WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Caterpillar Inc. v. personal
Case No. D2010-2190
1. The Parties
The Complainant is Caterpillar Inc. of Peoria, Illinois, United States of America, represented by Al Tamimi & Company, United Arab Emirates.
The Respondent is personal of Amman, Jordan.
2. The Domain Name and Registrar
The disputed domain name <catcontrols.com> (“the Domain Name”) is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2010. On December 16, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name. On December 16, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. In response to the Center’s notification of December 20, 2010 that the Complaint was administratively deficient, the Complainant filed an amended Complaint on January 4, 2011.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 1, 2011.
The Center appointed Warwick Smith as the sole panelist in this matter on February 1, 2011. 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.
In the absence of any Response, the Panel has checked the record, and is satisfied that the Complaint has been properly notified to the Respondent by the Center.
4. Factual Background
The following uncontested facts are taken from the Complaint.
The Complainant is an American corporation with extensive operations around the world. It is the world’s largest manufacturer of construction and mining equipment, and it markets a variety of other products, including electronic control system products. From at least 1995 it has been supplying CAT-branded software packages for use in connection with several different construction machine types.
The Complainant contends, and the Respondent (in email correspondence referred to below) appears to accept, that the Complainant and its CAT-branded products are well-known worldwide.
The Complainant is the registered proprietor of the word mark CAT in the United States of America. The registration dates from March 10, 1949, and it covers a variety of goods in international classes 7 and 12. In addition, the Complainant says that it holds registrations of that mark in numerous other jurisdictions, in respect of numerous products. It produced particulars (including registration numbers) of a number of CAT marks it says it has registered in the United Arab Emirates.
The Complainant operates its principal website at “www.cat.com”. It also holds numerous country code domain names incorporating the expression “cat”.
For many years, the Complainant has operated a global dealer network, known as “CAT Dealer”. The network has included dealers who have been operating in Middle Eastern countries, including a Jordan-based dealer whose predecessor was first appointed to represent the Complainant in that country in 1929.
The Respondent and the Domain Name
The Domain Name was created on April 13, 2009, and the concerned registrar GoDaddy.com Inc. confirmed (in its verification response) that the Respondent was the original registrant of the Domain Name.
The Complainant produced extracts from the website to which the Domain Name resolved (“the Respondent’s website”) which had been printed on November 24, 2010. These extracts were the “ABOUT” page and the “PRODUCTS” page.
These pages appeared to show that the Respondent was operating a business known as “CATControls”, specializing in electronic controls, and industrial automation and control software. The business appeared to be operated in partnership with a company called BSE Qatar, which was described on the Respondent’s website as the parent company of CATControls. According to the Respondent’s website, BSE Qatar “separated CATControls to become an independent company”, in late January 2009.
The Respondent’s website (as it stood on November 24, 2010) claimed that the “CATControls” business was represented in three countries, Jordan, Canada, Saudi Arabia, and would soon be operating in the United Arab Emirates.
The “PRODUCTS” page from the Respondent’s website as it stood on November 24, 2010, described four different kinds of SCADA (“Supervisory Control and Data Acquisition”) systems marketed or promoted by CATControls. One of them, described as the CATControls EMCP SCADA System, was said to be for “monitoring and control caterpillar generator and engine …”.
The Panel notes that the expression “CATControls” appeared in a number of places on the Respondent’s website in a stylized, or logo, form, with the letter “N” in a larger font than the other letters, and in a different color. The effect was to highlight the opening five letters, “CATCO”, as if it were a stand-alone expression.
Pre-Commencement Correspondence between the Parties
The Complainant says that it first became aware of the Domain Name and the Respondent’s website in approximately May 2010. Its representatives sent a cease and desist letter to the administrative contact for the Domain Name, a Mr. Al Sharif, on May 13, 2010. The letter sought certain undertakings from the Respondent, together with the transfer of the Domain Name to the Complainant, within 7 days.
Mr. Al Sharif replied by email on May 16, 2010, advising that his company, CatControls Co, were software engineers, developers, and creators, who develop software for use in a particular commercial field, and then seek to sell that software to companies operating in that field. He acknowledged that his company was new in this area of commercial activity. As for the Respondent’s choice of the Domain Name, Mr. Al Sharif advised that “CAT” reflects the first letters of the words “Creative And Typical”, which words were said to be descriptive of the electronic control products supplied by his company. Mr. Al Sharif went on to state that “CAT or Caterpillar is a well known world wide company which [sic] we are respect honestly. (We will delete the CAT or Caterpillar word from our company website within this week) but we did not think of the name to be connected to the CAT ins.”
