The Complainant is Caterpillar Inc. of México City, Mexico, represented by Baker & McKenzie, Mexico.
The Respondent is José Luis Garcia Ramirez of 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 February 20, 2019. On February 21, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 22, 2019, 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 February 27, 2019, 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 and amendments to the Complaint on March 6 and 11, 2019.
The Center verified that the Complaint, together with the amended Complaint and the amendments 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, together with the amended Complaint and amendments, and the proceedings commenced on March 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 1, 2019.
The Center appointed Benjamin Fontaine as the sole panelist in this matter on April 9, 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 in this matter is Caterpillar Inc., an American corporation active in the designing, development, engineering, manufacturing, and distribution of construction machinery, engines, and other products. The Complaint mentions that Caterpillar Inc. is “the world’s largest construction equipment manufacturer”, with a worldwide presence.
The trademark rights referred to as a basis for this Complaint are all registered in Mexico. Relevant copies of the registration certificates were provided. They are the following:
- Mexican trademark No. 1016503 CATERPILLAR in class 35, registered on November 30, 2007;
- Mexican trademark No. 1128372 CATERPILLAR and design in class 9, registered on October 29, 2009;
- Mexican trademark No. 1084212 CATERPILLAR in class 9, registered on February 13, 2009;
- Mexican trademark No. 1092808 CATERPILLAR and design in class 36, registered on April 1, 2009;
- Mexican trademark No. 1088925 CATERPILLAR and design in class 37, registered on March 10, 2009;
- Mexican trademark No. 1072493 CATERPILLAR and design in class 4, registered on November 18, 2008;
- Mexican trademark No. 1085651 CATERPILLAR and design in class 42, registered on February 19, 2009;
- Mexican trademark No. 630547 CATERPILLAR and design in class 42, registered on October 27, 1999;
- Mexican trademark No. 1689124 CATERPILLAR and design in class 25, registered on October 27, 2016;
- Mexican trademark No. 1606560 CATERPILLAR and design in class 18, registered on January 25, 2016;
- Mexican trademark No. 1738255 CAT and design in class 35, registered on March 29, 2017;
- Mexican trademark No. 1068133 CAT and design in class 37, registered on October 23, 2008.
The name and contact details of the Respondent, José Luis Garcia Ramirez, were provided to the Center by the Registrar. No information is available on the professional activities of this individual.
The disputed domain name is . According to the information available on the WhoIs extracts filed with the Complaint, it was registered on July 5, 2016. A claim filed by the Complainant with the Mexican Federal Police Cyber Division, to which the Panel will refer thereafter, indicates that Caterpillar Inc. was notified of the existence of the disputed domain name on August 4, 2016 by a customer. Indeed, this domain name hosted a webpage that offered for sell or for rent new and used construction machinery. Attempts were then made to contact the entity offering these services, without tangible result.
Printouts of the webpage hosted under the disputed domain name were extracted in February 18, 2019, and are enclosed to the Complaint. On the first extract is a page that reproduces on the upper left corner the figurative trademark CAT for which the Complainant has asserted trademark rights. It displays, on the top, a number of headings labelled in Spanish and which can be translated as follows: “home page / used equipment / new equipment / repairs / rental of equipment / company / contact”. At the center of the home page is a picture of a construction worker with CAT branded machinery in the background. A phone number is indicated on the picture, with the slogan “Built for It”, in English, just below. On the lower part of the page are other headings, similar to the ones available on top, and illustrated with a few pictures. The colors used as background to this webpage are black and yellow. The second page extracted has the same layout overall. The picture reproduced in the center is a building on which the figurative trademark CATERPILLAR is affixed. On the lower part of this page is reproduced the following statement, in Spanish: “Caterpillar es el mayor fabricante del mundo de maquinarias de construcción y de minería, de motores diesel y de gas natural, de turbinas industriales y de locomotoras diesel-eléctricas. También somos el proovedor líder en servicios financierios a través de Caterpillar Financial Services” (“Caterpillar is the world’s leading manufacturer of construction and mining equipment, diesel and natural gas engines, industrial gas turbines and diesel-electric locomotives. We are also the lead supplier of financial services through Caterpillar Financial Services”). Preliminary issue regarding a concurrent court proceeding
On August 10, 2016, Caterpillar Inc. filed a complaint with the Mexican Federal Prosecution Authorities (“Procuraduría General de la República”). This Judiciary institution is apparently competent to investigate crimes and institute legal proceedings, and it includes a specific Police Cyber Division, competent in particular to investigate cyber crimes against industrial property rights. A copy of the complaint was filed as Annex 3 to the Complaint.
In accordance with paragraph 18(a) of the Rules, “In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision”.
In the present case the Panel considers that the conditions for a suspension or a termination of the proceedings are not met, and will therefore proceed to a decision.
Indeed, it is not apparent from the file that the Mexican Judiciary authorities have initiated criminal proceedings in this matter against the Respondent or other entities or individuals. The mere filing of a complaint by the alleged victim does not open a court proceeding. This is the sole competence of the public prosecutors.
