WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Caterpillar Inc. v. ZhangZhiCai
Case No. D2013-0823
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 Respondent is ZhangZhiCai of Guixi, Jiangxi, China.
2. The Domain Names and Registrar
The disputed domain names <catchinashop.com> and <cat-chinese.com> are registered with 35 Technology Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 13, 2013. On May 13, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 14, 2013, 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. On May 15, 2013, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On May 18, 2013, the Complainant confirmed its request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date.
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 May 22, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 11, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 12, 2013.
The Center appointed Douglas Clark as the sole panelist in this matter on June 20, 2013. 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.
Language of Proceedings
The language of the registration agreements for both disputed domain names is Chinese. The Complainant requested that the language of these proceedings be English on the basis that the disputed domain names are in English and that it would be inconvenient to the Complainant to have to file the complaint in Chinese.
Pursuant to paragraph 11 of the Rules, the Panel is granted the power to determine the language of proceedings, having regard to the circumstances of the case. This Panel stated in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191 that
“[o]ne important consideration of this issue is the fairness to both parties in their abilities to prepare the necessary documents and protect their own interests”.
The Center has provided both parties with an opportunity to comment on the language of the proceedings by sending both parties a consolidated Language of Proceeding notification. The Complainant has provided submissions in its Complaint regarding the proper language of proceedings, while the Respondent did not raise any objection or reply thereto. This Panel concluded in the Zappos.com, Inc. v. Zufu aka Huahaotrade, supra,:
“A Respondent’s failure to respond to these notices should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint [. . .] a clear default by a Respondent who has been informed in their own language of the proceedings, and of the preliminary acceptance of the Complaint in a particular language, would certainly be a strong factor in support of a Panel subsequently determining that there should be consistency between the language of the Complaint as originally accepted and the language of proceedings as ultimately determined by the Panel [. . .] a default by the Respondent after having been notified of the proceedings and being requested to comment or object to the language request should be a strong factor for the Panel to proceed in line with the Center’s decision on language.”
Considering that both parties have been given fair opportunities to present their cases and the Respondent has been given an opportunity to object to the proceedings being conducted in English but has not responded, the Panel finds that in the circumstances of this case, paragraph 11 of the Rules is best served by allowing the proceedings to be conducted in accordance with the Center’s standard practice. If the Respondent had filed a response in Chinese, this would have been accepted. As the only pleading before the Panel is in English, the Panel will issue its decision in English.
The Panel would encourage complainants facing similar cases such as this to seek an order that the complainant be allowed to submit its documentation in English while the respondent may still file in Chinese. This generally will be the fairest method for resolving issues regarding the language or proceedings.
4. Factual Background
The Complainant is a publicly traded company listed on the New York Stock Exchange. The Complainant is the world’s leading manufacturer of construction and mining equipment, diesel and natural gas engines, industrial gas turbines and diesel-electric locomotives. Since at least 1991, the Complainant has licensed the CAT Trademark for use in connection with footwear, including boots.
The Complainant has registrations for the trademark CAT around the world. It has registered the mark CAT in Class 25 in the United States of America. The Complainant also operates websites under the domain name <catfootwear.com> and <catfootwear.com.cn>. The Complaint did not specify if the Complainant has a registration for CAT in Class 25 in China. However, from a search of the Chinese Trademark Office database, the Panel has found that CAT is registered in Class 25 in China.
The disputed domain names were both registered on June 20, 2012. The websites under the disputed domain names resolve to websites that sell CAT-branded footwear. The website under the disputed domain name <cat-chinese.com> claims, in Chinese, to be an official CAT website.
5. Parties’ Contentions
The Complainant contends that the disputed domain names are confusingly similar to its trademark CAT. They are composed of the Complainant’s trademark CAT and the generic and/or geographic terms “China shop” and “Chinese”.
The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain names as the Respondent has not made any bona fide use of the disputed domain names. Rather the websites at the disputed domain names are selling counterfeit CAT-branded products. The Complainant’s agent made a purchase from the website under the disputed domain name <cat-chinese.com>. The product received was counterfeit.
The Complainant contends that the disputed domain names were registered and are being used in bad faith with the intention of diverting Internet users to their websites which claim to be the website of the Complainant and are selling counterfeit products.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
This is a very simple case of domain name cybersquatting that the UDRP was designed to stop. The Panel accordingly will only make brief findings.
A. Identical or Confusingly Similar
The disputed domain names <cat-chinese.com> and <catchinashop.com> are composed of the Complainant’s registered trademark CAT and the generic and/or geographical terms “Chinese” and “China shop”.
According to previous UDRP decisions, the “addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP” (see paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
The Panel finds the disputed domain names are confusingly similar to the Complainant’s registered trademark.
The first element of the UDRP is made out.
B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case. The Respondent features exact copies of the Complainant’s trademarks and sells counterfeits at websites under the disputed domain names, which cannot be the basis for the finding of any rights or legitimate interests on behalf of the Respondent.
Since the Complainant has made out a prima facie case that the Respondent has not rebutted, the Panel finds that the second element of the UDRP is made out.
C. Registered and Used in Bad Faith
The Panel also finds that the disputed domain names <catchinashop.com> and <cat-chinese.com> were registered in bad faith and are being used in bad faith.
The disputed domain names resolve to commercial websites that falsely suggest that these are related to the Complainant.
This case falls within paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
The third element of the UDRP is made out.
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 names <catchinashop.com> and <cat-chinese.com> be transferred to the Complainant.
Date: July 5, 2013