The Complainant is Caterpillar Inc., United States of America, represented by Baker & McKenzie Abogados, S.C., Mexico.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America / Alfredo Robles Legaria, Renta de maquinaria, 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 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 30, 2020, 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 April 2, 2020 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 April 7, 2020. The Center verified that the Complaint together with the amended 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 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2020. The Center appointed Luca Barbero as the sole panelist in this matter on May 11, 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 an American corporation which designs, develops, engineers, manufactures, markets and sells machinery, engine and other products, as well as other financial, retail and rental services. The Complainant is the owner of several trademark registrations for CATERPILLAR and CAT, including the following, as per trademark certificates submitted as annexes 4 to the Complaint: - Mexican trademark registration No. 1016503 for CATERPILLAR (word mark), filed on November 15, 2007 and registered on November 30, 2007, in class 35; The Complainant is also the owner of the domain name The disputed domain name The Complainant contends that disputed domain name The Complainant underlines that the word “servicios” included in the disputed domain name means “services” in English and that the disputed domain name is thus referencing to “Cat services”, which could undoubtedly mislead consumers into believing that such website is related to the Complainant or that the services offered are in some way affiliated with the Complainant’s trademarks. With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent is making an illegitimate commercial and unfair use of the disputed domain name with the intent of attracting consumers for commercial gain at the expense of the Complainant’s reputation and globally renowned trademarks by advertising and offering business and rental services related to machinery and equipment goods under the Complainant’s trademarks. The Complainant further asserts that there is no evidence of the Respondent’s use or demonstrable preparations to use the disputed domain name or any corresponding domain name in connection with a bona fide offering of goods and services as the content of the Respondent’s website displays, without authorization, the Complainant’s figurative trademarks and pictures of the Complainant’s machinery and other products. With reference to the circumstances evidencing bad faith, the Complainant indicates that, by using the disputed domain name, the Respondent is deliberately attempting to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and services. Moreover, the Complainant emphasizes that the unauthorized content published on the Respondent’s website is infringing in itself the Complainant’s Intellectual Property rights, as the Respondent is purportedly offering unauthorized services whilst misleading consumers to believe that the disputed domain name and the Respondent’s website is related to the Complainant, which is not the case. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 15(a) of the Rules: “A Panel shall 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 directs that the Complainant must prove each of the following: (i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has established rights over the trademark CAT based on the corresponding trademark registrations cited under section 4 above and the related trademark certificates submitted as annexes to the Complaint. The disputed domain name incorporates the trademark CAT in its entirety with the addition of the descriptive term “servicios” (“services” in English), a hyphen and the gTLD suffix “.com”, which the Panel finds insufficient to prevent a finding of confusing similarity. As found in a number of prior cases decided under the Policy, where a trademark is recognizable within a domain name, the addition of generic or descriptive terms does not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview 3.0. Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the Respondent. Accordingly, in line with previous UDRP decisions, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, i.e., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Banco Itau S.A. v. Laercio Teixeira,WIPO Case No. D2007-0912; Accor v. Eren Atesmen,WIPO Case No. D2009-0701). In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. It has been repeatedly stated that, when a respondent does not avail himself of its right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003‑0269). The Panel further notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks. Moreover, there is no element from which the Panel could infer a Respondent’s right over the disputed domain name, or that the Respondent, whose name disclosed in the Registrar’s WhoIs records for the disputed domain name is Alfredo Robles Legaria, might be commonly known by the disputed domain name. As mentioned above, the Respondent has pointed the disputed domain name to a website promoting rental services in relation to CATERPILLAR and competitors’ heavy machinery and equipment, publishing the Complainant’s figurative trademarks and images of the Complainant’s products. The Panel notes that no disclaimer about the Respondent’s lack of affiliation with the Complainant is displayed on the home page and that the website also uses the same yellow color as the one adopted on the Complainant’s official website at “www.caterpillar.com”. The Panel finds that the Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods and services as it does not fulfills the requirements set forth in the “Oki Data test” for a reseller, distributor or service provider to claim a legitimate interest in the domain name (Section 2.8.1 of the WIPO Overview 3.0). Indeed, the Respondent is offering for rental the Complainant’s products at the disputed domain name, along with competitors’ products, without providing an accurate and prominent disclaimer aimed at informing users about its relationship with the trademark owner. Rather, the Respondent’s publication of the Complainant’s trademarks and its use of the yellow color used also on the Complainant’s official website are apt to reinforce the likelihood of confusion with the Complainant and its trademarks. Moreover, since the Respondent’s activity promoted on the website at the disputed domain name is clearly commercial in nature, the Respondent is also not making a legitimate noncommercial or fair use of the disputed domain name. Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith. In the case at hand, the Panel finds that, in light of i) the prior registration and use of the Complainant’s trademarks CAT and CATERPILLAR in connection with the Complainant’s products, ii) the well-known character of the trademarks and iii) the confusing similarity of the disputed domain name with the Complainant’s trademark CAT, the Respondent registered the disputed domain name having the Complainant’s trademark in mind. Furthermore, the circumstance that the disputed domain name has been pointed to a website featuring the Complainant’s trademarks and images of the Complainants’ products demonstrates that the Respondent was indeed well aware of the Complainant and its trademark. Since the disputed domain name was used to promote the Respondent’s rental service of the Complainant and competitors’ heavy machinery and related equipment, the Panel finds that the Respondent intentionally attempted to attract Internet users to its website for commercial gain, by causing a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its website and the business promoted therein according to paragraph 4(b)(iv) of the Policy. In view of the above, the Panel finds that the Complainant has also demonstrated that the Respondent registered and is using the disputed domain name in bad faith according 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 Luca Barbero
- Mexican trademark registration No. 1738255 for CAT (figurative mark), filed on December 5, 2014 and registered on March 29, 2017, in class 35;
- Mexican trademark registration No. 1065878 for CAT (word mark), filed on November 15, 2007, and registered on October 10, 2008, in class 37;
- Mexican trademark registration No. 1068133 for CAT (figurative mark), filed on November 15, 2007 and registered on October 23, 2008, in class 37;
- Mexican trademark registration No. 1616944 for CAT (figurative mark), filed on November 28, 2014 and registered on February 24, 2016, in class 37;
- Mexican trademark registration No. 1583255 for CAT (figurative mark), filed on December 5, 2014 and registered on October 22, 2015, in class 7.
Sole Panelist
Date: May 25, 2020
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