differs from this mark only by the addition of the descriptive term "manual" and the generic Top-Level Domain (gTLD) suffix.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Domain Name. Referring to the case Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (the "Oki Data case"), the Complainant comments that the Respondent has not satisfied the cumulative conditions identified in this decision for a reseller to have a right or legitimate interest in a domain name. According to the Complainant, the first condition is not satisfied because the Respondent's website is offering for sale manuals protected by the Complainant's copyright and using its registered trademark without the Complainant's consent and therefore illegally. Furthermore, the Complainant submits that the third condition is not satisfied, because the Respondent is not accurately disclosing its lack of relationship with the Complainant: there is no disclaimer on its website and it has the look and feel of the Complainant's own websites, including the Complainant's colour scheme and text and images taken from the Complainant's websites.
The Complainant adds that the Respondent is not commonly known by the Domain Name and is not making noncommercial or fair use of it, since it is charging substantial prices for the manuals which it is selling or purporting to sell.
The Complainant alleges that the Domain Name was registered and is being used in bad faith. The Complainant points out that the Respondent must have known of the Complainant's rights in the mark "CAT" and must have intended the Domain Name to take advantage of them. The Complainant continues that the Respondent is using the Domain Name to confuse Internet users and to mislead them into believing that its website is connected to or operated by the Complainant when it is not.
The Complainant adds that the failure to respond to its cease and desist letter, the concealment of the registrant's identity following the cease and desist letter, and its provision of a false address, are further evidence of bad faith.
The Complainant seeks a decision that the Domain Name be transferred to the Complainant. B. Respondents
As stated above, the Respondents did not reply to the Complainant's contentions. 6. Discussion and Findings
The Panel regards Yanh Chao as the real Respondent in this proceeding and will refer accordingly to the Respondent in the singular in this discussion.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove: (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. It is appropriate to consider each of these requirements in turn.
In accordance with paragraph 14(b) of the Rules, the Panel draws such inferences from the Respondent's default as it considers appropriate. This includes the acceptance of plausible evidence of the Complainant which has not been disputed. A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered and unregistered rights in the mark CAT.
The Panel further finds that the Domain Name is confusingly similar to this mark from which it differs only in the prefixing of the descriptive word "manual" and the generic top level domain suffix. The risk of confusion is increased by the significance of manuals for the Complainant's business and the fact that it operates a dedicated website for its manuals at a web address which contains similar elements, namely "".
Although the comparison to be made for the first requirement of the UDRP is between the Complainant's mark and the Domain Name, the fact that the Respondent's website relates to manuals for the Complainant's products is a clear indication that the Domain Name is likely to be taken to refer to the Complainant.
The first requirement of the UDRP is satisfied. B. Rights or Legitimate Interests
There is no allegation by the Complainant that the Respondent's website is bogus in the sense that the Respondent is not selling the Complainant's manuals or copies of them at all. In these circumstances, the Panel will address the position on the basis that the Respondent is selling these items.
On this basis, the Complainant has correctly identified the critical question as being whether the conditions identified in the Oki Data case have been satisfied.
The Panel is not persuaded by the allegation that the Respondent is infringing copyright and trademark rights in selling copies of the Complainant's manuals downloaded from the Internet. This would appear to depend on the applicable law regarding exhaustion of rights, which the Panel is not able to determine in this proceeding on the available evidence. On this point, the Panel follows the decision in Koninklijke Philips Electronics N.V. v. Cun Siang Wang,WIPO Case No. D2000-1778. The decision in CNH America LLC v UnderHost Networks Ltd,WIPO Case No. D2013-1252, cited by the Complainant, would appear to turn on its particular facts.
However, the Panel is satisfied that the Respondent's website does not satisfy the third condition identified in the Oki Data case, namely that the website must accurately disclose the registrant's relationship with the trademark owner. The Respondent's website does not make it clear that it is not authorized by the Complainant and that the Respondent has no relationship with the Complainant. On the contrary, by using elements of the Complainant's livery, the website gives the appearance of being connected with the Complainant. On the undisputed evidence, the Panel accepts that the Respondent's website is liable to mislead Internet users into believing that it is a website of the Complainant or authorized and sanctioned by the Complainant.
In these circumstances, the Respondent cannot be regarded as having used the Domain Name in connection with a bona fide offering of goods or services so as to acquire a right or legitimate interest in it in accordance with paragraph 4(c)(i) of the UDRP.
It is evident that the Respondent is not commonly known by the Domain Name. It is also clear that the Respondent is not making legitimate noncommercial or fair use of the Domain Name. On the contrary, the Respondent is using it for commercial purposes and unfairly by misleading Internet users into believing that it is authorized by the Complainant when it is not.
On the evidence in the file, there is no other basis on which the Respondent could claim any right or legitimate interest in respect of the Domain Name or a corresponding name. In all the circumstances, the Panel finds that the Respondent has no such right or legitimate interest. The second requirement of the UDRP is satisfied. C. Registered and Used in Bad Faith
As mentioned above, the Panel accepts the Complainant's undisputed evidence that by using elements of the Complainant's livery together with the Domain Name, the Respondent's website is liable to mislead Internet users into believing that it is a website of the Complainant or authorized and sanctioned by the Complainant.
The Panel further notes the other indications of bad faith identified in the amended Complaint, such as the failure to respond to the Complainant's cease and desist letter, the concealment of the registrant's identity using a privacy service following that letter, and the provision of a false address to the Registrar.
On all the evidence, the Panel finds that by using the Domain Name the Respondent has intentionally attempted to attract Internet users to its website, for commercial gain in the form of sales of the Complainant's manuals, by creating a likelihood of association with the Complainant's mark as to the source, affiliation, sponsorship or endorsement of that website.
In accordance with paragraph 4(b)(iv) of the UDRP this constitutes evidence of registration and use of the Domain Name in bad faith. This presumption is not contradicted by any evidence in the file. In all the circumstances, the Panel concludes that the Domain Name was registered and is being used in bad faith.
All three requirements of the UDRP are satisfied and it is appropriate to direct the transfer of the Domain Name to the Complainant. 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.
Jonathan Turner
Sole Panelist
Date: November 24, 2014
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