Complainant is Caterpillar Inc. of Peoria, Illinois, United States of America (“United States”), represented by Adams & Adams Attorneys, South Africa.
Respondent is Sara Alaoui of Casablanca, Morocco.
The disputed domain names <catindustrie.com> and <catmarbre.com> are registered with Genious Communications SARL/AU (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2018. On August 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 5, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details and contact information for the disputed domain names.
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, and the proceedings commenced on September 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 1, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 2, 2018.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on October 11, 2018. 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 leading manufacturer of construction and mining equipment, diesel and natural gas engines, industrial gas turbines, and diesel-electric locomotives. It operates worldwide and is internationally well-known. Complainant’s CAT brand was first used in 1949 in relation to machinery and since then in connection with a wide range of equipment, machinery, heavy vehicles, and related parts and accessories. Complainant also offers maintenance, repair, retail, and other services under the CAT brand and has expended its goods offering to include various retail goods such as clothing, footwear, headgear, toys, and various other items. Complainant’s websites are available at “www.caterpillar.com” and “www.cat.com”. Complainant’s goods and services are available worldwide through its extensive dealer network and it has authorized dealerships in many countries across the globe, including in Morocco.
Complainant has registered trademark rights in CAT, particularly in connection with construction, mining, forestry, agriculture, and related industries, in many jurisdictions around the world, including in Morocco. Complainant has adduced evidence of the following trademark registrations in Morocco:
- Trademark registration No. 110643, CAT, registered on May 11, 2007, in classes 9, 35, 36, and 42;
- Trademark registration No. 62083, CAT, registered on February 28, 1997, in class 37; and
- Trademark registration No. 110857 CAT (figurative), registered on May 22, 2007, in classes 7, 9, 12, 35, 36, 37, and 42.
Complainant is also the registrant of the domain name <cat.com> (registered in 1993) as well as many other domain names incorporating the CAT trademark, including but not limited to <cat.eu>, <cat.us>, <cat.com.au>, <cat.com.br>, and <cat.info>.
The disputed domain names were registered on January 7, 2017 and February 2, 2017. They were resolving to websites featuring a logo consisting of the term CAT and a design of an earthmoving machine. The websites also displayed photographs of heavy machinery and offered “earth extraction and transport” services.
Complainant asserts that the disputed domain names are confusingly similar to its CAT trademarks as they incorporate Complainant’s CAT trademark in its entirety and it is the dominant element in each disputed domain name. Complainant argues that the terms in French “marbre” (“marble” in French) and “industrie” (meaning “industry”) are entirely descriptive and incapable of distinguishing these disputed domain names from Complainant’s CAT trademark. Furthermore, Complainant states that the Top-Level Domain (“TLD”) “.com” does not generally affect the domain name for the purpose of determining whether it is identical or confusingly similar. Complainant asserts that its CAT trademark is clearly recognizable within, and is the distinctive part of, the disputed domain names and, as a result, they are confusingly similar to its CAT trademark.
Complainant states Respondent does not have rights or legitimate interests in the disputed domain names. Complainant explains that it learned that an entity called “Cat Marbre” based in Morocco had filed a trademark application No. 181254 for CAT MARBRE & design (an image of an earthmoving machine) in classes 35 and 37 in Morocco. Complainant sent a cease and desist letter to Respondent asking to withdraw its trademark application and cease all use of the CAT trademark in relation to its business, including the disputed domain names and corresponding websites. Respondent refused Complainant’s request and so Complainant opposed the registration of the aforementioned Moroccan trademark application. The trademark oppositions were not defended and the opposed trademark was refused. Complainant argues that Respondent’s failure to defend the trademark opposition matter is indicative of a lack of rights or legitimate interests in the disputed domain name <catmarbre.com>. On February 26, 2018, having noted that Respondent was still using the CAT trademark in relation to its business, Complainant sent a reminder to Respondent. Respondent did not respond. On April 26, 2018, a further cease and desist letter was sent by Complainant’s attorneys. No response was received.
