WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Caterpillar Inc. v. Digitalus and H. van Zuylen Materieel

Case No. D2011-2105

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 Digitalus and H. van Zuylen Materieel of Zuidbroek, Groningen, and 's-Hertogenbosch, Noord-Brabant, Netherlands.

2. The Domain Names and Registrar

The disputed domain names <catcompact.com> and <catverhuur.com> are registered with OnlineNic, Inc. d/b/a China-Channel.com

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2011. On December 2, 2011, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the disputed domain names. On December 5, 2011, OnlineNic, Inc. d/b/a China-Channel.com 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 December 8, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 28, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 29, 2011.

The Center appointed William A. Van Caenegem as the sole panelist in this matter on January 10, 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.

In an email of January 5, 2012 the Center notified the Parties that the disputed domain names were set to expire on January 25, 2012. By an email of January 9, 2012, the Registrar OnlineNic, Inc. d/b/a China-Channel.com indicated to the Center that it had renewed the disputed domain names under its own legal affairs account and intended to charge the renewal fee from the winning party pursuant to the Panel’s decision.

4. Factual Background

The Complainant is the world’s leading manufacturer of construction and mining equipment, diesel engines, gas engines, industrial gas turbines and diesel-electric locomotives. It is also a leading services provider through Caterpillar Financial Services, Caterpillar Logistics Services and Progress Rail Services.

The Complainant is the owner of more than 5800 trademark registrations for marks that contain CAT or CATERPILLAR in approximately 150 countries, inter alia United States Paten and Trademark Office (USPTO) registration No’s 564,272 (September 23, 1952); 770,639 (June 2, 1964); and 984,444 (May 21, 1974) for CAT in relation to motor trucks, dump-wagons, wheel-tractor dump wagon combinations and (structural) parts thereof, lift trucks, and engines, attachments and parts thereof. The Complainant also owns the USPTO registered trademark CAT THE RENTAL STORE, No. 2,209,700 (December 8, 1998) for retail rental store services in the field of construction equipment, mining equipment and generators.

The disputed domain names were created on January 25, 2006.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that it is publicly listed on the New York Stock Exchange under the symbol CAT. It services customers in more than 180 countries with more than 300 products and uses more than 500 locations worldwide, employing 104,490 employees and selling products through 188 dealers employing about 126,700 employees. The Complainant also operates the website “www.caterpillar.com”, created on March 17, 1995. It has prevailed in at least 42 proceedings under the UDRP.

The Complainant asserts that numerous previous UDRP panels have found that the Complainant has rights in the CAT trademark, based on its United States trademark registrations concerning that mark. Further the Complainant contends that the disputed domain names are confusingly similar to the CAT mark, because their overall impression is one of connection to the Complainant’s trademark. The addition of certain words such as in this case “compact” and “verhuur” (Dutch for rent) can exacerbate confusing similarity and the risk of confusion between the Complainant’s mark and the disputed domain names. The Complainant contends that the words “compact” and “verhuur” are each associated with the Complainant’s CAT trademark and therefore further enhance the confusing similarity at issue. The terms “compact” and “rent” are even included in some of the descriptions of goods and services relating to CAT trademark registrations. The Complainant contends that therefore the disputed domain names are confusingly similar to its CAT trademark.

The Complainant asserts that it has never assigned, granted licenses, sold, transferred or in any way authorized the Respondent to use or register the CAT trademark, which in itself can be sufficient to establish the second criterion of the Policy, as has been previously found by a number of panels under the Policy.

The Complainant further asserts that the Respondent has never used or made preparations to use the disputed domain names or any corresponding name in connection with a bona fide offering of goods or services. Instead the Respondent is using the disputed domain name <catverhuur.com> in connection with a website that advertises the rental and sale of construction machines; while it is not using the disputed domain name “catcompact.com” with an active website. The website to which the disputed domain name <catverhuur.com> resolves contains no indication that the construction machinery sold or rented is in fact the Complainant’s, and in any case it is clear that the website also sells or rents such machinery that originates with other parties. Therefore the Respondent has no rights or legitimate interests as a reseller. According to the criteria of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, a reseller must inter alia actually offer the Complainant’s goods, and not goods of other origin, and must accurately display the relationship between the registrant and the trademark holder.

In relation to the disputed domain name <catcompact.com> which does not resolve to an active website, the Complainant contends that numerous UDRP panels have found that passive holding of a domain name does not give rise to rights or legitimate interests. Nor has the Respondent, to the Complainant’s knowledge, ever been commonly known by either one of the disputed domain names or ever acquired trademark or service mark rights in them. Hence the Respondent cannot establish rights or legitimate interests in the disputed domain names. Since the Complainant has used the CAT mark for more than 100 years it is unlikely that the Respondent is commonly known by that mark.

Further in relation to registration and use in bad faith, the Complainant contends that the Respondent has never used the disputed domain names in connection with bona fide offering of goods or services. Rather the Respondent is using the disputed domain name <catverhuur.com> in connection with a website that offers competitive services relating to construction equipment emanating from other sources. This is not a bona fide offering and does not give rise to rights or legitimate interests. As for the disputed domain name <catcompact.com>, passive holding constitutes bad faith. According to the Complainant, this is especially true where the Respondent is also holding another disputed domain name which is used in an active manner as <catverhuur.com> is here. According to the Complainant the only explanation for the Respondent’s actions is to disrupt the Complainant’s relationship with its customers and attempt to attract Internet users for commercial gain, which both constitute evidence of bad faith. The Complainant cites various UDRP panel decisions in support.

