The Complainant is Caterpillar, Inc. of Peoria, Illinois, United States of America, represented by Baker and McKenzie Abogados, S.C., Mexico.
The Respondent is Francisco Andres Soto Tellez, Mauinarias Cat of Mexico City, Mexico. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2018. On December 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 2018, 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 4, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. 1 The Complainant filed an amendment to the Complaint on January 10, 2019. In response to a request of clarification from the Center, the Complainant filed a second amendment to the Complaint on January 10, 2019.
The Center verified that the Complaint, together with the amendment to the Complaint and the second 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 15, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 4, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2019.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on February 12, 2019. 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 an American incorporation and one of the world’s leading manufacturer of construction and mining equipment.
The Complainant is the registered owner of numerous Mexican trademark registrations consisting of the verbal element “cat” combined with a triangular figurative element, amongst others No. 1068133 registered on October 23, 2008 for services in class 37 and No. 1738255 registered on March 29, 2017 for services in class 35.
According to the Registrar’s verification response, the Respondent registered the disputed domain name on August 29, 2018. The language of the registration agreement was English.
From the evidence in the Complaint, the website, to which the disputed domain name resolved, contained the Complainant’s trademark CAT (including the figurative logo) and pictures of the Complainant’s machinery. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its trademarks. In particular, the trademark CAT is wholly incorporated in the disputed domain name. The mere addition of the descriptive element “maquinaria” does not prevent likelihood of confusion in the minds of the relevant Internet users. This Spanish term “maquinaria” is descriptive since it means “machinery” or “equipment” in English and therefore refers to the products for which the Complainant is known worldwide.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Respondent has no connection or affiliation with the Complainant and has not received any license or consent to use the Complainant’s trademark. According to the Complainant’s allegations, the Respondent originally used the disputed domain name for a website containing the identical “cat”-logo and pictures of the Complainant’s machinery. Thus, the Respondent makes illegitimate commercial and unfair use of the disputed domain name for commercial gain to misleadingly divert Internet users and to tarnish the Complainant’s trademarks.
Finally, the Complainant contends that the Respondent registered and used the disputed domain name in bad faith. In its view, the Respondent intentionally attempted to attract for commercial gain, internet users to its website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement. This is underlined by the fact that the website available under the disputed domain name originally showed the Complainant’s “cat”-logo and products. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have 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.
The Panel is satisfied that the registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of various trademark registrations consisting of the verbal element “cat” combined with a triangular figurative element. Reference is made, in particular, to Mexican trademark registrations, amongst others No. 1068133 registered on October 23, 2008 for services in class 37 and No. 1738255 registered on March 29, 2017 for services in class 35. These trademarks predate the creation date of the disputed domain name which is August 29, 2018.
Many UDRP panels have found that a domain name is confusingly similar to a complainant’s trademark where the domain name incorporates the complainant’s trademark in its entirety (e.g., F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainS,WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0464). This Panel shares this view and notes that the Complainant’s registered trademark CAT is fully included in the disputed domain name.
The figurative, triangular element cannot call into question the above findings: This Panel shares the view that the assessment of identity or confusing similarity involves comparing the (alpha-numeric) domain name and the textual components of the relevant mark. To the extent that design (or figurative/stylized) elements would be incapable of representation in domain names, these elements are largely disregarded for purposes of assessing identity or confusing similarity under the first element (see section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition “WIPO Overview 3.0”).
Finally, it is the view of this Panel that the combination of the trademark CAT with the Spanish term “maquinaria” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Hence, this Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name:
According to the Complaint’s contentions, which have remained unchallenged, the Complainant has not authorized the Respondent’s use of the trademark CAT, e.g. by registering the disputed domain name comprising said mark entirely.
Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy.
Finally, it results from the Complainant’s undisputed allegations that the website, to which the disputed domain name resolves, originally contained the Complainant’s trademark CAT (including the figurative logo) and pictures of the Complainant’s machinery. The Panel assesses this use as being commercial, so that it cannot be considered 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 pursuant to paragraph 4(c)(iii) of the Policy. Furthermore, such use cannot be qualified a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy since it rather has a high propensity to mislead and divert consumers.
It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
One of these circumstances is that the respondent by using the domain name, has intentionally attempted 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 its website or location or of a product or service on its website or location (paragraph 4(b)(iv) of the Policy).
It is the view of this Panel that these circumstances are met in the case at hand:
It results from the Complainant’s documented allegations that the website, to which the disputed domain name originally resolved, showed the Complainant’s trademark CAT (including the figurative logo) and products. For the Panel, it is therefore evident that the Respondent positively knew the Complainant’s marks and products. Moreover, the added term “maquinaria” in the disputed domain name is a dictionary term related to the field in which the Complainant plays a prominent role. Consequently, and in the absence of any evidence to the contrary, the Panel is convinced that the Respondent also knew that the disputed domain name included the Complainant’s trademark when it registered the disputed domain name. Registration of the disputed domain name which contains a third party’s mark, in awareness of said mark and in the absence of rights or legitimate interests is suggestive of bad faith (see e.g. KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa,WIPO Case No. D2014-2100; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320).
The finding of bad faith registration and use is supported by the further circumstances resulting from the case at hand which are (i) the high degree of distinctiveness and the worldwide reputation of the Complainant’s trademark, (ii) the Respondent’s failure to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the implausibility of any good faith use to which the disputed domain name may be put, (iv) the disputed domain name combining the Complainant’s trademark CAT with a descriptive term (“maquinaria”) which refers to the Complainant’s main activity, (v) the Respondent concealing its identity behind a privacy shield (see section 3.3 of the WIPO Overview 3.0.) and, (vi) the use of the disputed domain name which showed the Complainant’s trademark CAT (including the figurative logo).
In the light of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to 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.
Tobias Malte Müller
Sole Panelist
Date: February 26, 2019
1 On or around the time the Complaint was filed, the name of the Registrant of the disputed domain name appeared to be a privacy service provider.
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