Complainant is Caterpillar Inc. of Peoria, Illinois, United States of America, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.
Respondent is H. van Zuylen Materieel of ’s-Hertogenbosch, The Netherlands. 2. The Domain Names and Registrar
The disputed domain names and (the “Domain Names”) are registered with SIDN through Digitalus Webhosting. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2011. On December 2, 2011, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Names. On December 2, 2011, SIDN transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 8, 2011. In accordance with the Regulations, article 7.1, the due date for Response was December 28, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 29, 2011.
The Center appointed Willem Hoorneman as the panelist in this matter on January 11, 2012. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background
Complainant is a leading worldwide manufacturer of construction and mining equipment, diesel and natural gas engines, industrial gas turbines and diesel-electric locomotives, and is also a provider of related services. Complainant is holder of several trademarks for CAT, including a Benelux wordmark No. 316078 registered for, inter alia, vehicles, apparatus for locomotion by land, air or water, machines and machinery, which trademark was filed on January 30, 1973 (the “Trademark”).
The Domain Names were both registered by Respondent on January 25, 2006. 5. Parties’ Contentions A. Complainant
Complainant contends that the Domain Names are confusingly similar to its Trademark, as the Domain Names incorporate the Trademark in its entirety. The addition of such generic terms as the Dutch word “verhuur” (“rent” in English) to the Domain Name and the English word “dealer” to the Domain Name does not prevent confusion.
Complainant claims that Respondent has no rights to or legitimate interests in the Domain Names. Complainant has never licensed or otherwise authorized Respondent to use its Trademark. Respondent has made no demonstrable preparations to use the Domain Names (or any corresponding name) in connection with a bona fide offering of goods or services. Rather, Respondent is using the Domain Name in connection with a website that advertises the rental and sale of construction machines in competition with Complainant, and Respondent is not using the other Domain Name in connection with an active website. Respondent is not commonly known by the Domain Names.
The use of the Domain Names cannot be described as legitimate noncommercial or fair use without intent for commercial gain. The website under the Domain Name advertises the rental and sale of construction machines, in competition with Complainant, and is therefore clearly commercial.
Complainant asserts that the Domain Names have been registered or are being used in bad faith. As Respondent uses a domain name that contains the Complainant’s well-established Trademark in connection with a website that advertises the rental and sale of construction machines in competition with Complainant, it may be concluded that Respondent most likely was aware of Complainant’s Trademark when registering the Domain Names. It also follows that the Domain Name is being used for commercial gain, by attracting Internet users to Respondent’s website through the likelihood of confusion which may arise with the Trademark. Further, although Respondent is not using the Domain Name in connection with an active website, such “passive holding” constitutes bad faith, especially where, as in this case, Respondent is using the other Domain Name in an active manner that amounts to bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Article 10.3 of the Regulations provides that in the event a respondent fails to submit a response, the complaint shall be granted unless the panelist considers it to be without basis in law or in fact. The Panel notes that, in accordance with article 16.4 of the Regulations, the Center has fulfilled its obligation to employ reasonable available means to achieve actual notice of the Complaint to Respondent.
Based on article 2.1 of the Regulations, a request to transfer a domain name must meet three cumulative conditions:
A. The domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the complainant has rights, or other name by means of article 2.1(a) under II of the Regulations; and
B. The respondent has no rights to or legitimate interest in the domain name; and
C. The domain name has been registered or is being used in bad faith.
Considering these conditions, the Panel rules as follows: A. Identical or Confusingly Similar
Complainant has based its Complaint on the Trademark and has submitted a copy of the trademark registration demonstrating that it is the holder of the Trademark. This Benelux trademark qualifies as a trademark protected under Dutch law.
It is established case law that the top level domain “.nl” may be disregarded in assessing the similarity between the relevant trademark on the one hand, and the domain name on the other hand (see: Taylor Made Golf Company, Inc. v. Lotom Group S.A.,WIPO Case No. DNL2010-0067; Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).