Further the Complainant contends that the Respondent has also prevented the Complainant from reflecting its mark in a corresponding domain name and has engaged in a pattern of such conduct, by registering the two disputed domain names at issue here. A further indication of bad faith according to the Complainant is that the CAT trademark predates the registration of the disputed domain names by more than 100 years. It is inconceivable according to the Complainant that the Respondent registered the disputed domain names without knowledge of the Complainant’s activities and its name and trademark. Registration of a domain name containing a famous trademark to which the entity registering it has no relationship is itself an indication of bad faith, the Complainant concludes.

B. Respondent

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

6. Discussion and Findings

A. Preliminary Procedural issue: Consolidation of Proceedings

Consolidation of multiple registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate provided the complainant can demonstrate that the domain names or the websites to which they resolve are subject to common control, and the panel determines that consolidation would be procedurally efficient and fair and equitable to all parties (see Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 and Balenciaga v. Ni Hao, Shen Dan, Wu Dan, Zhu Qin, Yan Wei, WIPO Case No. D2011-1541). In the present case, both disputed domain names contain the Complainant’s CAT trademark, they were registered on the same date, January 25, 2006, and with the same Registrar, both disputed domain names contain the same e-mail address for the administrative contact and both disputed domain names contain the same technical and billing contact. The Panel accepts the Complainant’s reasons above as being indicative that the disputed domain names are subject to common control by the same person or company, and therefore allows the consolidation.

B. Identical or Confusingly Similar

The Complainant establishes that it has rights in the trademark CAT, in relation to construction equipment and the like, by supplying proof of relevant trade mark registrations, inter alia pertaining to the United States.

The disputed domain names are not identical to the Complainant’s trademark CAT. However, both disputed domain names contain the trademark CAT in its entirety, which appears as the initial and most striking part. The additional terms “verhuur” and “compact” are generic terms, the first in Dutch the second in English. The addition of generic terms has frequently been held to be insufficient to dispel a conclusion of confusing similarity. The combinations of terms at issue here have no separate, new or distinct meaning, and are not apt to distinguish the disputed domain names from the Complainant’s trademark. In fact, the term “verhuur” (the Dutch term for rental) further enhances the suggestion that there is some connection with the Complainant as consumers are generally familiar with the practice of renting out construction equipment and the like. The term “compact” suggests a compact form of equipment that may come in different sizes, again something consumers are generally familiar with in relation to the kind of equipment the Complainant is concerned with.

The Panel therefore holds that the disputed domain names <catverhuur.com> and <catcompact.com> are confusingly similar to the Complainant’s trademark CAT.

C. Rights or Legitimate Interests

The Respondent is not known by the disputed domain names or by any part thereof, and has not, according to the Complainant, been licensed or authorized by it to use its trademark CAT or register a domain name incorporating it.

The disputed domain name <catverhuur.com> resolves to a website where the Respondent may be selling or renting construction equipment of the Complainant, but in any case including equipment emanating from other parties. The Respondent is thus not operating the website as a legitimate reseller of the Complainant’s goods, as for that to be the case it must, in accordance with the Oki Data, supra, principles provide the actual goods or services of the Complainant, and no other goods or services, and accurately represent the nature of the connection between the Respondent and the Complainant. That is not done here.

The disputed domain name <catcompact.com> does not resolve to any website. Merely holding a domain name without putting it to any use, i.e. “passive holding”, does not give rise to rights or legitimate interests, as has been regularly found by other UDRP panels.

Nothing else before the Panel suggests that any rights or legitimate interests of the Respondent are at issue in this proceeding.

Therefore the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain names <catverhuur.com> and <catcompact.com>.

D. Registered and Used in Bad Faith

The Complainant’s trademarks CATERPILLAR and CAT are very well known around the world. They have been registered and used in relation to construction equipment for many years. Furthermore, one of the disputed domain names, which are both owned by the same Respondent, resolves to a website where construction equipment is offered for sale or rent. In the Panel’s view, it is highly unlikely that a person knowing about or being at all concerned with construction equipment should be unaware of the Complainant, its trademarks and the goodwill attaching to them.

Further, at the website to which the disputed domain name <catverhuur.com> resolves construction equipment is offered for sale or rent. To incorporate the Complainant’s trademark in the disputed domain name <catverhuur.com> which inherently suggests the renting of the Complainant’s branded equipment, and then to offer equipment also emanating from unrelated parties at the relevant website, amounts to use in bad faith of that disputed domain name. It is apparent that the Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating the misleading impression of a connection with the Complainant’s mark as to the source or affiliation of the website or of goods there offered for rent or sale.

The passive holding of a domain name incorporating a complainant’s trademark, where it is apparent from the circumstances that the respondent must have been aware of that trademark and its attendant goodwill, amounts to bad faith, as has been repeatedly found by various UDRP panels. In this case, the fact that the same Respondent also owns another domain name incorporating the Complainant’s trademark, and uses it in connection with a website which is operated in bad faith, as found above, further strengthens that conclusion.

Therefore the Panel holds that the disputed domain names <catverhuur.com> and <catcompact.com> were registered and are being used in bad faith.

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 names <catcompact.com> and <catverhuur.com> be transferred to the Complainant.

William A. Van Caenegem
Sole Panelist
Dated: January 23, 2012