WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Caterpillar, Inc. v. Whoisproxy.com Ltd. / Marcel Lommers

Case No. D2015-2073

1. The Parties

The Complainant is Caterpillar, Inc. of Peoria, Illinois, United States of America, represented by Hogan Lovells (Paris) LLP, France.

The Respondent is Whoisproxy.com Ltd. of Auckland, New Zealand / Marcel Lommers of Rotterdam, the Netherlands.

2. The Domain Name and Registrar

The disputed domain name <catpartsstore.com> is registered with Key-Systems GmbH dba domaindiscount24.com (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 16, 2015. On November 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 17, 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 the Complainant on November 19, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 24, 2015.

The Complaint was submitted in the English language. The language of the Registration Agreement for the disputed domain name is Dutch. On November 19, 2015, the Center sent a language of proceeding communication in both Dutch and English to the parties. On November 23, 2015, the Complainant submitted a request for English to be the language of proceeding. The Respondent did not reply to either the Center's communication or the Complainant's request.

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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on November 27, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on December 18, 2015.

The Center appointed Geert Glas as the sole panelist in this matter on December 28, 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

Based on the Complainant's assertions, supported by the documents enclosed as annexes to the Complaint, and undisputed by the Respondent because of its default, the Panel finds the following:

The Complainant is Caterpillar Inc., a company founded in 1925 and the world's leading manufacturer of heavy equipment. As of today, the Complainant operates in more than 500 locations worldwide in over 180 countries.

The Complainant is the owner of numerous trademark registrations in more than 150 jurisdictions throughout the world that consist of or include the terms "cat" or "caterpillar", including several in the Benelux. The Complainant's earliest CAT trademark registrations in Europe date back to 1949.

The Complainant is the registrant of numerous domain names, including <caterpillar.com> and <cat.com>, respectively registered in 1993 and 1995.

According to the Registrar's WhoIs database, the Respondent registered the disputed domain name <catpartsstore.com> (the "Domain Name") on September 6, 2014. According to the evidence submitted by the Complainant, the website to which the Domain Name leads is imitating without authorization the overall "look and feel" of the Complainant's official website "www.cat.com", including identical colour scheme and layout, numerous images of the Complainant's products, the Complainant's CAT trademark and logo and word for word text taken from the Complainant's official website. Moreover, the Respondent appears to be using the Domain Name to defraud some customers attempting to purchase CAT parts on the associated website, as shown by the evidence submitted by customers who complain that the CAT parts which they ordered on the website to which the Domain Name leads and paid for were never delivered.

According to the Complainant, the Respondent was also closely linked to another domain name infringing the CAT trademark, namely <catgenuineparts.com> which has been transferred to the Complainant pursuant to the decision in Caterpillar, Inc. v. Roy Weijden, WIPO Case No. D2014-1221. This link appears plausible in view of the following:

- The Respondent registered the Domain Name precisely the day after the decision Caterpillar, Inc. v. Roy Weijden, supra involving the domain name <catgenuineparts.com> was notified to the parties; and

- The domain name <catgenuineparts.com> and the Domain Name were registered using the same registrar and name servers.

5. Parties' Contentions

A. Complainant

The Complainant requests that the Domain Name be transferred to it on the following grounds:

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

The Complainant contends that the Domain Name is confusingly similar to the CAT trademarks. The Complainant contends in this respect that the Domain Name incorporates the CAT trademark in its entirety. The Domain Name only differs from the Complainant's CAT trademark by the addition of the terms "parts store" which is insufficient to distinguish the Domain Name from the Complainant's trademark, as the CAT trademark is clearly the dominant component of the Domain Name.

Furthermore, the addition of the terms "parts store" in the Domain Name does nothing to alleviate any confusing similarity, and in fact may increase confusing similarity. Indeed, the addition of the terms "parts store" actually reinforces the confusing similarity between the Complainant's CAT trademark and the Domain Name, as the Complainant operates its CAT parts website at "www.catparts.com".

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name, since the Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the CAT or CATERPILLAR trademarks in any manner.

The Complainant further contends that the Respondent has failed to create a bona fide offering of goods or services by (i) failing to accurately disclose its relationship with the Complainant on its website and (ii) most likely setting up a fraudulent website mirroring the Complainant's official website in order to deceive customers into purchasing CAT products that were never delivered, as evidenced by complaints submitted by customers on different forums online.

