WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Caterpillar Inc. v. zhang zhicai and li li
Case No. D2012-1849
1. The Parties
The 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.
The Respondents are zhang zhicai of Jiangxi, China and li li of Shanghai, China.
2. The Domain Names and Registrar
The disputed domain names <cat-footwear.com>, <cat-hongkong.com>, <cat-tmall.com>, <www-cat.com> (the “Domain Names”) are registered with GoDaddy.com, LLC. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2012. On September 17, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 19, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent zhang zhicai is listed as the registrant of <cat-tmall.com> and that the Respondent li li is the registrant of the Domain Names <www-cat.com>, <cat-hongkong.com> and <cat-footwear.com> and providing 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 Respondents of the Complaint, and the proceedings commenced on September 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 10, 2012. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on October 11, 2012.
The Center appointed Ian Lowe as the sole panelist in this matter on October 19, 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
The Complainant is one of the world’s leading manufacturers of construction and mining equipment, diesel and natural gas engines, industrial gas turbines and diesel-electric locomotives. It is identified by Interbrand as one of the 100 “best global brands” (No. 64 in 2011).
The Complainant is the owner of over 5,800 trademark registrations and applications around the world in around 150 countries in respect of marks comprising CAT or CATERPILLAR. Since at least 1991 the Complainant has licensed these trademarks for use in connection with footwear, including boots. The Complainant is the registrant of the domain name <catfootwear.com> which is used by its licensee in connection with footwear, including boots.
The Complainant’s trademark registrations include United States trademarks No. 1,908,556 CAT registered on August 1, 1995 in respect of footwear and No. 2,488,264 CAT registered on September 11, 2001 in respect of retail store services in the field of clothing, footwear, toys, sporting goods and other goods.
The Domain Names <cat-footwear.com> and <cat-hongkong.com> were registered on October 5, 2011 and the Domain Names <cat-tmall.com> and <www-cat.com> on January 1, 2012. At the time of the Complaint, the Domain Names <cat-tmall.com> and <cat-footwear.com> resolved to websites advertising what purports to be CAT footwear associated with the Complainant. The Domain Names <cat-hongkong.com> and <www-cat.com> did not resolve to an active website.
5. Parties’ Contentions
The Complainant contends that the Domain Names are confusingly similar to its CAT trademarks, that the Respondents have no rights or legitimate interests in respect of the Domain Names and that the Respondents registered and are using the Domain Names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered in bad faith and are being used in bad faith.
The Complaint has been brought by a single Complainant against two Respondents. According to the WhoIs records, both Respondents give the same contact email address – “[…]@foxmail.com” - and the same contact telephone number - +86.[…]88021. All four of the Domain Names include the word “cat”. The Domain Name <cat-tmall.com> was registered in the name of the Respondent zhang zhicai on the same day (January 1, 2012) that the Domain Name <www-cat.com> was registered in the name of the Respondent li li. The Panel is satisfied, therefore, on the basis of the matters set out in the Complaint and the evidence in support, that the Domain Names are subject to common control and that consolidation in one complaint would be fair and equitable to all parties.
A. Identical or Confusingly Similar
Leaving aside the “.com” suffix, that may be ignored when assessing identity and confusing similarity for the purposes of paragraph 4(a)(i) of the Policy, the Domain Names all comprise the word “cat” together with generic and/or non-distinctive terms – “footwear”, “hongkong”, “www” and “tmall”. “www.tmall.com” is a Chinese B2B trading website. These additional terms do not detract from the distinctiveness of the CAT mark included in the Domain Names and, at least in the case of “footwear”, add to the likelihood of an association with the Complainant. The incorporation of “www” into a domain name suggests typosquatting. Accordingly, the Panel considers that the Domain Names are each identical or confusingly similar to the mark CAT in which the Complainant has rights.
B. Rights or Legitimate Interests
As appears from the copy webpages incorporated in the Complaint, two of the Domain Names resolved to websites advertising footwear that featured very prominent copies of the Complainant’s CAT logo (the “Websites”). The webpages also included numerous examples of the CAT trademark for what were claimed to be CAT footwear products. There is therefore no doubt that the use of CAT in those two Domain Names was deliberate use of the Complainant’s CAT trademarks and intended to be taken as a reference to the Complainant.
The Complainant asserts that the Complainant has never granted any right to the Respondents to use the CAT trademark or authorised its use by the Respondents in any way. What is more, the Complainant states on information and belief that the footwear products advertised on the Websites were not manufactured, distributed or licensed by the Complainant.
The Complainant does not state on terms that the goods offered for sale on the Websites are counterfeit or adduce any substantive evidence that they are counterfeit. The Respondents have not, however, replied to the Complainant’s contentions. They have not displaced the assertion on the part of the Complainant that the Respondents have no rights or legitimate interests in the Domain Names. They have not come forward to establish, for example, that they are authorized resellers of the Complainant’s products, that they are only selling the Complainant’s goods from the Websites or that their relationship with the Complainant was made clear. In short, nothing in the case record leads the Panel to conclude that the criteria set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, referred to in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") that might have justified use of the Complainant’s mark in the Domain Names are established in this case.
In those circumstances, the Panel is satisfied that the Complainant has made out a very strong prima facie case that the Respondents have no rights or legitimate interests in the Domain Names <cat-tmall.com> and <cat-footwear.com>. The Panel also finds by inference, on similar reasoning, that the Respondents can have no rights or legitimate interests in the Domain Names <cat-hongkong.com> and <www-cat.com>.
The Respondents have chosen not to respond to the Complaint or make any attempt to answer this prima facie case.
Accordingly, the Panel finds that the Respondents have no rights or legitimate interests in the Domain Names.
C. Registered and Used in Bad Faith
The Panel considers it self evident that the Respondents must have had the Complainant’s trademark in mind when they registered the Domain Names <cat-tmall.com> and <cat-footwear.com>, as evidenced in particular by the use to which those Domain Names have been put. In view of the Panel’s finding that the Respondents have no rights or legitimate interests in the Domain Names, it follows that those Domain Names were registered in bad faith and, by inference, the Domain Names <cat-hongkong.com> and <www-cat.com>.
In the absence of any rights or legitimate interests, the Respondents’ use of the Websites for the purpose of offering for sale what purport to be the Complainant’s products is such that the Respondents have intentionally attempted to attract, for commercial gain, Internet users to the Websites, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Websites and of products on the Websites. The Domain Names <cat-tmall.com> and <cat-footwear.com> have accordingly been used in bad faith.
So far as the other two Domain Names are concerned, as the Panel found in Telstra Corporation Limited v. Nuclear Marshmallows ( WIPO Case No. D2000-0003), passive holding of domain names registered in bad faith can in certain circumstances constitute bad faith use. In view of the Panel’s findings in relation to the Domain Names <cat-tmall.com> and <cat-footwear.com>, the Panel finds that the Respondents’ passive holding of the Domain Names <cat-hongkong.com> and <www-cat.com> also constitutes bad faith use.
The Panel is accordingly satisfied that the Respondents registered and have used all the Domain Names 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 Domain Names <cat-footwear.com>, <cat-hongkong.com>, <cat-tmall.com> and <www-cat.com> be transferred to the Complainant.
Dated: November 3, 2012