The Domain Names are confusingly similar to Complainant’s Trademark, because both Domain Names incorporate the Trademark in its entirety. The Domain Names differ from the Trademark only in that in each of them the Trademark is followed by a generic or descriptive term, namely “verhuur” (in English: “rent”) in the one and “dealer” in the other. The addition of such generic or descriptive terms does not eliminate the confusing similarity with the Trademark (see, in particular: Boels Verhuur B.V. v. Edoco LTD.,WIPO Case No. DNL2010-0020, in which case the word “verhuur” was considered generic; and Seiko EPSON Corporation v. ANEM Computers / ANEM,WIPO Case No. DNL2010-0024, in which case the words “specialist” and “shop” were considered descriptive and generic. See also: LEGO Juris A/S v. Nick Terlouw,WIPO Case No. DNL2011-0023; and Taylor Made Golf Company, Inc. v. Lotom Group S.A.,WIPO Case No. DNL2010-0067).
Therefore, the Panel finds that the Domain Names are confusingly similar to the Trademark. B. Rights or Legitimate Interests
Complainant must demonstrate that Respondent has no rights to or legitimate interests in the Domain Names. This condition is met if Complainant makes a prima facie case that Respondent has no such rights or interests, and Respondent fails to rebut this (see: Technische Unie B.V. and Otra Information Services v. Technology Services Ltd.,WIPO Case No. DNL2008-0002).
The record does not include any indication that Respondent has any relevant trademark or trade name rights regarding the terms “catverhuur” or “catdealer”. Complainant has not licensed or otherwise permitted Respondent to use the Trademark.
As a result of its failure to submit a Response, Respondent did not us the opportunity to show rights to or legitimate interests in the Domain Names. It may be assumed that Respondent was and is not commonly known by the Domain Names.
Even if Respondent would consider itself a reseller of Complainant’s products, such circumstances will not confer rights or legitimate interests, as it appears from the evidence brought before the Panel that Respondent uses the Domain Name in connection with a website that advertises the rental and sale of construction machines in competition with Complainant. These circumstances indicate that Respondent was using the Trademark in the Domain Name to divert the attention of Internet users to competing goods, which implies that the Domain Name is not used for the bona fide offering of goods or services (see: Seiko EPSON Corporation v. ANEM Computers / ANEM,WIPO Case No. DNL2010-0024). A reseller must actually offer the goods and services at issue, the site must sell only the trademarked goods, and the site must accurately and promptly disclose the registrant’s relationship with the trademark holder. The respondent must also not try to “corner the market” in domain names that reflect the trademark. These criteria do not appear to have been met (see: Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
Although Respondent is not using the Domain Name in connection with an active website, but is rather engaging in “passive holding”, considering also the foregoing circumstances, the Panel finds that Respondent has no rights to or legitimate interests in this Domain Name.
Based on the foregoing, the Panel is of the opinion that Respondent has no rights to or legitimate interests in the Domain Names. C. Registered or Used in Bad Faith
The registration of the Trademark predates the Domain Names’ registration by more than 30 years. As Complainant owns trademark rights effective and enforceable in The Netherlands, while the Domain Names are in the “.nl” domain, the website linked to is in the Dutch language, Respondent is established and runs its business in The Netherlands, and the website concerned offers goods identical or highly similar to those for which the Trademark is registered, the Panel deems it certain that Respondent was aware of Complainant’s (well-established) Trademark when registering the Domain Names.
Based on the uncontested evidence presented, the Panel finds that the Domain Name is being used by Respondent for commercial gain, by intentionally attracting Internet users to its website where Respondent is offering goods of Complainant’s competitors, through the likelihood of confusion with Complainant’s Trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. This constitutes evidence of bad faith registration and use in accordance with article 3.2 sub d of the Regulations (see: Seiko EPSON Corporation v. ANEM Computers / ANEM,WIPO Case No. DNL2010-0024; and Taylor Made Golf Company, Inc. v. Lotom Group S.A.,WIPO Case No. DNL2010-0067). In light of the foregoing, the Panel is of the opinion that the passive holding of the other (registered but not actively used) Domain Name should also be considered to be in bad faith.
Having refrained from submitting a Response, Respondent has failed to provide any evidence to the contrary. On the above grounds, the Panel finds that the requirements of registration or use in bad faith of the Domain Names pursuant to article 2.1(c) of the Regulations have been met. 7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Names and be transferred to Complainant.
Willem Hoorneman
Panelist
Dated: January 30, 2012
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