In addition the Complainant contends that the Respondent has never been commonly known by the Domain Name and has never acquired any trademark or service mark rights in the Domain Name, and that the Respondent's actions are clearly commercial as the Respondent uses the Domain Name in connection with a website purportedly offering CAT parts for sale.

(iii) The Domain Name was registered and used in bad faith

The Complainant contends that it is highly unlikely that the Respondent was not aware of the Complainant's rights in the CAT and CATERPILLAR trademarks at the time of the Domain Name registration in 2014 given that those trademarks have been continuously and extensively used for more than 50 years and have acquired considerable goodwill and renown worldwide.

The Complainant further contends that the fact that the Respondent deliberately chose to register the term "cat" in conjunction with the terms "parts store", which refer precisely to the Complainant's core products, is further evidence that the Respondent had knowledge of the Complainant's rights at the time of registration of the Domain Name. Furthermore, the Respondent's subsequent use of the Domain Name to point to a website purportedly offering the Complainant's products for sale and imitating the "look and feel" of the Complainant's official websites leaves, according to the Complainant, no doubt as to this fact.

Moreover, the Complainant contends that (i) the Respondent's failure to respond to the Complainant's cease and desist letter, (ii) the fact that the Respondent registered the Domain Name through a privacy shield service to hide its identity and contact addresses and (iii) the fact that the Respondent registered the Domain Name precisely on the day following notification of the decision Caterpillar, Inc. v. Roy Weijden, supra, in which the Respondent was most likely involved, indicates registration and use in bad faith.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant proves each and all of the following three elements in order to be successful in these proceedings:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Language of the Proceeding

Under paragraph 11(a) of the Rules, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise. In the present case, the language of the Registration Agreement is Dutch.

The Complainant submitted its Complaint in English and requested the language of the proceeding be English. The Respondent has not submitted any comments in this regard despite having been given the opportunity to do so. Taking into account the Respondent's default and all of the other relevant circumstances of the case, the Panel concludes that, in accordance with paragraph 11(a) of the Rules, it is appropriate that the language of the proceeding be English.

Therefore, the Panel has decided to accept the Complainant's filing in English and issue a decision in English.

B. Identical or Confusingly Similar

The Complainant has demonstrated that it is the owner of numerous registered trademarks which consists of the words "cat" and "caterpillar".

The Domain Name incorporates the Complainant's CAT trademark in its entirety and differs from the CAT trademark only by the addition of the descriptive terms "parts store". Several UDRP panels have held that wholly incorporating a complainant's registered trademark in a domain name may be sufficient to establish confusing similarity for the purposes of the Policy, particularly where the trademark is highly recognizable and famous (see, e.g., AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; and The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113). In addition, it is well-established that adding a generic or descriptive term to a registered trademark does not prevent the domain name from being confusingly similar to that registered trademark (see, e.g., Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; and Lilly ICOS LLC v. John Hopking / Neo net Ltd., WIPO Case No. D2005-0694).

In the case at hand, the Panel finds that adding the generic words "parts store" to the CAT trademark does not render the Domain Name less confusingly similar to the CAT trademark (see, e.g., LEGO Juris A/S v. Thomas Plaut, WIPO Case No. D2012-1822; L'Oréal, Lancôme Parfums Et Beauté & Cie v. Jack Yang, WIPO Case No. D2011-1627; Fry's Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435; and LEGO Juris A/S v. SAKCHAI SRION, WIPO Case No. D2012-0604). As CAT constitutes the dominant part of the Domain Name, there is a considerable risk that the public will be under the impression that the Respondent's Domain Name is owned by the Complainant or will think that there is some kind of commercial relationship with the Complainant. Moreover, the words "parts store" are
non-distinctive terms that are commonly used in a commercial context. The presence of the descriptive words "parts store" in the Domain Name even increases the likelihood of confusion to consumers because the Complainant does sell the CAT parts separately and the words "parts store" are descriptive of the services offered by the Complainant on its CAT parts website at "www.catparts.com" (see Randstad Holding nv v. Pinaki Kar, WIPO Case No. D2013-1796).

