The Complainants are Caterpillar Inc. of Peoria, Illinois, United States of America ("US") (the "First Complainant"), and Perkins Holdings Limited of Eastfield, Peterborough, United Kingdom of Great Britain and Northern Ireland ("UK") (the "Second Complainant"), respectively, represented by Hogan Lovells (Paris) LLP, France.
The Respondents are Ugur Iri, Izmir Web Tasarim (the "First Respondent") and Cuma Ali Iri, Yali Tasarim Mantolama San.Tic. (the "Second Respondent"), of Izmir, Turkey. 2. The Domain Names and Registrar
The disputed domain names , , , and are registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 16, 2014. On October 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 17, 2014, the Registrar transmitted by email to the Center its verification response confirming that the First Respondent is listed as the registrant of the domain names and , that the Second Respondent is listed as the registrant of the domain names and , and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 22, 2014.
The Center verified that the Complaint together with the amended 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 October 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default.
The Center appointed Assen Alexiev as the sole panelist in this matter on December 16, 2014. 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. Request for consolidation
The Complainants have jointly filed this Complaint in respect of four domain names and against two Respondents, and request permission for the consolidation of this dispute. This request is based on the following argument:.
The Complainants submit that they have a common grievance against each of the Respondents, given that the Second Complainant is a subsidiary of the First Complainant, that they have sufficient common legal interest in the trademarks reproduced in the disputed domain names, and that they are the target of common conduct by the Respondents consisting of a pattern of identically reproducing the Complainants' trademarks in domain names together with a term that precisely refers to the Complainants' core business activities and which clearly affects the Complainants' individual rights and interests in a similar fashion.
The Complainants further submit that the disputed domain names and the websites to which they resolve are subject to common control, because the Second Respondent is or was the registrant of the disputed domain names using the email address of the First Respondent, the websites linked to the disputed domain names display the same contact details, and have a similar layout and format, and the disputed domain names have all been registered with the same Registrar.
The Complainants also submit that it would be equitable and procedurally efficient to permit the consolidation of their complaints against each the two Respondents, because their substantive arguments against each of the Respondents are the same, the present dispute involves a relatively small number of domain names, and the relevant filings are not unreasonably voluminous.
The Panel has reviewed the request for consolidation and has decided to grant it. As discussed in Paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), "WIPO panels have articulated principles governing the question of whether a complaint filed with WIPO by multiple complainants may be brought against (one or more) respondents. These criteria encompass situations in which (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants' individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation; or in the case of complaints brought (whether or not filed by multiple complainants) against more than one respondent, where (i) the domain names or the websites to which they resolve are subject to common control, and (ii) the consolidation would be fair and equitable to all parties." In this proceeding, the Complainants have made a prima facie showing that the grounds for consolidation listed above are present, and the Respondents have not objected to the consolidation. Therefore, in the Panel's view, the consolidation of the proceeding is likely to be procedurally efficient and fair and equitable to all parties. 4. Factual Background
The First Complainant is the world's leading manufacturer of heavy equipment, including construction and mining equipment, diesel and gas engines, generators, industrial gas turbines and diesel-electric locomotives. It was created in 1925 and now has more than 500 locations worldwide in over 180 countries, including three authorized dealers in Turkey. In 2013, the company had revenues of USD 65.9 billion and profits of USD 5.681 billion, and was ranked number 42 in Fortune 500's list of America's largest companies. In the same year, the Interbrand's Best Global Brands report ranked the Caterpillar brand at number 58. The First Complainant uses the domain names and for its official websites.
The Second Complainant was founded in 1932 in the UK and is now a subsidiary of the First Complainant. It is a world leading manufacturer and supplier of diesel and gas engines for a broad range of industrial, agricultural, power generation and marine applications. The Second Complainant has its official website at the domain name , and has a dedicated website for Turkey available at the domain name .
