WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Caterpillar, Inc. v. Roy Weijden

Case No. D2014-1221

1. The Parties

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

The Respondent is Roy Weijden of Veldhoven, the Netherlands.

2. The Domain Name and Registrar

The disputed domain name <catgenuineparts.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 July 15, 2014. On July 16, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 17, 2014, 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 July 17, 2014, the Center transmitted an email communication to the parties in both Dutch and English regarding the language of proceedings. On the same day, the Complainant confirmed that the language of the proceedings should be English for the reasons stated in the Complaint and that the Complainant had nothing further to add in relation to its request. Also on July 17, 2014, the Respondent sent a short email communication to the Center.

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 July 24, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2014. The Respondent sent an email communication to the Center on July 24, 2014. The Respondent did not submit any formal response. Accordingly, the Center notified the parties of the commencement of the panel appointment process on August 14, 2014.

The Center appointed Benoit Van Asbroeck as the sole panelist in this matter on August 18, 2014. 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 Caterpillar Inc., the world’s leading manufacturer of heavy equipment, including construction and mining equipment, diesel and gas engines, industrial gas turbines and diesel electric locomotives. It was created in 1925 and has since experienced constant growth.

The Complainant submitted evidence that it is the owner of numerous national, European and international trademarks for the signs CATERPILLAR and CAT, both in words and figurative forms, in connection with a range of goods and services, including machine parts and spares. More particularly, the CAT brand, registered since the 1950’s in Europe, is the cornerstone of the Complainant’s brand portfolio.

The Complainant further submitted evidence that it has registered numerous trademarks consisting of or containing the terms CAT or CATERPILLAR in more than 150 jurisdictions throughout the world, including in the Benelux. To date, the CAT trademark is protected through 200 national marks in the Member States of the European Union and 16 Community trademarks granting protection for CAT throughout the whole of the European Union.

The Complainant has a global network of independent dealers of CAT products and services, including new and used CAT parts.

The Complainant has made substantial investments through the years to develop a strong presence online. In this respect, the Complainant operates numerous websites, including the “www.caterpillar.com” and “www.cat.com” websites, and is very active on various social media platforms.

The disputed domain name <catgenuineparts.com> was registered on January 9, 2014.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case, as follows:

(a) The disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant is and has been for many years the right holder of the mark CAT (the “Trademark”) in numerous countries worldwide. The Trademark is used in connection with a range of goods and services, including machine parts and spares.

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademark CAT as it incorporates the term “cat” in its entirety.

The Complainant further contends that the addition of the descriptive phrase “genuine parts” in the disputed domain name is insufficient to distinguish the disputed domain from the Complainant’s Trademark. In addition, the Complainant contends that the terms “genuine parts” reinforce the confusing similarity as they refer to the core products for which the Complainant’s Trademark has been registered.

Finally, the Complainant submits that the top-level suffix “.com” in the disputed domain name has no impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant when determining the confusing similarity.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Complainant argues that the Respondent has no trademark rights or trade names corresponding to the disputed domain name and that it is not using CAT in any way that would give it any legitimate rights.

The Complainant has trademark rights for CAT and no license or authorization was granted to the Respondent to use the Trademark in the disputed domain name or in any other manner.

Further, the Complainant contends that the Respondent is unable to rely on any of the circumstances set out in the Policy, paragraph 4(c) in order to demonstrate rights or legitimate interests in the disputed domain name. More particularly, the Complainant submits that the Respondent (i) cannot assert that his use of the disputed domain name is in connection with a bona fide offering of goods and services; (ii) is not commonly known by the disputed domain name; and (iii) cannot assert that he has made or is currently making any legitimate noncommercial or fair use of the disputed domain name.

The Complainant submits that the disputed domain name was registered and used in bad faith by the Respondent.

Firstly, the Complainant submits that registration in bad faith is established on the basis of the fact that the Complainant’s Trademark, registered long before the registration of the disputed domain name, has acquired considerable goodwill and renown throughout the world. The Complainant therefore contends that it is inconceivable that the Respondent was not aware of the Complainant’s rights in the name CAT when registering the disputed domain name. The Complainant further contends that the Respondent registered the disputed domain name with the intention of creating a false association with the Complainant, with the intention of profiting from the considerable goodwill and reputation attached to the Trademark.

Secondly, the Complainant submits that the Respondent was using the disputed domain name to intentionally attract, for commercial gain, Internet users to the disputed domain name by creating a likelihood of confusion with the Trademark as to the source, sponsorship, affiliation or endorsement of its website. Also, the Complainant submits that it operates the “www.catparts.com” website since 1997. The mere addition in the disputed domain name of the generic term “genuine” is of such nature as to confuse Internet users and make them believe that they are being directed to one of the Complainant’s official websites.

