The Complainant is Caterpillar, Inc. of Peoria, Illinois, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Domain Admin, whoisprotection biz / Cagatay Matura of Istanbul, Turkey. 2. The Domain Name and Registrar
The disputed domain name is registered with FBS Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2016. On December 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 21, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 5, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 9, 2017.
Pursuant to the Complaint submitted in English and the registrar verification dated December 21, 2016 stating that Turkish is the language of the registration agreement; on January 5, 2017, the Center requested Parties to submit their comments on the language of the proceeding. On January 6, 2017, the Complainant submitted its request for English to be the language of the proceeding, by reference to the Complaint. The Respondent did not submit any comment on the language of the proceeding.
The Center verified that the Complaint together with the amendment to 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 January 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was February 8, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2017.
The Center appointed Kaya Köklü as the sole panelist in this matter on February 10, 2017. 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 a United States-based company and a leading manufacturer of heavy machinery equipment, including construction and mining equipment, diesel and natural gas engines, industrial gas turbines and diesel-electric locomotives. It is also known for its footwear, for which it has a global network of official distributors, including in Turkey. It operates in more than 500 locations worldwide in over 180 countries.
It owns trademark registrations for CAT in more than 150 jurisdictions worldwide, including in Turkey. For instance, the Complainant is the owner of the Turkish Trademark Registration No. 122044, registered on December 25, 1990; No. 2007 47695, registered on August 31, 2009 and No. 2013 45999, registered on July 14, 2015, all of them covering several classes of goods and services, including classes 25 and 35 of the Nice Classification, which provide protection also for footwear.
According to the current record, the disputed domain name was created on January 5, 2016 by the Respondent.
The Respondent is composed of a domain name privacy registration service and an individual person apparently from Turkey (both of them jointly referred to as “the Respondent” in the following decision).
At the time of the decision, the disputed domain name did not resolve to an active website. However, the provided screenshots of the website in Annex 8 and further documentation in Annex 9 of the Complaint show that at least until mid of October 2016 the Respondent not only prominently used the Complainant’s CAT trademark or its website, but also advertised and offered for sale CAT branded footwear, purportedly offered by an official Turkish branch of the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is confusingly similar to the Complainant’s CAT trademark.
The Complainant argues that the main difference between the disputed domain name and the Complainant’s trademark is that the disputed domain name additionally comprises a geographical term, namely “Turkiye”, which stands for “Turkey” in the Turkish language. The Complainant is of the opinion that the addition of the geographical term “Turkiye” does not negate the confusing similarity with its CAT trademark.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant states that the Complainant has never granted a permission or license to the Respondent to use its CAT trademark. The Complainant further alleges that the Respondent has never used and does not intend to use its trademark in connection with a bona fide offering of goods and services or any other legitimate interest. It particularly believes that in light of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, the Respondent cannot successfully rely on a potential right or legitimate interest in the disputed domain name as a reseller or distributor of the Complainant’s products.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant believes that the Respondent was aware of the Complainant’s CAT trademark, when registering the disputed domain name. The Complainant is further of the opinion that the Respondent apparently tries to attract Internet users for illegitimate purposes and to cause damage to the Complainant and/or its customers. Documents provided in Annexes 8 and 9 of the Complaint indicate that misled Internet users have already been victims of fraud committed by the Respondent and/or its accomplices. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraphs 14(a) and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to the trademark 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 disputed domain name has been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd.,WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
It is further noted that the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistent with the WIPO Overview 2.0. 6.1. Language of the Proceeding
The Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of this administrative proceeding shall be the English language.
Although the language of the Registration Agreement is Turkish, the Panel finds that it would be inappropriate, given the circumstances of this case, to conduct the proceedings in Turkish and request costly and time consuming translations of documents by the Complainant, while the Respondent failed to raise any objection to the Center’s communication regarding the language of the proceedings, although communicated in English and Turkish. The Panel notes that the Respondent was given the opportunity to respond in Turkish, but preferred not to oppose to the Complainant’s language request or even reply to the Complaint at all.
In light of the above, the Panel comes to the conclusion that the Respondent will not be prejudiced by a decision being rendered in English. 6.2. Substantive Issues A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the CAT trademark of the Complainant.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights in CAT. As evidenced in the Complaint, the Complainant is the owner of the widely known CAT trademark, which is registered in many jurisdictions worldwide, including Turkey, for many years.