The First Complainant has registered the following trademarks consisting of or containing the word element "cat" (the "CAT trademark"):
- the combined Turkish Trademark CAT with registration No. 122044, registered on December 25, 1990 for goods and services in International Classes 07, 09 and 12;
- the combined Turkish Trademark CAT with registration No. 2007 47695, registered on August 31, 2009 for goods and services in International Classes 4, 9, 35, 37 and 42;
- the Community Trademark CAT with registration No. 1295310, registered on November 22, 2000 for goods and services in International Classes 35, 39 and 42;
- the Community Trademark CAT with registration No. 9344755, registered on August 13, 2010 for goods and services in International Classes 1, 2, 4, 6, 7, 8, 11, 12, 14, 16, 17, 18, 19, 20, 21, 22, 24, 25, 27, 28, 34, 35, 36, 37, 38, 39, 40 and 41; and
- the combined Community Trademark CAT with registration No. 001063296, registered on March 15, 2001 for goods and services in International Classes 1, 2, 4, 6, 7, 8, 9, 11, 12, 14, 16, 17, 18, 19, 20, 21, 22, 24, 25, 27, 28, 31, 34, 35, 36, 37, 38, 39, 40, 41 and 42.
The Second Complainant has registered the following trademarks consisting of or containing the term "perkins" (the "PERKINS trademark"):
- the Turkish trademark PERKINS with registration No.68907, registered on December 31, 1990 for goods and services in International Classes 07 and 12;
- the International Trademark PERKINS with registration No.1099217, designating Turkey, registered on December 13, 2010 for goods and services in International Classes 01, 02, 04, 06, 07, 09, 12 and 37;
- the Community trademark PERKINS with registration No.152223, registered on October 14, 1998 for goods and services in International Classes 07, 12 and 37; and
- the Community Trademark PERKINS with registration No.9207549, registered on December 10, 2010 for goods and services in International Classes 01, 02, 04, 06, 07, 09, 12, 17 and 37.
The disputed domain names and were created on July 28, 2009, and the disputed domain names and were created on August 15, 2009. 5. Parties' Contentions A. Complainant
According to the Complainants, the Respondents appear to have registered the disputed domain names on behalf of "Rops Makina Turizm Sanayi Ve Ticaret Limited Şirketi" (hereinafter "Rops Makina") and "İlim Makina Metal Sanayi Ve Ticaret Limited Şirketi" (hereinafter "Ilim Makina"), two affiliated companies based in Turkey and operating in the fields of generator, marine and industrial engines. These companies offer for sale marine and industrial parts and services, including CAT as well as third party brands such as Cukurova, Aksa and Donaldson DONALDSON. The affiliation between Rops Makina and Ilim Makina is suggested by the fact that the WhoIs records of their official domain names and display the same contact details, which are the same contact details appearing on the websites associated with the disputed domain names.
The Complainants submit that the disputed domain names currently point to websites in Turkish with similar layout and format that offer products and services using the Complainants' CAT trademark and PERKINS trademark. The disputed domain name currently points to a website offering "spare parts service", "property services", "workshop service" and "operation of machine on-site". The disputed domain name currently points to a website stating that it provides "service parts services" and "products sale". The disputed domain name points to a website that appears to offer products and services under the PERKINS trademark and displays the PERKINS trademark without authorization. The disputed domain name points to a website that appears to offer services in connection with the CAT trademark and prominently displays a certificate by Cukurova - one of the Complainants' competitors.
The Complainants further submit that the disputed domain names previously pointed to websites prominently displaying the Complainants' CAT trademark or PERKINS trademark, along with images of the Complainants' products. On May 24, 2011, the Complainants sent a cease and desist letter to the Respondents requesting them to immediately cease all use of the CAT trademark and PERKINS trademark and to transfer the disputed domain names to the Complainants. Following these letters, the Respondents modified their websites by removing many of the Complainants' logos and trademarks as well as images of the Complainants' products. However, the Respondents continued to use the disputed domain names to offer products and services under the CAT trademark and the PERKINS trademark and refused to transfer the disputed domain names to the Complainants.
