The Complainant is Caterpillar Inc. of Peoria, Ilinois, United States of America (“United States”), represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with Internet Domain Service BS Corp (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2016. On February 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 8, 2016, 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.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 29, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 2, 2016.
The Center appointed Alexandre Nappey as the sole panelist in this matter on March 9, 2016. 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
Complainant is a publicly traded company listed on the New York Stock Exchange, and a world leading manufacturer of construction and mining equipment through its three product segments – Construction Industries, Resource Industries and Energy & Transportation – and also providing financing and related services through its Financial Products segment.
Complainant serves customers in 182 countries around the globe, employs 114,352 people worldwide, works with more than 28,000 suppliers and sells its products through 178 dealers with an estimated net worth of USD 21.8 billion.
Complainant is one of the 100 “best global brands” (No. 61) for 2014 as identified by Interbrand.
Complainant is the owner of more than 6,200 trademark registrations or applications in approximately 190 countries or jurisdictions around the world for marks that contain CATERPILLAR (the “CATERPILLAR Trademark”), the first of which was used at least as early as 1904.
Complainant is the registrant of (among many others) the following domain names:
, which was created on March 17, 1995; and
, which was created on July 31, 2007.
The Disputed Domain Name has been registered on April 25, 2013 and is resolving to a website entitled “CATERPILLAR SERVICE MANUAL DOWNLOAD” that sells manuals for Complainant’s products. 5. Parties’ Contentions A. Complainant
Complainant has rights in and to the CATERPILLAR Trademark, which has been found by numerous previous panels under the Policy.
The Disputed Domain Name is claimed to be confusingly similar to Complainant’s CATERPILLAR Trademark, which is contained in its entirety in the Disputed Domain Name plus the word “manual”. Complainant underlines that several previous panels have found confusing similarity in cases where the Disputed Domain Name was combining a trademark and the word “manual”.
At last, considering that the trademark CATERPILLAR has been has been used for over 100 years and is registered or pending in approximately 190 jurisdictions in the world, the inclusion of the word “manual” in the Disputed Domain Name does nothing to dispel any confusing similarity.
Secondly Respondent is claimed to have no rights or legitimate interests in the Disputed Domain Name since Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized Respondent to register or use the CATERPILLAR Trademark in any manner.
Furthermore, by selling infringing copies of Complainant’s manuals, Respondent is clearly not engaged in “a bona fide offering of goods or services” and, therefore, Respondent cannot establish rights or legitimate interests. Even if Respondent was selling authentic Complainant’s manuals, it would still not be engaged in a bona fide offering of goods and services since visitors to Respondent’s website would incorrectly assume that they are purchasing authorized manuals from Complainant.
To Complainant’s knowledge, 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. And Respondent is clearly not making a “fair use” of the Disputed Domain Name and, therefore, Respondent cannot establish rights or legitimate interests.
At last Complainant asserts that Respondent has created a likelihood of confusion that constitutes bad faith.
Given Complainant’s established rights in its trademarks and the fact that the Disputed Domain Name is “so obviously connected with” Complainant given its use of the CATERPILLAR Trademark for decades, Respondent’s actions suggest “opportunistic bad faith” in violation of the Policy. B. Respondent
Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Notwithstanding the default of Respondent, it remains up to Complainant to make out its case in accordance with paragraph 4(a) of the Policy, and to demonstrate that:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel “shall draw such inferences therefrom as it considers appropriate”.
Having consideration to the parties’ contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel’s findings on each of the above mentioned elements are the following. A. Identical or Confusingly Similar
Complainant has provided evidence of its multiple trademark registrations for its CATERPILLAR Trademark registered or applied in approximately 190 jurisdictions around the world.
Numerous previous UDRP panels have found that Complainant has rights in the CATERPILLAR Trademark.
It results from the Complaint and annexes that the CATERPILLAR Trademark is well-known. The Complainant has been widely using the trademark for 112 years.
The Disputed Domain Name is confusingly similar to Complainant’s CATERPILLAR Trademark, because the Disputed Domain Name incorporates the entirety of Complainant’s CATERPILLAR Trademark and merely adds the generic term “manual” along with the Generic Top-Level Domain (“gTLD”) “.net.”
Similarly, other decisions under the Policy have found confusing similarity where a disputed domain name contains a complainant’s trademark plus the word “manual”.
The Complainant cites the following decisions:
Merck Sharp & Dohme Corp. v. Janice Liburd,WIPO Case No. D2011-0278 (transfer of ); Merck Sharp & Dohme Corp. v. Yan Wei,WIPO Case No. D2011-0803 (transfer of ).
The Panel is of the opinion that the descriptive word “manual” does not sufficiently distinguish the Disputed Domain Name in issue from the CATERPILLAR Trademark.
Accordingly, the Panel finds that the Disputed Domain Name is identical or confusingly similar to marks in which Complainant has rights.
The Complainant therefore has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that Complainant may establish that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name by making a prima facie showing that Respondent lacks rights or legitimate interests.
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
It is clear from the record that Respondent has been using the CATERPILLAR Trademark in the Disputed Domain Name by reference to Complainant, in connection with a website titled “CATERPILLAR SERVICE MANUAL DOWNLOAD” that sells manuals for Complainant’s products.
Such project could serve as a base for legitimate interest in the sense of the Policy, including whether Respondent could demonstrate that it is using Complainant’s trademark under license or authorization, or under the bona fide offering of goods or services principles set forth by the Policy. See for instance paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”).
Additionally, the Respondent may, to demonstrate that the Disputed Domain Name has been fairly used, by demonstrating that it did not intend to misleadingly divert consumers, for commercial gain (paragraph 4(c)(iii) of the Policy).
In the circumstances of the case, and even if the Complainant does not demonstrate whether the manuals sold on Respondent’s websites are real or fake, the Panel finds that Respondent’s website does not accurately disclose the registrant’s relationship with the trademark owner. Respondent’s website does not make it clear that it is not authorized by the Complainant and that Respondent has no relationship with Complainant. See paragraph 2.3 of the WIPO Overview 2.0.
On the contrary, by using elements of Complainant’s look and feel, the website gives the appearance of being connected with or endorsed by Complainant. On the undisputed evidence, the Panel accepts that Respondent’s website is liable to mislead Internet users into believing that it is a website of Complainant or authorized and sanctioned by Complainant.
In these circumstances, Respondent cannot be regarded as having used the Disputed 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.
Accordingly, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name. It provides that:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(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 web site or location or of a product or service on your web site or location.”
Panels may draw inferences about bad faith registration or use in light of the circumstances, such as whether the trademarks in question are well-known, whether there is no response to the complaint, and other circumstances. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Given the widespread use and fame of Complainant’s CATERPILLAR Trademark, the Panel infers that Respondent had actual knowledge of Complainant’s mark.
Complainant has shown that its rights in most of its CATERPILLAR Trademark are long standing, predating the registration and use of the Disputed Domain Name by decades.
It appears also that Respondent was well aware of Complainant’s CATERPILLAR Trademark. As it appears on the website operated under the Disputed Domain Name, Respondent is reproducing the specific colors and look and feel used by Complainant since years.
Under these circumstances, combined with the adverse inferences drawn by Respondent’s failure to reply to the formal notice sent by Complainant, and to the Complaint, the Panel finds that Complainant has established that Respondent has registered and is using the Disputed Domain Name in bad faith, in accordance with paragraph 4(b)(iv) 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 Disputed Domain Name be transferred to the Complainant.
Alexandre Nappey
Sole Panelist
Date: April 6, 2016
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