Complainant maintains that Respondent is not affiliated in any way with Complainant and that the CAT trademark has been clearly adopted to ride on Complainant’s goodwill and reputation and/or to disrupt Complainant’s business by diverting consumers away from Complainant and its authorized dealers to Respondent’s business. It further states that Complainant’s use of the disputed domain names cannot be considered bona fide or legitimate as they are being used “in a manner that is deliberately meant to suggest commercial affiliation or some other connection or association with the Complainant”. Complainant underlines that the website “www.catindustrie.com” also clearly shows use of the trademark in black writing on yellow machinery, which is likely to enhance the confusion caused by the use of Complainant’s trademark and disputed domain names. Complainant mentions that although there are active websites under the disputed domain names, Complainant does not know whether Respondent is in fact trading. Nevertheless, Complainant is concerned that if Respondent is allowed to maintain registration of the disputed domain names, since it has no control over the content of the websites, any negative content or poor goods or services provided by Respondent’s business would, in all likelihood, cause material damage to the business of Complainant and its international reputation as well as a negative impact on Complainant’s authorized dealers in Morocco.
Complainant submits that Respondent registered and is using the disputed domain names in bad faith. In this regard, Complainant underlines that Respondent was undoubtedly aware of Complainant and its rights in the CAT trademark at the time of registration. Complainant argues that it cannot be coincidental that Respondent came up with these domain names without any regard to Complainant as suggested by the fact that the disputed domain names wholly incorporate Complainant’s well-known name and CAT trademark and the use of an earthmoving machine device on the website. Complainant holds that Respondent “knew or should have known” of Complainant’s trademark rights at the time of registration given that she operates in the same industry. Complainant submits that Respondent acquired the disputed domain names primarily for the purpose of disrupting the business of Complainant or to attract Internet users for commercial gain by confusing them into thinking that the associated websites relate to Complainant and its business and that any goods or services offered therein, will meet the quality standards of Complainant, or might be endorsed or sponsored by Complainant, when that is not the case. Complainant further asserts that it has no control over Respondent’s conduct in respect of the disputed domain names.
Respondent did not reply to Complainant’s contentions.
Paragraph 4(a) of the Policy provides that to obtain the transfer of the disputed domain names, Complainant must prove that each of the following three elements are present:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Paragraph 15(a) of the Rules provides that “[a] Panel shall 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.” Paragraphs 10(b) and 10(d) of the Rules also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.
Furthermore, paragraph 14(b) of the Rules provides that “[i]f a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate”.
Respondent did not reply to Complainant’s contentions. Respondent’s failure to respond, however, does not automatically result in a decision in favor of Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Taking the foregoing provisions into consideration the Panel finds as follows:
Paragraph 4(a)(i) of the Policy requires the Panel to consider first whether Complainant has established relevant trademark rights. Complainant has adduced evidence that it has registered trademark rights in CAT in connection with a variety of goods and services, including but not limited to earthmoving heavy machinery. However, Complainant did not indicate nor provide evidence showing that its trademarks had been duly renewed. In accordance with the general powers of the panel set in paragraph 10 of the UDRP Rules, the Panel has therefore considered appropriate to undertake limited factual research in the appropriate trademark registration database in order to verify whether Complainant’s trademarks have been duly renewed. The Panel has verified that Complainant’s trademarks have been duly renewed and so the Panel is satisfied that Complainant has established relevant trademark rights.
The Panel is also required to examine under paragraph 4(a)(i) of the Policy whether the disputed domain names are identical or confusingly similar to Complainant’s trademarks. This test involves “a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name”. Section 1.7 of the WIPO Overview 3.0.
The Panel finds that the disputed domain names are confusingly similar to Complainant’s trademark. Complainant’s CAT trademark is clearly recognizable in the disputed domain names. The addition of the generic terms “marbre” (“marble” in French) and “industrie” (“industry”) does not prevent a finding of confusing similarity with Complainant’s trademark.
The TLD “.com” is generally disregarded under the identity or confusing similarity test, as it is a functional element. See section 1.11 of the WIPO Overview 3.0.
The Panel therefore finds that the disputed domain names are confusingly similar to Complainant’s trademark.
Complainant has therefore satisfied paragraph 4(a)(i) of the Policy.
