WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Caterpillar Inc. v. Ryan G Foo - PPA Media Services / Domain Admin / Whois Privacy Corp.
Case No. D2015-1390
1. The Parties
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 Ryan G Foo - PPA Media Services of Santiago, Chile / Domain Admin / Whois Privacy Corp., Nassau, New Providence, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <catatworkcat.com> is registered with TLD Registrar Solutions Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2015. On August 7, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 18, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 18, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on the same date.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 19, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 9, 2015.
The Center appointed Eduardo Machado as the sole panelist in this matter on September 24, 2015. 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, Caterpillar Inc., is the world’s leading manufacturer of construction and mining equipment, diesel and natural gas engines, industrial gas turbines and diesel – electric locomotives. The Complainant operates principally in three segments which are Construction Industries, Resource Industries and Energy and Transportation. Caterpillar is a company listed on the New York Stock Exchange under the symbol CAT. The company serves customers in 182 countries around the globe with more than 3 million units of its products at work around the world, and two-thirds of Complainant’s sales and revenues are from outside the United States.
The Complainant obtained registration for the trademark CAT on September 23, 1952, and is the owner of the domain name <cat.com>, which was created on March 25, 1993. As well, Complainant is the owner of the domain name <catatwork.com>, because of a decision under the Policy in its favor. The Complainant operates an internal password-protected private network at <catatwork.cat.com>, known as “Cat@work”, which is used by its business units including Human Resources, Compensation and Benefits, and Corporate Affairs to provide information in 15 different languages to all the Complainant’s employees worldwide.
Complainant has prevailed in more than 60 previous proceedings under the Policy, involving the CAT trademark.
The disputed domain name was registered on June 12, 2008, and is currently being used in connection with a monetized parking page.
5. Parties’ Contentions
Basically, Complainant alleges that the disputed domain name is confusingly similar to its CAT trademarks. It notes that the relevant comparison is in the second-level portion of the disputed domain name, and that the CAT trademark is being used twice in the disputed domain name. Complainant argues that the inclusion of the CAT trademark twice does nothing to alleviate any confusing similarity and may even increase the confusing similarity.
Complainant affirms that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant indicates that Respondent is not a licensee of Complainant’s marks and has not otherwise obtained authorization to use its marks.
Complainant argues that Respondent is not using the disputed domain name as part of a bona fide offering of goods or services, or for a legitimate non-commercial use. The disputed domain name attracts Internet users to a website, and does so for commercial gain, by including commercial links for third-party websites, even links for unrelated services.
Furthermore, Complainant states that Respondent is clearly holding the disputed domain name willfully, in bad faith, and in complete disregard of Complainant’s exclusive right over the CAT trademarks.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The burden of proving these elements is on the Complainant.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is indeed confusingly similar to Complainant’s marks and domain names. The Panel also finds that the mere inclusion of the CAT trademark twice is not enough to distinguish the disputed domain name from one that may be legitimately associated with Complainant and to escape a finding of confusing similarity.
The Panel notes that a previous panel under the Policy found that the domain name <catatwork.com> was confusingly similar to the CAT Trademark. See Caterpillar Inc. and Perkins Holdings Limited v. Ugur Iri, Izmir Web Tasarim and Cuma Ali Iri, Yali Tasarim Mantolama San.Tic., WIPO Case No. D2014-1815. The Panel finds that the only relevant difference between this case (Caterpillar Inc. and Perkins Holdings Limited v. Ugur Iri, Izmir Web Tasarim and Cuma Ali Iri, Yali Tasarim Mantolama San.Tic., Supra) and the disputed domain name in this Complaint is that the CAT trademark is being reproduced not once but twice.
The Panel, therefore, concludes that Complainant has established the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Complainant has alleged that Respondent has no rights or legitimate interests with respect to the disputed domain name.
With respect to paragraph 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services.
With respect to paragraph 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the disputed domain name.
With respect to paragraph 4(c)(iii) of the Policy, Respondent has not made or is not making a legitimate noncommercial or fair use of the disputed domain name.
Considering the fact that Respondent has chosen not to file a Response to the Complaint, this Panel finds that there is nothing to suggest that Respondent has or might have rights or legitimate interests in respect of the disputed domain name. In fact, previous UDRP decisions have found it sufficient for a complainant to make a prima facie showing of its assertion in the event of a respondent’s default.
In view of the above, the Panel finds no indication of any circumstances that would demonstrate Respondent’s rights or legitimate interests in the disputed domain name.
Therefore, the Panel finds that Complainant has established the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent has intentionally registered the disputed domain name, which is confusingly similar to Complainant’s marks and domain names and intentionally attempted to attract Internet users for commercial gain. Based on all the above facts, it is highly unlikely that Respondent was not aware of Complainant’s trademark rights when the disputed domain name was registered.
Moreover, the Panel notes that the allegations of bad faith made by Complainant were not contested, as Respondent did not reply to the Complaint. Examining the evidence provided by the Complainant, it is confirmed that its trademarks have been in use long before the disputed domain name was registered, including in Complainant’s own domain names. For such reasons, the Panel finds that Respondent must have been aware of Complainant’s trademark when it registered the disputed domain name.
In Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol, WIPO Case No. D2001-0489, the Panel states that “The Respondents’ bad faith also is established under paragraph 4(b)(iv) of the Policy. The Respondents use misleading domain names to redirect to numerous third-party sites unwitting Internet users who try to reach one of the Complainant’s websites. Some of these websites compete with the Complainant in the offering of, for example, games and music. This intentional effort to attract users to non-Disney websites for commercial gain depends upon the Respondents’ creation of consumer confusion. Paragraph 4(b)(iv) expressly recognizes this type of conduct as bad faith. ”
To the Panel, there are no facts set out in the available record which could possibly justify the registration of the disputed domain name by Respondent.
In view of the above, the Panel concludes that Respondent has registered and is using the disputed domain name in bad faith.
Therefore, the Panel finds that Complainant has established the third element of paragraph 4(a) of the Policy.
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 <catatworkcat.com> be transferred to Complainant.
Date: October 8, 2015