Mr. Al Sharif then advised that if the Complainant wanted to buy the Domain Name, the Respondent would not have any problem selling it to the Complainant, and that he would send an offer for sale on request.
The Complainant’s representatives replied by email on May 18, advising that the Complainant’s policy was not to pay for transferring a disputed domain name, but to file a complaint under the Policy.
Mr. Al Sharif sent a further email on May 18, 2010, repeating the claim that “CAT” stands for “Creative And Typical” controls. He advised that the Respondent would be prepared to sell the Domain Name to the Complainant for USD 150,000.
The Complainant’s representatives advised Mr. Al Sharif on May 26, 2010 that they had been instructed to proceed with legal action to recover the Domain Name.
The Panel’s Visit to the Respondent’s Website
The Panel visited the Respondent’s website on February 3, 2011. The material previously displayed at the Respondent’s website had been deleted, and replaced with a note advising that the site was “under-maintenance”, and that site visitors could visit the site again on December 20, 2010 (or contact the operator of the website at a named email address).
5. Parties’ Contentions
The Complainant contends:
1. The Domain Name is confusingly similar to the Complainant’s CAT mark, which is very well-known around the world. The word “controls” is a common word used in the industry to describe software used to control applications, systems, and processes (including the Complainant’s engines and generators), and the use of that word in the Domain Name does not detract from the dominant impression created by the use in the Domain Name of the Complainant’s CAT trademark.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, having regard to the following:
(i) The Complainant has not authorized the Respondent to use a domain name confusingly similar to the Complainant’s CAT mark.
(ii) The Domain Name is not the name of the Respondent, and nor is it similar to, or any way connected with, the name under which the Respondent has registered the Domain Name (“personal”).
(iii) The Respondent is not making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the Complainant’s mark. The Respondent has registered and currently uses the Domain Name for the purpose of capitalizing on the Complainant’s goodwill and reputation in its CAT house mark and creating a false association thereto.
(iv) The Respondent’s activities are being conducted for pecuniary gain, and the Respondent has adopted a domain name (the Domain Name) which he is well aware will be accessed by persons endeavoring to find out information about the controls, production software, and components offered by the Complainant as part of its CAT electronics business.
(v) The Respondent’s use of the Domain Name cannot be characterized as use in connection with the bona fide offering of goods or services. The Respondent’s conduct in using the Domain Name to divert Internet users to the Respondent’s website by creating a false association between the Complainant’s and the Respondent’s businesses, does not amount to a bona fide offering of goods or services. The Respondent is clearly aware of the Complainant’s existence, because the Respondent deliberately referred to “caterpillar generator and engine” as a selling point for its CATControls EMCP SCADA system.
3. The Domain Name was registered and is being used in bad faith. The Complainant relies on the following matters:
(i) The Domain Name is not a domain name that any user would choose unless they knew of the Complainant’s CAT house mark. The Respondent was clearly aware of the Complainant’s business when he registered the Domain Name.
(ii) There was no plausible legitimate reason for the Respondent to choose a domain name incorporating the expression CAT (the Complainant’s well-known house mark). The very fact that the Respondent has chosen to do that, invites the negative inference that the Respondent has registered the Domain Name in bad faith.
(iii) The Respondent’s attempt to explain that “CAT” is derived from “Creative And Typical” controls is at best a highly suspicious coincidence. In the very same communication, the Respondent offered to sell the Domain Name to the Complainant for a price of USD 150,000.
(iv) The Respondent has been using the Domain Name in bad faith. The Domain Name is being used for the purpose of attracting visitors to the Respondent’s website in the mistaken belief that they are visiting a website somehow associated with the Complainant. The Respondent has thereby been creating a false association between the Respondent’s website and the Complainant.
(v) In using the expression “CATControls”, in its description of its products on the Respondent’s website, the Respondent has chosen to highlight the expression “CAT”. In so doing, the Respondent has emphasized its use of the Complainant’s well-known house mark, CAT. The Respondent’s use of “CAT” in that manner mimics the Complainant’s regular use of its CAT house mark in the marketing of its new products.
(vi) The Respondent’s choice of colors in its corporate livery on the Respondent’s website, replicates the look and feel of the Complainant’s iconic corporate livery, including the well-known “Caterpillar” yellow. Caterpillar yellow is distinctive of the Complainant, and is recognized as such in the marketplace. The Respondent’s use of that color on the Respondent’s website adds further to the likelihood of confusion.
