How do you spell caterpillar? Definitely not “catapillar” but it may sound like that!
The registrant of the domain Catapillar.com has held it since 2001 but this 23 year old domain was challenged via the UDRP process.
The Complainant is Caterpillar, Inc., a well-known provider of heavy-industry equipment, in business since 1904. Complainant holds a registration for the CATERPILLAR mark with the United States Patent and Trademark Office since 1912!
The outcome was as expected; the Forum panelist found the registration of Catapillar.com to be a typosquatting case and ordered the domain to be transferred to the Complainant.
Caterpillar Inc. v. Domain Administrator / Fundacion Privacy Services LTD
Claim Number: FA2403002089141
PARTIES
Complainant is Caterpillar Inc. (“Complainant”), represented by AJ Schumacher of Kelly IP, LLP, District of Columbia, USA. Respondent is Domain Administrator / Fundacion Privacy Services LTD (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is catapillar.com, registered with Media Elite Holdings Limited.
PANEL
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on March 19, 2024; Forum received payment on March 19, 2024.
On March 19, 2024, Media Elite Holdings Limited confirmed by e-mail to Forum that the catapillar.com domain name is registered with Media Elite Holdings Limited and that Respondent is the current registrant of the name. Media Elite Holdings Limited has verified that Respondent is bound by the Media Elite Holdings Limited 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 March 20, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 9, 2024 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@catapillar.com. Also on March 20, 2024, 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 response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.
On April 10, 2024, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that 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, Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s catapillar.com domain name is confusingly similar to Complainant’s CATERPILLAR mark.
2. Respondent does not have any rights or legitimate interests in the catapillar.com domain name.
3. Respondent registered and uses the catapillar.com domain name in bad faith.
B. Respondent did not file a Response.
FINDINGS
Complainant is a well-known provider of heavy-industry equipment, in business since 1904. Complainant holds a registration for the CATERPILLAR mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 0,085,816, registered in 1912).
Respondent registered the catapillar.com domain name on October 2, 2001, and uses it to provide pay-per-click links and to compete with Complainant.
DISCUSSION
Paragraph 15(a) of the Rules instructs this 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.”
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 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
The Panel finds that Complainant has rights in the CATERPILLAR mark through registration with the USPTO. 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).”).
Respondent’s catapillar.com domain name uses a phonetic misspelling of Complainant’s CATERPILLAR mark and simply adds the “.com” gTLD. These changes do not sufficiently distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018) (“Respondent arrives at each of the disputed domain names by merely misspelling each of the disputed domain names and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.”). Therefore, the Panel finds that Respondent’s catapillar.com domain name is confusingly similar to Complainant’s CATERPILLAR mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests.”).
Complainant contends that Respondent lacks rights and legitimate interests in the catapillar.com domain name as Respondent is not commonly known by the domain name and Complainant has not authorized or licensed to Respondent any rights in the CATERPILLAR mark. The WHOIS information for the disputed domain name lists the registrant as “Domain Administrator / Fundacion Privacy Services LTD”. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
Complainant contends that Respondent fails to use the catapillar.com domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use as the domain name resolves to pay-per-click links. Using a disputed domain name to provide third party links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert internet traffic is not a legitimate use of the domain name). Complainant provides screenshots showing that the disputed domain name resolves to pay-per-click links, some of which compete with Complainant’s business. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant claims that Respondent registered and uses the catapillar.com domain name in bad faith to provide pay-per-click links. The Panel agrees and finds bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See CFA Properties, Inc. v. El Mariache/ Mariache Corp, FA 1660175 (Forum Mar. 8, 2016) (finding bad faith registration and use because “Respondent used the chickfilafoundation.org domain name to attract Internet users for commercial gain because the resolving website contains links to third party businesses, from which Respondent presumably receives pay-per-click fees.”).
Complainant argues that Respondent’s typosquatting also demonstrates bad faith. Registering a disputed domain name that intentionally introduces a typographical error in a mark evinces bad faith registration and use under Policy ¶ 4(a)(iii). See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 1683305 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name. The conniving registrant wishes and hopes that Internet users will inadvertently type the malformed trademark or read the domain name and believe it is legitimately associated with the target trademark. In doing so, wayward Internet users are fraudulently directed to a web presence controlled by the confusingly similar domain name’s registrant.”) Accordingly, the Panel finds bad faith typosquatting under Policy ¶ 4(a)(iii).
Complainant also claims that Respondent had knowledge of Complainant’s rights in the CATERPILLAR mark when it registered the disputed domain name. The Panel agrees, noting Complainant’s decades of continuous use of the CATERPILLAR mark as well as Respondent’s deliberate typosquatting of the mark and direct competition with Complainant, and finds further bad faith under Policy ¶ 4(a)(iii). See HDR Global Trading v. Garreth Griggs, FA 1890660 (Forum April 28, 2020) (“Respondent had actual knowledge of Complainant’s rights in the BITMEX mark when it registered the xbitmex.com mark as a domain name. Respondent’s actual knowledge is evident from Respondent’s use of the domain name to directly compete with Complainant as discussed above. Registering and using a confusingly similar domain name to directly compete with knowledge of Complainant’s rights in such domain name in itself shows bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”)
The Panel finds that 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 catapillar.com domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 11, 2024