The Complainants submit that the disputed domain names are confusingly similar to the CAT and PERKINS trademarks. The disputed domain names and incorporate the PERKINS trademark in its entirety, and the and domain names incorporate the CAT trademark in its entirety. The disputed domain names' only difference from the Complainants' trademarks is the addition of descriptive terms, such as "generators" or "jenerator" ("generator" in Turkish), "motor" and "servis" ("service" in Turkish) that either refer to or are closely related to the Complainants' core products or services. The addition of such descriptive terms is insufficient to distinguish the disputed domain names from the Complainants' CAT trademark and PERKINS trademark.
The Complainants submit that the Respondents have no rights or legitimate interests in the disputed domain names. The Respondents are not commonly known by the terms "perkins" or "cat" and have no trademark rights in these terms. The Respondents are not authorized dealers, distributors or licensees of the Complainants. They have not been otherwise allowed by the Complainants to make any use of the CAT trademark and of the PERKINS trademark and have registered the disputed domain names without the Complainants' authorization.
The Complainants submit that the Respondents are not using the disputed domain names in connection with a bona fide offering of goods and services. The First Respondent is not actually offering the goods or services of the Second Complainant on the website at the disputed domain name . The products purportedly referred to on the website associated with this domain name are not known to the Complainants as existing products of the Second Complainant, since the latter does not manufacture generators but only the engines which power the generator sets manufactured by other companies. The Second Respondent's website, associated to the disputed domain name displays a certificate of Cukurova - a competitor of the Complainants. Thus, the Second Respondent is not using the website in relation to products of the First Complainant only but also in relation to other products that are in direct competition with them, thereby engaging in the practice known as "bait and switch". There are no disclaimers on the websites associated with the disputed domain names stating that the Respondents are not affiliated to or sponsored by the Complainants.
The Complainants submit that the Respondents are not making any legitimate non commercial or fair use of the disputed domain names, as the same have been used to point to websites that are clearly commercial in nature. Rather, the Respondents are using the disputed domain names for commercial gain to attract internet traffic to their websites and thus increase their business activity.
The Complainants assert that the disputed domain names were registered and are being used in bad faith. The CAT trademark and the PERKINS trademark have been used extensively, long before the registration of the disputed domain names and have acquired considerable goodwill and renown worldwide, including in Turkey. The Respondents deliberately chose to register the terms CAT and PERKINS in conjunction with descriptive terms like "generators" or "jenerator" ("generator" in Turkish), "motor" and "servis" ("service" in Turkish) that precisely refer to or are closely related to the Complainants' products or services. This shows that the Respondents knew or should have known of the Complainants' rights at the time of registration of the disputed domain names and must have chosen the disputed domain names to mislead Internet users into believing that the Respondents are affiliated to or sponsored by the Complainants in an attempt to profit from the Complainants' goodwill.
According to the Complainants' submission, the Respondents are using the disputed domain names to confuse Internet users searching for the Complainants into believing that the Domain Names are connected to, or operated by, the Complainants, with the intention of diverting traffic originally intended for the Complainants to the Respondents' websites. The confusion caused by the disputed domain names was reinforced by the nature of the websites to which they were pointing prior to receipt of the Complainants' cease and desist letter, as they prominently displayed the Complainants' CAT trademark and PERKINS trademark along with various images of the Complainants' products. The lack of any disclaimers on the websites associated with the disputed domain names disclosing the lack or relationship between the Complainants and the Respondents further adds to the confusion. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the Respondent has registered and is using the disputed domain name in bad faith.
In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondents, in compliance with the Rules, paragraph 2(a), and the Respondents were given a fair opportunity to present their case.
By the Rules, paragraph 5(b)(i), it is expected of a respondent to: "[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…"
In the event of a default, under the Rules, paragraph (14)(b): "…the Panel shall draw such inferences therefrom as it considers appropriate."
As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques,WIPO Case No. D2000-0004: "Here, the potential evidence of good faith registration and use was in respondent's control. Respondent's failure to present any such evidence or to deny complainant's allegations allows an inference that the evidence would not have been favorable to respondent." As stated by the panel in Viacom International Inc. v. Ir Suryani,WIPO Case No. D2001-1443: "Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […]. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence."