(vii) The Domain Name is an instrument of fraud. It was registered solely for the purpose of attracting users who type in <catcontrols.com> in the presumption that they will reach a site operated by the Complainant, relating to controls, components, production software, control systems and processes. By so doing, the Respondent has acted in bad faith within the meaning of paragraph 4(b)(iv) of the Policy, as the Respondent has been seeking to profit from the likelihood of confusion created by the Domain Name.
(viii) The Respondent has willfully infringed the Complainant’s trademark rights by continuing to maintain the Domain Name and using it to create a false association with the Complainant’s CAT Electronics business.
4. Having regard to the foregoing matters, the Respondent could not possibly make any use of the Domain Name that would not violate or infringe the Complainant’s trademark rights in its CAT house mark, or otherwise be illegitimate.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. What the Complainant must prove under the Policy - General
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(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.
Paragraph 15(a) of the Rules requires the 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”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the Panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the Panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g., by failing to file a response), as the Panel considers appropriate.
B. Identical or Confusingly Similar
The Complainant has proved this part of its Complaint. It is the registered proprietor of the mark CAT in the United States, and thus has “rights” in that mark for the purposes of paragraph 4(a)(i) of the Policy.
The Domain Name incorporates the Complainant’s CAT mark in its entirety, and UDRP panels have often found that circumstance sufficient to justify a finding of confusing similarity under paragraph 4(a)(i) - see for example Nokia Group v. Mr. Giannattasio Mario, WIPO Case No. D2002-0782, applied by the three-member panel in The Ritz Hotel, Limited v. Damir Kruzicevic, WIPO Case No. D2005-1137.
The Panel accepts the Complainant’s submission that adding the word “controls” has done nothing to remove the confusion likely to be caused by the Respondent’s use of the Complainant’s CAT mark in the Domain Name. The Complainant itself markets electronic “control” systems under a CAT mark, so the use of the word “controls” in the Domain Name was only ever likely to compound the likelihood of confusion (The Ritz Hotel, Limited, supra, and Marie Claire Album S.A. v. Buy This Domain, WIPO Case No. D2002-0677).
The generic top level domain suffix “.com” is not taken into account in the comparison which is required by paragraph 4(a)(i).
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of the Center’s online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
In this case, the Domain Name is confusingly similar to the Complainant’s CAT mark, and the Complainant has not authorized the Respondent to use that mark, whether in a domain name or otherwise. And for the reasons which are set out in section 6D of this decision (dealing with registration and use of the Domain Name in bad faith), the Panel is satisfied that the Respondent’s use of the Domain Name has been neither bona fide within the meaning of paragraph 4(c)(i) of the Policy, nor fair or legitimate within the meanings of those words in paragraph 4(c)(iii) of the Policy.
Although the Respondent’s website as it stood on November 24, 2010 appeared to show that the Respondent’s website was being used in the operation of a business called “CATControls”, the Panel is not satisfied on the evidence that the Respondent, as an individual, business, or other organization, has been “commonly known by” that name within the meaning of paragraph 4(c)(ii) of the Policy.
First, there is a question as to who the Respondent is. The Panel notes that the registrant of the Domain Name is either some person or entity called “personal” (which seems an unlikely possibility), or it is Mr. Al Sharif, or a company with which he is associated, using “personal” as a pseudonym. There is no evidence that Mr. Al Sharif is commonly known as “CATControls”, so the argument for the Respondent, if there is one, would be that the party who caused the Domain Name to be registered was a company or other business which was “commonly known by” the name “CATControls”. But there is no evidence that any such company was incorporated before the Domain Name was registered on April 13, 2009, or (if a company had been incorporated by then) that it had commenced trading by that date and become “commonly known” by the Domain Name. If anything, the fact that Mr. Al Sharif (assuming he was the person who effected the registration) entered the word “personal” as the registrant, with himself as the administrative contact, tends to suggest that the “CATControls” business might not have commenced operations when the Domain Name was registered.
Furthermore, a respondent cannot take advantage of the safe harbor provided by paragraph 4(c)(ii) of the Policy if that respondent has adopted the relevant business name with mala fide intent – see Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453, followed in Glaxo Group Limited, SmithKlineBeecham Corporation d/b/a GlaxoSmithKline v. Michale Kelly, WIPO Case No. D2004-0262. The panel in the Paule Ka case referred to Palm, Inc. v. South China House of Technology Consultants Ltd., WIPO Case No. D2000-1492, where the panel said: “While the words ‘bona fide’ do not feature in this sub-paragraph [i.e., in subparagraph 4(c)(ii) of the Policy], the Panel takes the view that they should be read into it and that a Respondent known by a name corresponding to the Domain Name should not be able to take advantage of this sub-paragraph if the name was adopted with mala fide intent”.
