The Complainant is Caterpillar Inc., United States of America, represented by Baker & McKenzie Abogados, S.C., Mexico.
The Respondent is Juan Espinoza, Mexico. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 26, 2020. On March 26, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 27, 2020, 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 sent an email communication to the Complainant on March 30, 2020 providing the contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on April 3, 2020. 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 April 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 27, 2020. The Center appointed Dawn Osborne as the sole panelist in this matter on May 1, 2020. 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 the owner of the marks CATERPILLAR, CAT and CAT (logo mark) registered, inter alia, in Mexico as of 2007 for earth moving equipment related services and goods including the following registrations: 1) Registration No. 1016503 CATERPILLAR in class 35. Filing Date: November 15, 2007. 2) Registration No. 1738255 CAT (and design) in class 35. Filing Date: December 5, 2014. 3) Registration No. 1083754 CATERPILLAR in class 37. Filing Date: November 15, 2007. 4) Registration No. 1068133 CAT (and design) in class 37. Filing Date: November 15, 2007. 5) Registration No. 1065878 CAT in class 37. Filing Date: November 15, 2007. 6) Registration No. 1616944 CAT (and design) in class 37. Filing date November 28, 2014. 7) Registration No. 1583255 CAT (and design) in class 7. Filing date: December 5, 2014. The Domain Name registered in 2019 has been used for a site offering earth moving equipment including competing equipment not of the Complainant’s manufacture. 5. Parties’ Contentions A. Complainant The Complainant’s contentions can be summarised as follows: The Complainant is the owner of the marks CATERPILLAR, CAT and CAT (logo mark) registered, inter alia, in Mexico as of 2007 for earth moving equipment related goods and services. This Domain Name registered in 2019 is confusingly similar to the Complainant’s CATERPILLAR mark adding only the word “planta” and the generic Top-Level Domain (“gTLD”) “.com”. The Respondent does not have rights or legitimate interests in the Domain Name. The Respondent is identified as Juan Espinoza and is not authorised by the Complainant. The Domain Name has been used for a commercial site unconnected with the Complainant which uses the CAT logo as a masthead which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Domain Name has been registered and is being used in bad faith to divert Internet users for commercial gain. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar The Domain Name consists of the Complainant’s CATERPILLAR mark (registered, inter alia, in Mexico for earth moving related goods and services as of 2007), the term “planta” meaning plant in English and the gTLD “.com”. Previous panels have found confusing similarity when a respondent merely adds a descriptive term to a complainant's mark. The Panel finds that the addition of the term “planta” to the Complainant’s mark does not prevent confusing similarity between the Domain Name and the Complainant’s trademark pursuant to the Policy. The gTLD “.com” does not serve to prevent the Domain Name being confusingly similar to the Complainant’s CATERPILLAR mark, which is the distinctive component of the Domain Name as a gTLD is a necessary part of a domain name and does not form part of any mark at issue in these proceedings. Accordingly, the Panel holds that the Domain Name is confusingly similar for the purposes of the Policy with a mark in which the Complainant has rights. As such the Panel holds that paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests The Complainant has not authorised the use of its mark. There is no evidence or reason to suggest the Respondent is commonly known by the Domain Name. The use of the Domain Name is commercial and so cannot be legitimate noncommercial fair use. The Respondent has used the Domain Name for a site offering earth moving equipment including equipment not of the Complainant’s manufacture in competition with those of the Complainant using the Complainant’s CAT logo as a masthead. The Panel finds this use is deceptive and confusing. As such it cannot amount to the bona fide offering of goods and services. As such the Panel finds that the Respondent does not have rights or a legitimate interests in the Domain Name and that the Complainant has satisfied the second limb of the Policy. C. Registered and Used in Bad Faith In the opinion of the Panel the site attached to the Domain Name is deceptive and confusing in that visitors to the site might reasonably believe it is connected to or approved by the Complainant as it offers earth moving equipment including equipment not of the Complainant’s manufacture using the Complainant’s CAT logo as a masthead suggesting the site is an official site of the Complainant. The use of the Complainant’s CAT logo as a masthead shows that the Respondent is aware of the Complainant, its business, rights and goods and services. Accordingly, the Panel holds that the Respondent has intentionally attempted to attract for commercial gain Internet users to his website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the competing web site and goods and services offered on it likely to disrupt the business of the Complainant. As such, the Panel believes that the Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy under paragraph 4(a)(iii). 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 Dawn Osborne
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Sole Panelist
Date: May 5, 2020
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