In this administrative proceeding, the Respondents' default entitles the Panel to conclude that the Respondents have no arguments or evidence to rebut the assertions of the Complainants. The Panel has to take its decision on the basis of the statements and documents submitted by the Complainants and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
The Complainants have submitted in this proceeding that all the disputed domain names and the websites to which they resolve are subject to common control, because the Second Respondent is or was the registrant of domain names using the email address of the First Respondent, the websites linked to the disputed domain names display the same contact details and have a similar layout and format, and the disputed domain names have all been registered with the same Registrar. These arguments of the Complainants have not been denied by the Respondents. The Panel has reviewed the evidence submitted by the Complainants and it supports their statements. The attached printouts of the websites at the disputed domain names show their similar appearance and provide the same contact details for the two companies Rops Makina and Ilim Machine, and in an email message dated June 9, 2011, a representative of Rops Makina has confirmed that Rops Makina and Ilim Machine are "partner organizations" and share the same contact details. The Panel is satisfied that these circumstances show that more likely than not the disputed domain names are under common control, and will take this into account when analyzing the conduct of the Respondents. A. Identical or Confusingly Similar
The Complainants have provided evidence and have thus established the trademark rights of the First Complainant in the CAT trademark and the trademark rights of the Second Complainant in the PERKINS trademark.
The Panel notes that there is a common practice under the Policy to disregard in appropriate circumstances the generic top-level domains ("gTLD") such as the ".com", ".net" and ".org" for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the Panel will analyze the remaining part of the disputed domain names.
The relevant part of the disputed domain name that has to be analyzed is its "catjenerator" section, which is a combination of the elements "cat" and "jenerator". The first of these elements coincides with the Complainants' CAT trademark and is more prominent. As contended by the Complainants, the "jenerator" element means "generator" in Turkish. This element is descriptive of some of the First Complainants' products and does not sufficiently distinguish the disputed domain name from the CAT trademark. As the Complainant's CAT trademark has achieved global popularity in the field of heavy construction and mining equipment, the Panel finds it more likely that Turkish speaking Internet users would regard the combination of "cat" and "jenerator" in the disputed domain name as related to the First Complainant's generator products and focused on the Turkish market.
Similar reasoning is also applicable to the other disputed domain names.
The disputed domain name contains the elements "cat" and "servis". The CAT trademark is fully incorporated in it and is its more prominent element. As contended by the Complainants, the "servis" element means "service" in Turkish and does not distinguish the disputed domain name from the CAT trademark. The Panel is satisfied that Turkish speaking Internet users would regard the combination of "cat" and "servis" in the disputed domain name as related to the First Complainant's services and focused on the Turkish market.
The disputed domain name contains the elements "perkins" and "motor". The PERKINS trademark is fully incorporated in it and is its more prominent element, while the "motor" element is descriptive of the very equipment for which the PERKINS trademark of the Second Complainant has become popular. For these reasons, Internet users are likely to regard the disputed domain name as related to the Second Complainant's products.
The disputed domain name contains the elements "perkins" and "generators". The PERKINS trademark is fully incorporated in it and is its more prominent element, while the "generators" element is descriptive of equipment in which the products of the Second Complainant are integrated. The Panel is satisfied that Internet users would regard the combination of the "perkins" and "generators" elements in the disputed domain name as related to the Second Complainant's products.
For these reasons, the Panel finds that the disputed domain names and are confusingly similar to the CAT trademark in which the First Complainant has rights, and that the disputed domain names and are confusingly similar to the PERKINS trademark in which the Second Complainant has rights. B. Rights or Legitimate Interests
The Complainants are required to make at least a prima facie showing that the Respondents have no rights or legitimate interests in the disputed domain names. Once the Complainants make such a showing, the Respondents may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain names. The burden of proof, however, always remains on the Complainants to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview 2.0.
The Complainants have contended that the Respondents have no rights or legitimate interests in the disputed domain names, stating that they have neither authorized nor licensed them to use the CAT trademark and the PERKINS trademark, that the Respondents have never used or prepared to use the disputed domain names for a bona fide offering of goods or services or for a legitimate noncommercial purpose. Thus, the Complainants have established a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names.
