WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Caterpillar Inc. v. zhou xiaobai
Case No. D2012-1938
1. The Parties
The Complainant is Caterpillar Inc., Peoria, Illinois, United States of America, represented by The GigaLaw, Douglas M. Isenberg, Attorney at Law, LLC, United States of America (the “United States”).
The Respondent is zhou xiaobai, Fuzhou, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <catboot-uk.org> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 2, 2012. On October 2, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 5, 2012, 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 verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 16, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2012.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on November 22, 2012. 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
According to the Complainant it is the world's leading manufacturer of construction and mining equipment, diesel and natural gas engines, industrial gas turbines and diesel electric locomotives, it is also a leading services provider through Caterpillar Financial Services, Caterpillar Re-manufacturing Services, Caterpillar Logistic Services and Progress Rail Services. The Complainant is a publicly traded company listed on the New York Stock Exchange under the symbol “CAT”.
The Complainant serves customers in more than 180 countries around the world with more than 300 products. More than half of the Complainant's sales are outside the United States. The Complainant’s manufacturing, marketing, logistics, service R&D and related services along with its dealer locations exist in more than 500 locations worldwide.
The Complainant employs approximately 127,238 employees worldwide and sells its products through approximately 180 dealers who employ approximately 126,700 employees.
According to Inter Brand, the Complainant is one of the 100 best global brands (No. 64 for 2011). This is shown at Annex 4 to the Complaint.
The Complainant operates a website using the domain name <cat.com> which was created on March 25, 1993. A copy of the home page of the website is exhibited at Annex 6.
Since at least 1991, the Complainant has licensed the CAT trademark for use in connection with footwear including boots. The Complainant is the registrant of the domain name <catfootwear.com> which is used by the Complainant's licensee in connection with footwear, including boots.
The Complainant is the owner of more than 5,800 trademark registrations or applications in approximately 150 countries or jurisdictions around the world for marks that contain “CAT” or “CATERPILLAR” (the CAT trade mark), the first of which was used in 1904. A table of these marks is available upon request from the Complainant.
Annexed at Annex 11 to the Complaint are printouts from the US Patent Trademark Offices’ trademark electronic search system for three trademark registrations for the CAT trademark used in footwear. These are:-
No. 1908556 registered on August 1, 1995 for footwear
No. 2488264 registered on September 11, 2001 for retail store services in the fields of clothing and footwear
No. 3365449 registered on January 8, 2008 for footwear
In the absence of a response, there is relatively little evidence of the activities of the Respondent. However, at Annex 9 to the Complaint is exhibited an extract from the Respondent's website at ‘www.lacostetrainersuk2012.net”. The website advertises for sale Lacoste branded footwear. The Complainant points out that this is a brand that is not associated with the Complainant.
In the absence of a Response, the Panel accepts that the above evidence adduced by the Complainant is true.
5. Parties’ Contentions
1. The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. It submits that the relevant comparison to be made is with the second-level portion of the disputed domain name, i.e. “catbook-uk”.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain name. It submits that the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the CAT trademark. It also submits that the Respondent has never been commonly known by the disputed domain name and it is not making a legitimate noncommercial or fair use of the disputed domain name. It relies upon the Respondent's website exhibited at Annex 9 to the Complaint.
3. The disputed domain name was registered and is being used in bad faith. The Complainant relies upon the Respondent's website at Annex 9 to the Complaint and in particular that the Respondent, by using the disputed domain name in connection with the website for competing footwear, is creating confusion which makes potential customers choose other services than the Complainant’s, thus disrupting the Complainant’s business. It also submits that as a result of the widespread use and protection of the trademark CAT for more than 100 years “it is inconceivable” that the Respondent chose the disputed domain name without knowledge of the Complainant's activities.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
On the basis of the evidence referred to above, the Panel is in no doubt that the Complainant is the owner of registered trademark rights in the mark CAT and that these exist in many jurisdictions throughout the world.
The Complainant submits that the relevant comparison between the mark and the disputed domain name is the second level portion of the domain name, ie “catbook-uk” and that the generic top level domain name “.org” should be disregarded for this purpose. This is supported by authority previous UDRP decisions of the Center which the Complainant refers to.
It also submits that “the overall impression of the designation” of the disputed domain name is one of being connected to the trademark of the Complainant. The Panel accepts this particularly given the evidence adduced by the Complainant of its marketing of footwear including boots.
The Panel also disregards the use of the graphic term “UK” connected with the dominant part of the disputed domain name i.e. "catboot" by a hyphen.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark CAT.
B. Rights or Legitimate Interests
In the absence of any evidence to the contrary, the Panel accepts the evidence of the Complainant that it has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the CAT trademark in any manner. This in itself is evidence that the Respondent has no rights or legitimate interests in respect of the domain name.
In addition, there is no evidence that the Respondent has ever used or made preparations to use the disputed domain name in connection with the bona fide offering of goods or services. Rather, as is shown in Annex 9 to the Complaint, the Respondent is using the disputed domain name to redirect visitors to a website at “www.lacostetrainersuk2012.net” which website advertises for sale Lacoste branded footwear. This is a brand that is not associated with the Complainant. The Complainant submits that this constitutes parasitic use which relies on instigating and exacerbating user confusion and therefore does not constitute bona fide commercial or fair use sufficient to legitimate any rights and interests the Respondent might have. The Panel accepts the submission in the absence of a Response.
The Panel also accepts, on the basis of the Complainant's submissions that the Respondent has never been commonly known by the disputed domain name and has never acquired any trademark or service mark rights in the disputed domain name. Therefore, it submits that the Respondent cannot establish rights or legitimate interests pursuant to paragraph 4(c)(ii) of the Policy.
Moreover, the Complainant submits that its established registration of the CAT trademark for more than 100 years makes it unlikely that the Respondent is commonly known by the trademark. In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant relies heavily upon the fact that the Respondent is using the disputed domain name to redirect Internet visitors to the website exhibited at Annex 9, ie advertising for sale Lacoste branded footwear which is not associated with the Complainant. It argues that the only explanation of this is that the Respondent intends to use the site to disrupt the Complainant's relationship with its customers or potential customers or attempt to attract Internet users for potential gain. This constitutes evidence of registration use in bad faith pursuant to paragraph 4(b)(ii) and (iv) of the Policy. The Panel finds for the Complainant on the basis of this submission which in itself is sufficient to enable the Complainant to succeed in showing bad faith.
However, the Complainant also submits that the effect of Annex 9 is to demonstrate that the Respondent has registered the domain name primarily for the purpose of disrupting the business of the competitor contrary to paragraph 4(b)(iii) of the Policy. This is evidence that the Respondent is a competitor of the Complainant because like the Complainant the Respondent is selling footwear. The Panel accepts this argument.
The Panel also finds for the Complainant in relation to its submission that as a result of the long use of the CAT trademark (for more than 100 years) the mark has become a famous trademark and that use of a domain name which conflicts with that mark is itself sufficient evidence of bad faith registration. The Panel finds for the Complainant with regard to this submission.
The Panel also takes into account the fact that the Complainant sent a demand letter to the email address for the Respondent at the publicly available internic WhoIs record of the address given with regard to the disputed domain name and this was returned as undeliverable. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.
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 <catboot-uk.org> be transferred to the Complainant.
Clive Duncan Thorne
Dated: December 6, 2012