Paragraph 4(a)(ii) of the Policy requires a complainant to demonstrate that the respondent has no rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy sets out the following
non-exhaustive list of circumstances that a respondent may rely on to demonstrate rights to or legitimate interests in a domain name, including:
“(i) before any notice to [respondent] of the dispute, [respondent’s] 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) [respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [respondent have] acquired no trade mark or service mark rights; or
(iii) [respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.”
A complainant is required to establish a prima facie case that the respondent does not have rights or legitimate interests in the disputed domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If, however, the respondent fails to come forward with such relevant evidence, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.
The Panel finds that, based on the statements and documents submitted by Complainant, Complainant has made a prima facie showing of Respondent’s lack of rights to or legitimate interest in the disputed domain names. As a result of her default, Respondent has failed to rebut such a showing.
Complainant has stated (and Respondent has not contradicted that) Respondent is not affiliated to Complainant or has been authorized by Complainant to use Complainant’s trademark, in a domain name or otherwise.
There is no evidence that Respondent is commonly known by the disputed domain names or a name corresponding to the disputed domain names, in accordance with paragraph 4(c)(ii) of the Policy. Respondent appears to have applied for a trademark in CAT MARBRE & design (an image of an earthmoving machine) for similar or identical goods and services for which Complainant’s trademarks have been registered, which was successfully opposed by Complainant. Furthermore, Respondent’s business name also appears to incorporate the CAT name for similar services provided by Complainant. Respondent’s trademark application and business name consisting of the CAT name for an identical or similar activity as Complainant’s cannot give rise to rights or legitimate interests in the disputed domain names as the overall circumstances of this case suggest that Respondent’s choice of a trademark and business name was made with the intention of riding on Complainant’s goodwill and reputation in the field of construction and mining. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847.
Neither can Respondent’s use of the disputed domain names to resolve to a website prominently featuring a logo consisting of the word CAT together with an image of an earthmoving machine and offering identical or similar goods and services as Complainant be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names, in accordance with paragraphs 4(c)(i) and 4(c)(iii) of the Policy, as Respondent is clearly seeking to trade on Complainant’s goodwill and reputation for her own commercial gain.
Respondent’s failure to respond to Complainant’s contentions is indicative of her lack of rights or legitimate interests in the disputed domain names. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 (“non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights”).
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(a)(iii) of the Policy requires Complainant to demonstrate that the disputed domain names were registered and are being used in bad faith. Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that may indicate bad faith, including but not limited to:
“(i) circumstances indicating that [respondent has] registered or [has] 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 trade mark 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) [respondent has] registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [respondent has] engaged in a pattern of such conduct; or
(iii) [respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] 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 [respondent’s] website or location or of a product or service on [respondent’s] web site or location.”
The Panel finds that Respondent registered the disputed domain names in bad faith. Complainant’s trademarks significantly predate the registration date of the disputed domain names and are well-known worldwide, including in Morocco, where Respondent is based, in connection with heavy machinery. It therefore seems rather unlikely that Respondent did not have awareness of Complainant’s rights at the time of registration of the disputed domain names. Respondent’s immediate subsequent use of the disputed domain names as described below is strongly indicative of Respondent’s awareness of Complainant’s rights. Therefore, the Panel finds that, on balance, Respondent registered the disputed domain names with Complainant’s rights in mind and that she did so with the intention of taking advantage of such rights, as shown by the subsequent use of the disputed domain names.
The Panel also finds that Respondent’s use of domain names that are confusingly similar to Complainant’s trademarks to resolve to websites featuring a logo displaying the term CAT together with an image of an earthmoving machine, along with photographs of heavy machinery, and offering identical or similar services for which Complainant’s trademarks have been registered constitutes bad faith in accordance with paragraph 4(b)(iv) of the Policy as Respondent is intentionally attempting to attract, for commercial gain, Internet users to her websites by creating a likelihood of confusion with Complainant’s trademark as to the source, affiliation, or endorsement of Respondent’s website.
Finally, the Panel also draws an inference of bad faith from Respondent’s failure to take part in the present proceedings.
The Panel finds that Respondent has both registered and used the disputed domain names in bad faith.
Complainant has therefore satisfied paragraph 4(a)(iii) 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 disputed domain names, <catindustrie.com> and <catmarbre.com>, be transferred to Complainant.
Nathalie Dreyfus
Sole Panelist
Date: October 25, 2018