The Complainant further puts forward several elements showing use in bad faith of the disputed domain name by the Respondent, and in particular the fact that (i) the website to which the disputed domain name was pointing prior to the Complainant’s cease and desist letter has the same look and feel as the Complainant’s websites; (ii) the website to which the disputed domain name was and is pointing does not include any disclaimer or any other indication that the Respondent intended to distinguish or separate its services from the Complainant’s; (iii) the Respondent offered on several occasions to sell the disputed domain name for high amounts (i.e., EUR 100,000); and (iv) the current website to which the disputed domain name is pointing offers such domain name for sale, which constitutes a passive holding of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

A. Language of the proceeding

In accordance with the Rules, paragraph 11(a), “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, having regard to the circumstances of the administrative proceeding”.

In the notification of July 17, 2014, the Center requested the Complainant to provide, at least one of the following:

- satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceedings should be in English; or

- the Complaint translated into Dutch; or

- a request for English to be the language of the administrative proceedings.

The Center also notified the Parties that the power to decide the language of the proceedings lies with the panel to be appointed.

The Complainant requested in the Complaint for English to be the language of the proceeding. In support of its request, the Complainant evidences that (i) the Registration Agreement is in English, (ii) the disputed domain name is registered under the generic extension “.com”, (iii) the disputed domain name includes the English terms “genuine” and “parts”, (iv) the website to which the disputed domain name was pointing is in the English language, (v) the prior correspondence between the Respondent and the Complainant has been in English, and (vi) the Respondent is a national of and resides in the Netherlands, a country with a population fluent in English.

In adopting a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.3; Biotechnology and Biological Sciences Research Council of Swindon v. Kim Jung Hak, WIPO Case No. D2009-1583).

In the present dispute, this Panel finds that there is sufficient evidence to enable the Panel to conclude that the Respondent has the proficiency in the English language to understand the contents of the Complaint and the annexes.

In light of the foregoing, this Panel concludes that it will accept the Complaint as filed in English and issue a decision in English.

B. Substantive Elements of the Policy

Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Notwithstanding a respondent’s default, the complainant must nevertheless still establish each of the three elements required by paragraph 4(a) of the Policy (see WIPO Overview 2.0, paragraph 2.1 and paragraph 4.6, and the relevant decisions cited therein). Nonetheless, the Panel shall decide this administrative proceeding on the basis of the Complainant’s undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and, in the absence of exceptional circumstances, draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.

As a result, asserted facts that are not unreasonable will be taken as true by this Panel.

Finally, in accordance with paragraph 4(a) of the Policy, in order to decide on the remedy sought by the Complainant, this Panel will examine whether each the following three elements are present:

(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the 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.

Consequently, this Panel shall further analyse the eventual concurrence of these three grounds in the present case.

C. Identical or Confusingly Similar

The Complainant is required to establish the two following elements: (1) that it has trademark rights, and, if so, (2) that the disputed domain name is identical or confusingly similar to its trademark(s).

First of all, this Panel finds that the Complainant has clearly evidenced that it has registered trademark rights to CAT since well before the disputed domain name was registered.

Also, the Complainant has sufficiently demonstrated and evidenced that it has a lengthy use of its Trademark for its commercial activities, and in particular machine parts and spares.

Secondly, the disputed domain name fully incorporates the Complainant’s distinctive and widely known CAT trademark in which the Complainant has exclusive rights. This Panel finds, similarly to other UDRP panels, that it is established that where the domain name incorporates a complainant’s registered trademark, as the dominant element, this may be sufficient to establish that the domain name is identical or confusingly similar for the purposes of the Policy (Nokia Corporation v. Jameela Seif, WIPO Case No. D2009-1665).

Thirdly, this Panel finds on the basis of previous UDRP decisions that the mere addition of generic terms is, in general, insufficient to make a disputed domain name distinctive such that it is not confusingly similar to the complainant’s registered trademark. (See Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488; Moncler S.r.l. v. xie guoren, WIPO Case No. D2010-2161; Allianz SE v. Antonio Porchia, WIPO Case No. D2010-0694; Sanofi-Aventis, Aventis Inc., Aventisub II Inc. v. Yur Bar, WIPO Case No. D2010-0663). Consequently, this Panel finds that the mere addition of the descriptive or generic terms “genuine parts” does not distinguish the disputed domain name from the Trademark, nor dispel the risk of confusing similarity. Such conclusion is further reinforced by the fact that the generic terms “genuine parts” refer to the core products for which the Trademark has been registered by the Complainant.

Fourthly, this Panel finds, similarly to other UDRP panels, that the addition of the generic Top-Level Domain (gTLD) “.com” to the disputed domain name does not constitute an element so as to avoid confusing similarity for purposes of the Policy.

On the basis of the foregoing findings, and according to paragraph 4(a)(i) of the Policy, this Panel finds and concludes that the disputed domain name is confusingly similar to the Complainant’s CAT trademark.

D. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. Paragraph 4(c) of the Policy reads:

“When you receive a complaint, you should refer to paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

This Panel finds in light of the Complainant’s asserted facts, that the Respondent has no trademark rights in the terms CAT and CATERPILLAR in connection with heavy machine parts. Furthermore, the Respondent has no license, permission or authorization of any kind to use the Trademark has been granted to the Respondent by the Complainant. Thus, the Respondent has no own rights in CAT.

Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a right or legitimate interest in the domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);

- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and

- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

This Panel finds, similarly to other UDRP panels, that the Oki Data criteria are appropriate even when the respondent is not an authorised reseller, such as it is the case in this proceeding (National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc., WIPO Case No. D2007-1524).

Examination of the website operating under the disputed domain name, as it appeared before the Complainant initiated this proceeding and as properly evidenced by the Complainant, shows that it does not fulfil the Oki Data criteria, and in particular the third criterion.

Indeed, the Respondent does not disclose a relationship it would have with the Complainant. More particularly, this Panel finds that the Respondent has never included a disclaimer or any other indication on the website to which the disputed domain name points indicating that the Respondent is not affiliated to or sponsored by the Complainant. In addition, this Panel finds that the website at the disputed domain name, as clearly evidenced by the Complainant, displayed the Complainant’s CAT and CATERPILLAR trademarks and had the same look and feel as the Complainant’s websites.

Moreover, this Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has any registered trademark or trade name corresponding to the disputed domain name, nor has it been commonly known by the disputed domain name.

This Panel further finds that no evidence has been presented that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. In fact, this Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the disputed domain name, and finds after reviewing the website as evidenced by the Complainant, that the Respondent had or should have had full knowledge of the Trademark and that its only intention was to deprive the Complainant from a strategic domain name, mislead Internet users to one or more other commercial site and thus generate traffic and income by free riding on the good reputation of the Complainant and its Trademark.

For all the foregoing reasons, this Panel finds the Respondent’s use of the disputed domain name cannot be considered to be in accordance with a bona fide offering of goods or services. Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

E. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by this Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy reads:

“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

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

(iv) 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”.

Each of the four circumstances in paragraph 4(b) of the Policy, if found, is an instance of “registration and use of a domain name in bad faith.”

This Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s registration of the disputed domain name. In this respect, this Panel believes, after reviewing the website and its content as evidenced by the Complainant, that the Respondent must have known and was aware of the rights in the prior trademark CAT and the associated products and services at the time of the registration of the disputed domain name.

Such conclusion is further evidenced by the fact that the Respondent originally used the CAT and CATERPILLAR logotypes on the site at the disputed domain name.

This Panel further finds that the Respondent registered the disputed domain name with the intention of creating a false association with the Complainant, with the intention of profiting from the Complainant’s goodwill and reputation attached to the Trademark.

Furthermore, this Panel has considered the Complainant’s assertions and evidence with regard to the Respondent’s use of the disputed domain name.

In this respect, this Panel believes after reviewing the site at the disputed domain name and its content as evidenced by the Complainant that the Respondent initially registered and used the disputed domain name to sell products of the Complainant and to attract, for commercial gain, Internet users to the site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its site. This Panel finds indeed that the Respondent was using the disputed domain to confuse Internet users searching for the Complainant by incorporating the Trademark in its entirety in conjunction with the generic and descriptive terms “genuine parts”, referring to the Complainant’s products and services.

Such conclusion is further reinforced by the fact that the Complainant has registered, amongst other domain names, <catparts.com>. Accordingly, the mere addition by the Respond of the term “genuine” is likely to confuse Internet users and make them believe that they are being directed to one of the Complainant’s official websites.

Similarly, the confusion caused by the disputed domain name is reinforced by the nature of the website to which the disputed domain name was pointing to before the Complainant’s cease and desist letter sent to the Respondent. Such prior version of the website was designed with the same look and feel as the Complainant’s official websites, incorporating certain visuals and texts owned by the Complainant (see in that sense Burlington Networks Inc. v. Igor Sashin, WIPO Case No. D2005-1036).

Furthermore, this Panel finds that the website at the disputed domain name did not include any disclaimers or other indication that the Respondent intended to distinguish or separate its services from those of the Complainant (see LEGO Juris A/S v. Simonovi Eood, WIPO Case No. D2012-0863).

Also, this Panel finds that the Respondent offered the disputed domain name for sale at a price (EUR 100,000) that substantially exceeds the Respondent’s documented out-of-pocket costs. This Panel therefore concludes that the disputed domain name was registered and is being used for the purpose of commercial sale (see Wal-Mart Stores, Inc. v. Brad Tauer, WIPO Case No. D2000-1076; Intesa Sampaolo S.p.A. and Cassa di Risparmio di Terni e Narni S.p.A. v. Carit Inc., WIPO Case No. D2010-0338; PHD Group Pty Ltd, Barrett Property Group Pty Ltd., Barrett Property Group Western Region Pty Ltd., BPS Group Pty Ltd., BPG Access Pty Ltd., RSS Property Holdings Pty Ltd. V. Abedellatif Shatila, WIPO Case No. D2010-0812).

In light of the foregoing, this Panel finds that the disputed domain name was registered and is being used by the Respondent in bad faith under the Policy.

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 <catgenuineparts.com> be transferred to the Complainant.

Benoit Van Asbroeck
Sole Panelist
Date: September 1, 2014