Don’t use a brand’s fame to sell competitive products! :DomainGang

Caterpillar Inc. v. Justin Being / CAT-Tracks Equipment Solution Inc

Claim Number: FA2107001953822

PARTIES

Complainant is Caterpillar Inc. (“Complainant”), represented by Stephanie H. Bald of Kelly IP, LLP, District of Columbia, USA. Respondent is Justin Being / CAT-Tracks Equipment Solution Inc (“Respondent”), Illinois, USA.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is (“Domain Name”), registered with Tucows Domains Inc.

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

Nicholas J.T. Smith as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on July 2, 2021; the Forum received payment on July 2, 2021.

 

On July 6, 2021, Tucows Domains Inc. confirmed by e-mail to the Forum that the domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On July 8, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 28, 2021 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@cat-tracks.com. Also on July 8, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

Having received no formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.

 

On August 3, 2021, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent” through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a sufficient response from Respondent.

RELIEF SOUGHT

Complainant requests that the Domain Name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Caterpillar Inc., is the world’s largest manufacturer of construction and mining equipment, diesel and natural gas engines, industrial gas turbines, diesel-electric locomotives, and related parts, such as tracks, undercarriage parts, tires, and attachments. Complainant maintains registration of its CAT mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 564,272, registered September 23, 1952). The Domain Name, , is identical or confusingly similar to Complainant’s mark because it incorporates Complainant’s CAT mark while adding in the descriptive term “tracks” and the “.com” generic top-level domain (“gTLD”) to form the domain name.

 

Respondent does not have any rights or legitimate interests in the domain name because Respondent is not commonly known by the Domain Name, nor has Respondent been authorized to use Complainant’s CAT mark. Respondent is not using the Domain Name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent is using the Domain Name to pass off as Complainant, or an authorized dealer, selling products that compete with Complainant and products falsely labeled with Complainant’s marks.

 

Respondent registered and uses the Domain Name in bad faith because Respondent’s use of the domain name creates confusion amongst users as to Complainant’s affiliation with the Respondent for Respondent’s commercial gain (as Respondent sells competing products). Additionally, Respondent acted with actual knowledge of Complainant’s rights in the CAT mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding however sent three e-mails to the Forum on July 10, July 13, and August 4, 2021 respectively. The relevant portions of the e-mails are set out verbatim below.

 

July 10, 2021

What is this?

 

July 13, 2021

Did they want to buy it? Make us an offer

 

August 4, 2021

Most the info is incorrect on the correspondence.

 

I also asked if the want to buy the domain name? They have til this Friday August 6th to make a decision. Otherwise there nothing to talk about

 

I am really not sure what everyone is seeing. We own the name and the domain name currently. I have receipts for everything.

FINDINGS

Complainant holds trademark rights for the CAT mark. The Domain Name is confusingly similar to Complainant’s CAT mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the Domain Name and that Respondent registered and has used the Domain Name in bad faith.

DISCUSSION

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

 

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

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

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

 

In view of Respondent’s failure to submit a sufficient response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

Identical and/or Confusingly Similar

Complainant has rights in the CAT mark through its registration of the mark with the USPTO (e.g. Reg. No. 564,272, registered September 23, 1952). Registration of a mark with the USPTO is sufficient to demonstrate rights in the mark per Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).

 

The Panel finds that the domain name is confusingly similar to the CAT mark as it adds the term “tracks” and the “.com” gTLD to Complainant’s wholly incorporated CAT mark. The addition of a generic or descriptive term and a gTLD to a mark fails to sufficiently distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain); see also MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel holds that Complainant has made out a prima facie case.

 

Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the CAT mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name).

 

The WHOIS lists “Justin Being / CAT-Tracks Equipment Solution Inc” as registrant of record. However there is no affirmative evidence that the Respondent is actually commonly known under the CAT-Tracks Equipment Solution Inc name as opposed to simply registering the Domain Name under a name for the purpose of asserting rights or legitimate interests. Even if a respondent appears from the WHOIS record to be known by the domain name, without additional affirmative evidence, it can be concluded that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Google Inc. v. S S / Google International, FA1506001625742 (Forum Aug. 4, 2015) (“Respondent did identify itself as ‘Google International’ in connection with its registration of the Disputed Domain Name, and this is reflected in the WHOIS information. However, Respondent has not provided affirmative evidence from which the Panel can conclude that Respondent was commonly known by the Disputed Domain Name before Respondent’s registration thereof.”); see also Hewlett-Packard Co. v. HP Supplies, FA 282387 (Forum July 22, 2004) (“The Panel finds, because of the prominence of the HP mark, that Respondent’s registration under the ‘HP Supplies’ name does not establish that Respondent is commonly known by the domain name.”). Given the lack of evidence that the Respondent trades under any name corresponding to the Domain Name, and Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).

 

The Domain Name is used for a website, operated by the Respondent (“Respondent’s Website”) where Respondent, under the CAT Mark, offers rubber tires, tracks and other heavy equipment (from Complainant’s competitors) in direct competition with Complainant’s heavy equipment that it offers under the CAT Mark. The use of a confusingly similar domain name to resolve to a webpage that offers goods or services that compete with a complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use; indeed it provides a false impression that the Respondent is affiliated with or authorized by Complainant. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). See also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

The Panel finds that, at the time of registration of the Domain Name, June 29, 2020, Respondent had actual knowledge of Complainant’s CAT mark since the Complainant is a well-known entity and the Respondent’s Website offered products in competition with Complainant. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register a domain name that incorporates the CAT mark and use it to redirect visitors to a website selling heavy machinery by Complainant’s competitors other than to take advantage of Complainant’s reputation in the CAT Mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).

 

The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant’s CAT Mark for commercial gain by using the confusingly similar Domain Name to resolve to a website retailing heavy machinery in a manner that misleads consumers into thinking that Respondent is in some way connected to the Complainant (such as being an authorized distributor). Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). See also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the domain name be TRANSFERRED from Respondent to Complainant.

 

 

Nicholas J.T. Smith, Panelist

Dated: August 4, 2021