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Generic Top Level Domain Name (gTLD) Decisions |
National Arbitration Forum
P.O. Box 50191
Minneapolis, MN 55405
DECISION
Caterpillar Inc. v. Metal Moves
Claim Number: FA0006000095034
PARTIES
The Complainant is Caterpillar Inc., Peoria, IL, USA ("Complainant"). The Respondent is Metal Moves, Boerne, TX, USA ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is "CATEQUIPMENT.COM", registered with Network Solutions, Inc. ("NSI").
PANELIST(s)
Judge Ralph Yachnin, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 06/16/2000; The Forum received a hard copy of the Complaint on 06/19/2000.
On 06/28/2000, NSI confirmed by e-mail to The Forum that the domain name "CATEQUIPMENT.COM" is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.
On 06/29/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 07/19/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email. The Respondent has submitted a Reply.
On July 24, 2000 pursuant to Complainant’s request to have the dispute decided by a Single Member panel. The Forum appointed Judge Ralph Yachnin, as Panelist.
RELIEF SOUGHT
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. The complainant is a long-established company in the business of manufacturing, distribution and sale of construction and earth moving machinery, as well as repairs and maintenance services, and provides them through authorized dealers.
2 In September, 1952, the Complainant registered and obtained from the United States Patent Office a Registration Number for the Trade-Mark "CAT" for wagons, generators, engines, etc.; in December, 1962 for toy replicas of tractors, etc.; in June, 1964 for motor trucks, etc., in October, 1964 for service, maintenance and repair of trucks, etc.; in January, 1967 for tools and equipment used with welding machines, etc.; in March, 1973 for tires; in May, 1974 for lift trucks, etc.; in August, 1975 for amphibious vehicles, etc.; and twice in January, 1990, a Service Mark was obtained for CAT for both maintenance and repair of complainant’s products and for the products themselves.
3. Long before Respondent’s registration of the domain name in question Complainant adopted, and has continuously used since that adoption, the Complainant’s Mark "CAT".
4. Complainant also has registered and uses domain names that include "CAT" such as "www.cat.com."
5. Complainant has invested millions in promoting the name "CAT."
6. The Respondent’s domain name is confusingly similar to Complainant’s CAT mark.
7. Respondent has no legitimate interest in the domain name.
8. Respondent is a competitor of Complainant in that they both sell used construction equipment and both provided services for such equipment.
9. The domain name at issue is intended to divert complainant’s potential customers and customers to Respondent.
B. Respondent
1. Respondent denies in full all accusations made by the Complainant.
2. Respondent attempted to solve the problem.
3. The generic term "CAT" is used worldwide to describe a piece of equipment that has the function of moving material, etc.
4. Respondent does not use the name Cat.
5. The domain name at issue does not in any form use the Complainant’s Cat Mark.
6. Nowhere in Respondent’s web site does it claim that Respondent is part of the Complainant’s companies.
7. Under our Constitution’s guarantee of Freedom of Speech, and of the Press, Respondent has the right to use the domain name in issue.
FINDINGS
1. Complainant has been in the business of manufacturing equipment for the earth moving and construction industry as well as servicing that type of equipment.
2. Complainant registered and is the owner of the Trade Mark "CAT" since 1952.
3. In 1998 Respondent registered the domain name "CATEQUIPMENT.COM" with Network Solutions and has been using it at its web site relative to its business of selling used equipment, some of which is manufactured by the Complainant.
4. The Complainant also services and sells its manufactured equipment as used equipment and the parties are competitors.
DISCUSSION
Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs that the complainant must prove each of the following three elements to support a claim that a domain name should be canceled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Identical and/or Confusingly Similar
The Respondent has taken the Complainant’s Trade Mark "CAT" and has attached it to the word "EQUIPMENT", and thereupon used them to form a domain name "CATEQUIPMENT .COM.". That domain name is confusingly similar, or is at least identical in part, to a Trade Mark and a Service Mark to which the Complainant has rights.
Rights or Legitimate Interests
The domain name in dispute suggests some affiliation or connection of the Respondent with the Complainant, when in fact there is no such affiliation. The Respondent could have ascertained the status of the word "CAT" when used in a domain name by simply causing a search to be made of the Trade Mark Office. Evidently it did not care to. In addition, the word "CAT" is so notoriously tied to the Complainant, the Respondent must be assumed to have known it. In addition, there is no doubt that the Respondent has never been known to use, or been known by the word "CAT" prior to its acquiring the domain name "CATEQUIPMENT." Lastly the Respondent is using the domain name for commercial gain and to misleadingly divert the Complainant’s customers.
Registration and Use in Bad Faith
By using the domain name, and thus creating a likelihood of confusion with the Complainant’s Mark, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its web site. This is a bad faith use of the domain name.
DECISION
THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "CATEQUIPMENT.COM".
REGISTERED BY THE RESPONDENT BE TRANSFERRED TO COMPLAINANT CATERPILLAR, INC.
Dated: July 27, 2000 Ralph Yachnin, Panelists
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URL: http://www.worldlii.org/int/other/GENDND/2000/773.html