Besides, the Panel has reviewed the reliefs sought by Caterpillar Inc. in the complaint filed in August 2016 and they are not directly targeted at the disputed domain name. What is sought in the complaint filed with the “Procuraduría General de la República” is the conduct of an investigation and the institution of criminal proceedings against the entities or individuals responsible for the infringement of the industrial property rights of the Complainant. Therefore, there is no interference, no overlap, between the – apparently – ongoing criminal investigation by the Mexican Judicial authorities and the scope of this proceeding.
Last, but not least, the Complainant itself has opted to seek remedy under the UDRP as an alternative dispute resolution mechanism, and the Respondent has not objected to this initiative. See section 4.14.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). 5. Parties’ Contentions A. Complainant
Regarding the first element of the Policy, the Complainant indicates that the disputed domain name is confusingly similar to its trademarks CATERPILLAR. It adds in particular that “the addition of the wording ‘mexico’ next to the trademark [CATERPILLAR] in the [disputed] domain name reinforces the intention of the Respondent to confuse the public in relation to a location of the brand”.
On the second element of the Policy, the Complainant states that the Respondent is not making use of the disputed domain name in connection with any bona fide offering of goods or services. Instead, the Respondent allegedly “infringes trademark rights as the website’s content showed without authorization the identical logo [CAT] and pictures of Caterpillar’s machinery and products”.
Finally, on the third element of the Policy, the Complainant claims that the Respondent intentionally attempts to attract users to its website for commercial gain, by creating a likelihood of confusion with its trademarks. It indicates in particular that “the [disputed] domain name by its own affects Caterpillar Inc.’s intellectual property rights, (as) it creates confusion to the consumers (…), misleading them to believe that it is Caterpillar Inc.’s official website in Mexico”. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove all of the following three elements in order to be successful in these proceedings:
(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 disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar
This first element of the Policy requires establishing first that the Complainant owns relevant trademark rights, and second that the disputed domain name is identical or confusingly similar to said trademark rights. Both conditions are satisfied here.
First, the Complainant has chosen to rely in this proceeding on its portfolio of Mexican trademarks over the elements CAT and CATERPILLAR (word and device marks). The existence and status of these trademarks were duly evidenced, and the Panel refers in this respect to the relevant indications in the factual background to this case.
Second, the disputed domain name consists in the mere combination of the elements CATERPILLAR and “Mexico”. The first one reproduces several trademarks of the Complainant, without any alteration. The second one is the name of a country. The combination of these elements suggest that the domain name hosts a webpage in which products or services are offered under the brand name Caterpillar, in Mexico.
The disputed domain name is therefore confusingly similar to the trademarks of the Complainant, in accordance with the standards of the Policy. B. Rights or Legitimate Interests
Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy
In this case, the Complainant has indicated that the Respondent is using the trademarks CATERPILLAR and CAT in the disputed domain name in a manner which directly suggests that the webpage is actually operated by the Complainant to offer its products and services in Mexico. And indeed, as shown in the printouts annexed to the Complaint, the website hosted under the disputed domain name has the overall aspect of an official website of the Complainant, for its operations in Mexico. It reproduces brands and products of the Complainant, uses the same main colors black and yellow, and even expressly claims being connected to Caterpillar Inc.
This raises the question of whether the Respondent can have a legitimate interest in reproducing the brands of the Complainant, in the disputed domain name and in the webpage, to offer genuine products of the Complainant. The Panel notes that this is clearly not so here, for two reasons:
First, the Respondent has not made any assertion in this respect and has not rebutted the arguments put forward by the Complainant.
Second, the elements of the “Oki Data test” are not satisfied here. Indeed, as outlined in the WIPO Overview 3.0, section 2.8, “Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case:
(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and
(iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.”
At the very least, what is missing in the Respondent’s webpage is the disclosure on the webpage of the Respondent’s relationship with the Complainant. On the contrary, the website is configured in such a way that it is impossible for the public to distinguish it from an official website of the Complainant. It even pretends being the Complainant, with the following claim: “Caterpillar is the world’s leading manufacturer of construction and mining equipment, diesel and natural gas engines, industrial gas turbines and diesel-electric locomotives. We are also the lead supplier of financial services through Caterpillar Financial Services”.
Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in respect of the disputed domain name, and accordingly the second element of paragraph 4(a) of the Policy has been met. C. Registered and Used in Bad Faith
In order to prevail under the third element of paragraph 4(a)(iii) of the Policy, the Complainant must demonstrate that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the Policy states 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”. These include: “(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location”.
This Panel finds that the association of a given trademark to a geographical term tends to suggest an affiliation or relationship with the trademark owner (see for example General Electric Company v. Japan, Inc.,WIPO Case No. D2001-0410). This assumption is strongly corroborated in this proceeding, as the Respondent is hosting under the disputed domain name a webpage which would mislead anyone into thinking that this is an official webpage of the Complainant, or at the very least a webpage endorsed by the Complainant. The complaint filed by Caterpillar, Inc. with the Mexican prosecution authorities indicates that in practice potential customers are likely to contact the Respondent while believing that they are exchanging with the Complainant. Clearly, the Respondent chose the disputed domain name in bad faith to confuse the public, and is also using the disputed domain name in bad faith in an attempt to usurp the identity of the Complainant to its own, illegitimate, benefit.
Therefore, the Panel determines that the Respondent registered and is using the disputed domain name in bad faith within the meaning of 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.
Benjamin Fontaine
Sole Panelist
Date: April 15, 2019
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