Neither of the Respondents, although given a fair opportunity to do so, presented to the Panel any arguments in their defense in accordance with the Rules, paragraph 5(b)(i) and 5(b)(ix), despite the consequences that the Panel may extract from the fact of a default (Rules, paragraph 14). If any of the Respondents had any legitimate reason for the acquisition and use of the disputed domain names, it could have brought it to the attention of the Panel. In particular, the Respondents have failed to contend that any of the circumstances described in the Policy, paragraph 4(c) is present in their favor.
Apart from the factual contentions of the Complainants and the evidence submitted by them, the only other sources of information about the Respondents are the WhoIs information for the disputed domain names, provided by the Registrar, and the content of the websites at the disputed domain names.
The WhoIs information contains no evidence that either of the Respondents is commonly known by any of the disputed domain names. The disputed domain names and are confusingly similar to the CAT trademark, and the disputed domain names and are confusingly similar to the PERKINS trademark. Each of the disputed domain names is a combination of the respective trademark and a generic term, descriptive of the products and services of the Complainants. This combination has a strong potential to cause confusion in Internet users (especially those of them who reside in Turkey) given that the Complainants are well known and have had presence in Turkey for many years. As contended by the Complainants and not denied by the Respondents, the disputed domain names are linked to websites of two related Turkish companies that have offered products and services identical or similar to those of the Complainants, or products of the Complainants' competitors, and the products referred to on the website associated to the disputed domain name are not existing products of the Second Complainant, since the latter does not manufacture generators but only the engines which power the generator sets manufactured by other companies. None of the websites associated to the disputed domain names contains any disclaimer indicating that the website is not affiliated to or sponsored by the Complainants.
Taking all the above into account, it is highly likely that that the Respondents were well aware of the Complainants and their goodwill at the time of the registration of the disputed domain names and that their registration was made specifically with the Complainants and their popularity in mind. In the Panel's view, the above conduct of the Respondents cannot be regarded as giving rise to rights or legitimate interests in the disputed domain names. Therefore, the Panel finds that the Complainant's case has not been rebutted, and that the Respondents have no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your website or location or of a product or service on your website or location."
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
As contended by the Complainants, the CAT trademark and the PERKINS trademark have gained strong worldwide reputation in relation to technical equipment and diesel and gas engines, respectively. The two trademarks are registered in Turkey, where the Respondents are located, and have been used there for a long period of time. Each of the disputed domain names is confusingly similar either to the CAT trademark or to the PERKINS trademark and contain terms that are descriptive of the products and services of the Complainants and of the goods and services for which the CAT trademark and the PERKINS trademark have gained wide recognition. The disputed domain names were registered without the consent of the Complainants, and the Respondents have failed to show any legitimate reason to register them. In these circumstances, the Panel is satisfied that the disputed domain names were registered in view of the popularity of the Complainants' trademarks and their products and services and in view of the attractiveness of the disputed domain names for Internet users looking for the Complainants' products and services in Turkey. Therefore, the Panel accepts that the disputed domain names were registered in bad faith.
The disputed domain names are linked to the commercial websites of two companies. As contended by the Complainants, and undisputed by the Respondents, these two companies are under common control. These websites have at various times offered products and services identical or similar to those of the Complainants, or products of the Complainants' competitors, and have displayed the CAT trademark or the PERKINS trademark, respectively. The Panel does not regard such conduct as being carried out in good faith. Rather, it appears that the Respondents, by using the disputed domain names, have attempted to free ride on the Complainant's goodwill and consumer recognition for their own financial gain by capitalizing on consumers looking for the products and services of the Complainants by creating a likelihood of confusion with the CAT trademark and with the PERKINS trademark as to the source or affiliation of the websites linked to the disputed domain names.
Therefore, and in the lack of any allegation or evidence to the contrary, the Panel finds that the Respondents have registered and used the disputed domain names in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules and as requested by the Complainants, the Panel orders that the disputed domain names and be transferred to the First Complainant Caterpillar Inc., and the disputed domain names and be transferred to the Second Complainant Perkins Holdings Limited.
Assen Alexiev
Sole Panelist
Date: December 29, 2014
Full & Egal Universal Law Academy