Furthermore, the addition of the generic Top-Level Domain ("gTLD") ".com" is not an element of distinctiveness that is generally taken into consideration when evaluating the identity or confusing similarity between a trademark and a domain name, because gTLDs are a required element of every domain name (see, e.g., Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; and Qantas Airways Limited v. Minh Huynh, WIPO Case No. D2008-1382).

Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant's above mentioned trademarks. The Panel finds that the Complainant has established the first element under paragraph 4(a) of the Policy.

C. Rights or Legitimate Interests

Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, the consensus view is that, once the complainant has made a prima facie case that the respondent lacks rights or legitimate interests, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy (see, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270; Dow Jones & Company, Inc., (First Complainant) and Dow Jones LP (Second Complainant) v. The Hephzibah Intro-Net Project Limited (Respondent), WIPO Case No. D2000-0704; and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1).

The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name.

Indeed, based on the evidence submitted by the Complainant, the Panel finds that there is no evidence that the Respondent, who was moreover hiding behind a privacy shield, has been commonly known by the Domain Name (see, e.g., Fry's Electronics, Inc v. Whois ID Theft Protection, supra).

Furthermore, the Complainant has provided evidence that the Domain Name leads to a website purportedly offering genuine CAT parts for sale and imitating the overall "look and feel" of the Complainant's official website at "www.cat.com" including identical colour scheme and layout. It also displays numerous images of the Complainant's products and it prominently reproduces the Complainant's CAT trademark and logo. In addition, the website to which the Domain Name is pointing reproduces without authorisation images and word for word text taken from the Complainant's official website. Several UDRP panels have held that when the content of the respondent's website appears designed to reinforce the Internet user's impression that the domain name belongs to the complainant or the website is presented as if it is an official website of the Complainant, such use cannot constitute a bona fide offering of goods or services (see, e.g., Swarovski Aktiengesellschaft v. Luc Sun, WIPO Case No. D2012-0071). Also in Oki Data Americas, Inc. v. ASD, Inc., supra, the panel stated that no fair use of the domain name can possibly be invoked by a reseller or distributor of the trademarked goods if the respondent fails to accurately and prominently disclose its relationship with the complainant, thus generating a clear likelihood of confusion for Internet users.

In view of the above, the Panel finds that the images, statements, logos and trademarks taken from the official website of the Complainant and the layout of the Respondent's website corresponding to the Domain Name, contribute to the creation of a likelihood of confusion. The Panel finds that the Respondent has failed to provide evidence that it has made a legitimate noncommercial or fair use of the Domain Name or has used the Domain Name in connection with a bona fide offering of goods and services.

Moreover, the Complainant has argued that the Respondent, who is not a licensee or an authorized agent of the Complainant, offers for sale CAT parts on its website corresponding to the Domain Name that are most likely not being delivered, an illegitimate activity that is undoubtedly commercial and non bona fide in nature (see, e.g., Guccio Gucci S.p.A. v. Hainei Zhou, WIPO Case No. D2011-1017). Indications of the presumed fact that the Respondent is using the Domain Name to defraud customers attempting to purchase CAT parts on the associated website can be found in the several customer complaints submitted on online forums dedicated to online frauds, as evidenced by the Complainant. Moreover, the content and look and feel of the Respondent's website (including the use of images and text taken from the official website of the Complainant) is such that a conscious effort is made to create the misleading impression that this website is the official website of the Complainant. The Panel is of the opinion that those circumstances do indeed constitute a prima facie indication of the attempt by the Respondent to defraud customers by the Respondent on the website corresponding to the Domain Name.

Finally, the Respondent has failed to respond to the Complaint and has therefore failed to provide any evidence of its rights or legitimate interests in the Domain Name (see, e.g., The Great Eastern Life Assurance Company Limited v. Unasi Inc., WIPO Case No. D2005-1218; and Stanworth Development Limited v. Mike Morgan (290436), WIPO Case No. D2006-0230). This is even more relevant in the case at hand. Indeed, by failing to submit a reply, the Respondent has opted not to address the serious allegation that the Respondent appears to be using the Domain Name to defraud customers attempting to purchase CAT parts on the associated website.

Based on the evidence provided by the Complainant, the Panel finds that the second element under paragraph 4(a) of the Policy has been established.