Although not identical, the disputed domain name fully incorporates the Complainant’s CAT trademark.
The disputed domain name differs from the Complainant’s CAT trademark mainly by the addition of the country name “Turkiye”, which stands for “Turkey” in the Turkish language. In the Panel’s view, the addition of “Turkiye” as a country name does not negate the confusing similarity between the Complainant’s trademark CAT and the disputed domain name. The Panel finds that this additional incorporation is purely descriptive and does not distinguish the disputed domain name from the Complainant’s CAT trademark. Quite the opposite, the Panel believes that the full inclusion of the Complainant’s trademark in combination with “Turkiye” even enhances the false impression that the disputed domain name is officially related to the Complainant. The Panel concludes that the disputed domain name is likely to confuse Internet users into their believing that the disputed domain name is affiliated or endorsed by the Complainant or that the use of the disputed domain name is at least authorized by the Complainant.
In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel further finds that the Respondent has not demonstrated any rights or legitimate interests in the disputed domain name.
While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s CAT trademark in the disputed domain name.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or convincing argument to demonstrate a right or legitimate interest in the disputed domain name according to the Policy, paragraph 4(a)(ii) and 4(c).
In the absence of a response by the Respondent, there is no indication in the case file that the Respondent might be commonly known by the disputed domain name. This is valid also for any of the other nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or any other evidence of a right or legitimate interest in the disputed domain name. Particularly, the Respondent has failed to show that the disputed domain name has been or is intended to be used in connection with a bona fide offering of goods or services. The Panel is convinced that the Respondent cannot be assessed as a legitimate reseller or distributor of the Complainant’s products, as the criteria as set forth in Oki Data Americas, Inc. v. ASD, Inc., supra are apparently not fulfilled in the present case. Given the circumstances of this case, where the website at the disputed domain name advertised and offered CAT branded footwear by prominently using the Complainant’s trademark without disclosing the relationship between the Complainant and the Respondent, leading Internet users to believe that the online shop is managed by the Complainant and its subsidiary companies, the Panel finds it hard to conceive of any use of the CAT trademark by the Respondent, which would qualify as a legitimate use.
Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.
The Panel is of the opinion that the Respondent intentionally attempted to create a likelihood of confusion among customers and/or to tarnish the Complainant’s CAT trademark, apparently for illegitimate commercial gain, in particular for the following reasons:
First, the Panel believes that the Respondent was aware of the Complainant’s trademarks when it registered the disputed domain name on January 5, 2016. At the date of registration of the disputed domain name, the Complainant’s CAT trademark was already widely known and in use worldwide, including in Turkey, for many years.
Second, it is the Panel’s view that the Respondent deliberately tried to conceal the lack of relationship with the Complainant, to mislead Internet users in their believing that the website linked to the disputed domain name is operated by the Complainant itself or its Turkish subsidiaries. Documents in the case file indicate that misled consumers had made payments for CAT branded footwear advertised on the website at the disputed domain name that were never delivered to them. In view of the Panel, the provided documents are a strong indication that the Respondent was apparently involved in some kind of fraudulent action.
Third, the Panel notes that the Respondent used a privacy service when creating the disputed domain name. Although privacy services might be legitimate in many cases, it is difficult for the Panel to see in the present case why the Respondent should need to protect its identity except to make it difficult for the Complainant to protect its trademark against him or for mislead Internet users to reclaim unjustified payments for footwear that was never delivered. The Panel is convinced that the choice of the disputed domain name, which fully incorporates the Complainant’s trademark with the addition of the geographical term “turkiye”, the content as well as the design of the Respondent’s corresponding website rather indicate that the Respondent deliberately opted for a privacy shield in order to prevent an efficient enforcement of legitimate trademark rights by the Complainant.
Fourth, the Respondent preferred not to respond to the Complainant’s contentions within the pending administrative proceedings, although being informed in English and Turkish.
As it has been the case in several previous UDRP cases, the fact that the disputed domain name is currently inactive does not prevent a finding of bad faith use and does not change the Panel’s views in this respect.
Taking all facts of the case into consideration, the Panel believes that this is a typical cybersquatting case, which the UDRP was designed to stop.
All in all, the Panel concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) 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.
Kaya Köklü
Sole Panelist
Date: February 14, 2017
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