A number of facts, when looked at together, create a strong picture of mala fide intent in this case, sufficient to disqualify the Respondent from any reliance on paragraph 4(c)(ii) of the Policy. These facts include Mr. Al Sharif’s apparently contrived explanation for the Respondent’s choice of the Domain Name, the Respondent’s failure to respond to the Complaint, the taking down of the Respondent’s website, and the various other matters traversed below in section 6D of this decision.
Having regard to the foregoing considerations, the Panel is satisfied that the Complainant has made out a prima facie case of “no rights or legitimate interests”, so that the evidentiary burden shifts to the Respondent on that issue. The Respondent having failed to file a Response, the burden of production has not been discharged, and the Complainant succeeds on this part of the Complaint.
D. Registered and Used in Bad Faith
Again, the Panel is satisfied that the Complainant has proved this part of the Complaint.
The Respondent was clearly aware of the Complainant and its CAT-branded products when the Domain Name was registered. The Complainant’s products are available around the world, and Mr. Al Sharif acknowledged in his May 16, 2010 email that “CAT or Caterpillar is a well known world wide company …”. There had also been a reference to the Complainant’s products on the Respondent’s website. Furthermore the nature of the “CATControls’” business (as described on the Respondent’s website) makes it likely that the Respondent would have been aware of the Complainant’s specific activities in the field of electronic control equipment. (According to the Respondent’s website as at November 24, 2010, “CATControls“ was a specialist in “electronic controls, industrial automation and control software”. If it was a specialist in that field, it seems likely that it would have been aware of the major international players in the field, including the Complainant.)
With that knowledge, the Respondent could not have failed to appreciate that registering the Domain Name would be likely to attract to the Respondent’s website Internet users who were looking for a website used by the Complainant for the promotion of its electronic control products. If the Respondent appreciated that likelihood, he or it must also be taken to have intended it.
The prominent use of “CAT” on the Respondent’s website reinforces the impression that the Respondent has been attempting to create the false impression of an association with the Complainant and its CAT-branded electronic control products. That impression is reinforced by the statement which appeared on the Respondent’s website, that one of its SCADA system products was designed “for monitoring and control caterpillar generator and engine …” (the Panel’s emphasis).
Mr. Al Sharif’s explanation for the Respondent’s choice of the Domain Name, offered in his May 16, 2010 email, strikes the Panel as implausible. If the first three letters of the name “CATControls” were really chosen to reflect the first letters of the words which form the expression “Creative And Typical”, one might have expected to see that expression used on the Respondent’s website. It was not. Furthermore, “typical” does not sound to the Panel like the kind of word any company would choose to describe its products or its company ethos. Typical of what exactly? Owners of new businesses generally look to differentiate their company and its products from competitors in the market, and in that context the word “typical” seems out of place. Mr. Al Sharif’s explanation, unsupported as it is by any certified Response filed in the proceeding, has the appearance of an ex post facto attempt to justify the illegitimate decision to use the Complainant’s mark in the Domain Name.
Other factors contributing to the overall impression of bad faith registration and use are the Respondent’s unexplained decision to register the Domain Name in the name “personal” (apparently not the real name of any person or corporation), and the decision, which appears to have been made once the present proceeding had been commenced, to take down the Respondent’s website. The Respondent’s offer to sell the Domain Name to the Complainant as soon as the Respondent received a cease and desist letter, is also consistent with the Respondent having no genuine interest in using the Domain Name to host a legitimate business website.
The question of a possible sale of the Domain Name to the Complainant was not mentioned in the Complainant’s cease and desist letter – it was raised for the first time by the Respondent in his reply email, in which he made it clear that he would “not have problem” selling the Domain Name to the Complainant. Mr. Al Sharif’s sale price of USD 150,000 leaves little room for doubt that the Respondent wanted to make a profit out of the sale of the Domain Name to the Complainant. Given the circumstances described above, and the Respondent’s failure to respond to the Complaint, the Panel concludes that that was probably the Respondent’s intention all along, and that the case falls within the example of bad faith registration and use described at paragraph 4(b)(i) of the Policy. (Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. They include:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; and …)
The Complainant having proved all elements of the Complaint, the Domain Name must be transferred to the Complainant.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <catcontrols.com>, be transferred to the Complainant.
Dated: February 8, 2011