D. Registered and Used in Bad Faith

The Panel turns to the question of whether the Respondent's Domain Name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy describes some circumstances which, if found to exist, will be evidence of the registration and use of a domain name in bad faith. They are presented in the alternative and consist of a non-exhaustive list of indicia of bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on your website or location.

(i) The Domain Name has been registered in bad faith

Given that the CAT and CATERPILLAR trademarks are well-known and widely used, the Panel is of the view that it is highly unlikely that the Respondent did not know of the Complainant's trademarks at the time the Domain Name was registered. Indeed, according to the Registrar's WhoIs database, the Respondent registered the Domain Name, <catpartsstore.com>, on September 6, 2014, almost 65 years after the Complainant's first CAT trademark registration in Europe.

Prior UDRP panels have ruled that bad faith is established where a complainant's trademark has been shown to be well-known or in wide use at the time of registering a domain name (see, e.g., The Gap, Inc. v. Deng Youqian, supra; Caesar World, Inc. v. Forum LLC., WIPO Case No. D2005-0517; and Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435).

While the above suffices to conclude that the Domain Name has been registered in bad faith, it should be noted that a link seems to exist between this matter and a prior domain name dispute involving the domain name <catgenuineparts.com> which has been transferred to the Complainant pursuant to the decision in Caterpillar, Inc. v. Roy Weijden, supra. This link appears plausible in view of the following:

- The domain name <catgenuineparts.com> and the Domain Name were registered using the same registrar and name servers.

Consequently, the Panel finds that the Respondent registered the Domain Name in bad faith.

(ii) The Domain Name has been used in bad faith

Given the undisputed indications that the Respondent is using the Domain Name to defraud customers attempting to purchase CAT parts on the associated website and the fact that official images and statements from the Complainant's main website are published on the Respondent's website corresponding to the Domain Name, the Panel is of the view that such conduct demonstrates the Respondent's intention to use the Domain Name to create a likelihood of confusion with the Complainant's trademark and website with the view to attracting Internet users to the Respondent's website and to setting up a fraudulent offer for sale of the CAT parts promoted thereon.

Several UDRP panels have ruled that bad faith is established where a respondent intentionally attracts Internet users for a commercial gain to its own website by creating a likelihood of confusion with the complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the respondent's website (see, e.g., Hoffmann-La Roche Inc. v. Doroven, WIPO Case No. D2010-1196; Kelley Blue Book Company, Inc. v. Nikolay Golovin aka Buy-movie.net, WIPO Case No. D2005-0837). Likewise, previous panels have ruled that redirecting a domain name to a website generating the impression of being an official online store and not actually be offering the goods and services at issuecannot be found as a bona fide offering of goods or services and therefore constitutes an indication of the respondent's bad faith (see, e.g., Oki Data Americas, Inc. v. ASD, Inc., supra).

Moreover, in the case at hand, the Complainant contends that Respondent is using the Domain Name to defraud customers attempting to purchase CAT parts on the associated website. It does indeed appear from several complaints posted by customers on online forums dedicated to online frauds that these customers ordered and paid for CAT parts on the website to which the Domain Name leads but never received these goods. For these reasons, the Panel is of the opinion that the circumstances put forward by the Complainant do indeed constitute prima facie indications of the fraudulent offer of CAT parts by the Respondent on the website corresponding to the Domain Name.

Moreover, the Respondent's use of a privacy shield and the Respondent's failure to respond to the Complainant's contentions and as a result to provide any evidence whatsoever of good faith registration and use of the Domain Name are additional indications of bad faith (see, e.g., News Group Newspapers Limited and News Network Limited v. Momm Amed la, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598; and America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460). This is even more relevant in the case at hand. Indeed, by failing to submit a reply, the Respondent has opted not to address the serious allegation that the Respondent appears to be using the Domain Name to defraud customers attempting to purchase CAT parts on the associated website.

In light of the above, the Panel concludes that the Domain Name was registered and is being used in bad faith.

Accordingly, the Panel finds that the third element under paragraph 4(a) of the Policy has been established.

7. Decision

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, <catpartsstore.com>, be transferred to the Complainant.

Geert Glas
Sole Panelist
Date: January 11, 2016