Complainant is Caterpillar, Inc. of Peoria, Illinois, United States of America, represented by Hogan Lovells (Paris) LLP, France.
Respondent is Dirk Dohmen of Nijmegen, the Netherlands.
The disputed domain name <catpartsstore.org> (the “Domain Name”) is registered with Key-Systems GmbH dba domaindiscount24.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2016. On January 22, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 25, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Complaint was submitted in the English language. The language of the Registration Agreement for the Domain Name is Dutch. On January 26, 2016, the Center sent a language of proceeding communication in both Dutch and English to the parties. On the same date, Complainant submitted a request for English to be the language of proceeding. Respondent did not reply to either the Center’s communication or Complainant’s request.
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 and 4, the Center formally notified Respondent of the Complaint in English and Dutch, and the proceedings commenced on February 1, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 22, 2016.
The Center appointed Dinant T. L. Oosterbaan as the sole panelist in this matter on March 2, 2016. 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.
Complainant is a world 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.
Complainant submitted evidence that it is the owner of numerous trademarks for the signs CATERPILLAR and CAT, including Community Trademark for CAT No. 1295310 filed on September 1, 1999 and registered on November 22, 2000.
In addition, Complainant has made substantial investments through the years to develop a strong presence online. In this respect, Complainant operates numerous websites, including the “www.caterpillar.com” and “www.cat.com” websites, and is active on various social media platforms.
The Domain Name, <catpartsstore.org>, was registered on May 27, 2015.
Complainant asserts that the Domain Name is confusingly similar to the CAT trademark. Complainant contends in this respect that the Domain Name incorporates the CAT trademark in its entirety. The Domain Name only differs from Complainant’s CAT trademark by the addition of the term “partsstore” which is insufficient to distinguish the Domain Name from Complainant’s trademark, as the CAT trademark is clearly the dominant component of the Domain Name.
Complainant submits that Respondent has no rights or legitimate interests in respect of the Domain Name. In support of its argument Complainant submits the following factual background which is supported by evidence based on screen prints of the website to which the Domain Name resolved. The website to which the Domain Name resolved is imitating without authorization the overall “look and feel” of Complainant’s official website “www.cat.com”, including identical color scheme and layout, numerous images of Complainant’s products, Complainant’s CAT trademark and logo and word for word text taken from Complainant’s official website. Moreover, Complainant asserts that Respondent appears to have been using the Domain Name to defraud customers attempting to purchase CAT parts on the website to which the Domain Name resolved, as shown by evidence submitted of customers who complained that the CAT parts which they ordered from Respondent and paid for were never delivered.
According to Complainant at present the Domain Name resolves to a registrar holding page with a message that the website is temporarily unavailable for legal reasons as the old website was taken down by the Registrar after a complaint from Complainant to the Registrar.
According to Complainant, Respondent appears to be using different fictitious names to register domain names infringing the CAT trademark and to defraud customers, namely <catpartsstore.com> which has been transferred to Complainant pursuant to the decision in Caterpillar, Inc. v. Whoisproxy.com Ltd. / Marcel Lommers, WIPO Case No. D2015-2071, and <catgenuineparts.com> which has been transferred to Complainant pursuant to the decision in Caterpillar, Inc. v. Roy Weijden, WIPO Case No. D2014-1221.
Finally, Complainant submits that Respondent was not using the Domain Name in connection with a bona fide offering of goods and services. Respondent is not an authorized dealer, distributor or licensee of Complainant. Further, Respondent does not qualify under the criteria laid down in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. In particular, Respondent does not adequately disclose the (non-existent) relationship between Respondent and Complainant. Complainant submits that Respondent deliberately set up his website imitating the “look and feel” of Complainant’s official website seeking to misrepresent himself as Complainant or as one of its affiliates to profit from the goodwill of Complainant and defraud customers.
Complainant submits that Respondent has registered and is using the Domain Name in bad faith as Respondent no doubt had knowledge of the well-known trademarks of Complainant. In addition, Complainant asserts that Respondent is using the Domain Name in an elaborate attempt to defraud customers, which constitutes bad faith registration and use of the Domain Name.
Respondent did not reply to Complainant’s contentions.
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 proves each of the following three elements to obtain an order that the Domain Name should be transferred or cancelled:
(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
The Panel is satisfied that the registrant of record for the Domain Name is Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied by Complainant in this 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.
Complainant submitted its Complaint in English and requested that the language of the proceeding be English. Respondent has not submitted any comments in this regard despite having been given the opportunity to do so. Taking into account Respondent’s default and all of the other relevant circumstances of the case, in particular the fact that the website to which the Domain Name resolved is in the English language, and that the defrauded customers are in various European countries, 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 Complainant’s filing in English and issue a decision in English.
Pursuant to paragraph 4(a)(i) of the Policy, the complainant must first of all establish rights in a trademark or service mark and secondly that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
Complainant has established that it is the owner of numerous trademark registrations for CAT. The Domain Name, <catpartsstore.org>, incorporates the entirety of the CAT trademark as its distinctive element. Many UDRP decisions have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety. The addition of the common, descriptive and non-distinctive element “partsstore” is insufficient to avoid a finding of confusing similarity.
The Panel finds that Complainant has proven that the Domain Name is confusingly similar to Complainant’s CAT trademark.
In the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to register the Domain Name incorporating its marks. Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant.
Based on the evidence provided by Complainant, the Domain Name resolved to a website where products of Complainant are being advertised, purportedly offering genuine CAT parts for sale and imitating the overall “look and feel” of Complainant’s official website at “www.cat.com” including identical color scheme and layout. Complainant has argued that Respondent, who is not a licensee or an authorized dealer of Complainant, offers for sale CAT parts that are most likely not being delivered, an illegitimate activity that is undoubtedly commercial and not bona fide in nature. Indications of the presumed fact that Respondent is using the Domain Name to defraud customers can be found in the customer complaints submitted as evidence by Complainant. In the view of the Panel these circumstances constitute an indication of Respondent’s intention to defraud customers on the website to which the Domain Name resolved.
The fraudulent use by Respondent cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name. In addition, Respondent is not commonly known by the Domain Name nor has it acquired any trademark rights.
In view of the above there is no need for the Panel to decide whether or not Respondent appears to be using different fictitious names to register domain names infringing the CAT trademark in order to defraud customers. In the opinion of the Panel the so-called Oki Data criteria and considerations, as mentioned in Oki Data Americas, Inc. v. ASD, Inc., supra, do not apply in the event that the website to which the Domain Name resolves is used for fraudulent purposes.
No response to the Complaint was filed and Respondent has not rebutted Complainant’s prima facie case.
Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
The Panel finds that the Domain Name has been registered and is being used in bad faith.
Noting the status of the CAT marks and the overall circumstances of this case, the Panel finds it more likely than not that Respondent knew that the Domain Name included Complainant’s well-known CAT marks. The Panel notes that the website to which the Domain Name resolved incorporates Complainant’s well-known CAT trademark in its entirety, including the distinctive “look and feel” of Complainant’s website.
In addition, Complainant asserts that Respondent is using the Domain Name to defraud customers attempting to purchase CAT parts on the associated website. It appears from complaints submitted to Complainant by customers of Respondent that these customers ordered and paid for CAT parts on the website to which the Domain Name resolved but these customers never received these parts.
For these reasons, in the view of the Panel this indicates that Respondent registered and used the Domain Name with the intention to attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location, which constitutes registration and use in bad faith pursuant to paragraph 4(b)(iv) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <catpartsstore.org>, be transferred to Complainant.
Dinant T. L. Oosterbaan
Sole Panelist
Date: March 16, 2016