DECISION

Caterpillar Inc. v. J. Shera

Claim Number: FA0104000097081

PARTIES

Complainant is Gene Bolmarcich, Caterpillar Inc., Peoria, IL, USA (“Complainant”) represented by Mary E. Innis and Danielle B. Lemack, of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson.  Respondent is J. Shera, Bradford, II, United Kingdom (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is "caterpillarengineparts.com" registered with BulkRegister.com, Inc.

PANEL

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

Judge Ralph Yachnin, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 18, 2001; the Forum received a hard copy of the Complaint on April 19, 2001.

On April 19, 2001, BulkRegister.com, Inc. confirmed by e-mail to the Forum that the domain name "caterpillarengineparts.com" is registered with BulkRegister.com, Inc. and that Respondent is the current registrant of the name.  BulkRegister.com, Inc. has verified that Respondent is bound by the BulkRegister.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On April 20, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 10, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@caterpillarengineparts.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On May 17, 2001, the Forum received an additional submission from the Complainant.  This additional submission was timely submitted in accordance with Forum Supplemental Rule 7.

On May 24, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin 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.”  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 any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant makes the following contentions:

· The infringing domain name is confusingly similar to the Caterpillar marks.

· Respondent has no rights or legitimate interests in the infringing domain name.

· Respondent registered and is using the infringing domain name in bad faith.

B. Respondent

No response was received by the Forum.

C. Complainant’s Additional Submission

Complainant’s additional submission contends that Respondent contacted Danielle Lemack, attorney for Complainant, on May 3, 2001 (after this ICANN proceeding was commenced by the Forum).  Ms. Lemack explained to Respondent that Caterpillar was requesting transfer of the infringing domain name.  Complainant alleges that Respondent refused to transfer the domain name unless Caterpillar agreed to pay Respondent $10,000. 

FINDINGS

Caterpillar is a long-established, multi-national company with business operations in many areas, including the development, manufacture, distribution, marketing and sale of earthmoving and construction machinery and equipment, repair and maintenance services therefor, and the distribution, through licensees and otherwise, of a wide variety of licensed merchandise, including casual clothing and promotional items, such as note pads, stationery portfolios, pencils and pens.

Caterpillar sells and provides its goods and services through an established network of authorized dealerships, all of which have entered into Service Mark License Agreements which allow them to use the mark CATERPILLAR in connection with the sale and service of Caterpillar products.

Since long prior to Respondent's registration of the infringing domain name, Caterpillar adopted, and has continuously used, the inherently distinctive mark CATERPILLAR and the design mark.

Caterpillar owns valid and subsisting federal trademark registrations for the Caterpillar marks including, but not limited to, the following:

Respondent, J. Shera, is located in the United Kingdom and is not affiliated with or related to Caterpillar in any way, nor is Respondent licensed by Caterpillar. 

On May 17, 2000, long after the Caterpillar marks became established, Respondent registered the infringing domain name, “caterpillarengineparts.com.”  To help drive traffic to its website, Respondent uses the metatags “caterpillar,” “caterpillarengineparts” and “caterpillar engine parts.”

To the Panel’s knowledge, Respondent does business under the name Bradford Grinders.  Respondent's website at “caterpillarengineparts.com” prominently features the name Bradford Grinders.  The domain name address that appears when the website is printed is bradfordgrinders.co.uk.  In addition, the title associated with the website refers to Respondent as Bradford Grinders.

Respondent's website at “caterpillarengineparts.com” is identical to the website at bradfordgrinders.co.uk.  The domain name bradfordgrinders.co.uk is registered to Bradford Grinders UK Ltd.

On its website at “caterpillarengineparts.com,” Respondent promotes itself as selling “all types” of engine spare parts.  The website further states that Respondent manufactures and sells new, reconditioned, and used parts.  On another page of the website, Respondent lists a number of brands for which it sells parts; however, Caterpillar is not among the brands listed. 

On March 21, 2001, Complainant sent Respondent a cease and desist letter via registered mail requesting that Respondent cancel or assign to Complainant the registration for “caterpillarengineparts.com.”  Respondent did not respond to Caterpillar’s letter.

On May 3, 2001 Respondent contacted an attorney for Complainant and refused to transfer the domain name unless he was paid $10,000.

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.”

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the Policy requires that the 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 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.

The Panel has carefully reviewed the evidence presented and determines that Complainant clearly has met all the requirements set forth in paragraph 4(a) of the Policy.

Identical and/or Confusingly Similar

The domain name, “caterpillarengineparts.com,” is confusingly similar to the Caterpillar marks because the domain name incorporates in its entirety the CATERPILLAR mark.  Further, the addition of the descriptive suffix “engineparts” to the CATERPILLAR mark reinforces the association between the domain name and the Caterpillar marks because the phrase “engine parts” describes a category of Caterpillar's products.  See Caterpillar Inc. v. Matthew Quin, D2000-0314 (WIPO June 12, 2000) (finding that caterpillarparts.com and caterpillarspares.com are confusingly similar to the CATERPILLAR marks); Hewlett Packard Company v. Posch Software, FA 95322 (Nat. Arb. Forum, Sept. 12, 2000) (finding that hp-software.com is confusingly similar to complainant's HP marks).

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

Rights or Legitimate Interests

Evidence provided by Complainant shows that Respondent has no rights, nor any legitimate interest, in respect of domain name at issue.  On the contrary, Respondent’s registration for the domain name forms part of an intentional abuse of the domain name system on the part of the Respondent, acting so as to gain financially from the transfer of domain name registration to the trademark owner and/or to disrupt legitimate business activities.

Respondent promotes itself as, and does business under, the name Bradford Grinders.  There is no evidence that Respondent is commonly known by the CATERPILLAR name or the “caterpillarengineparts” term.  Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum, Jan. 23, 2001) (finding that respondent does not have rights in domain name when respondent is not known by mark).

Further, Respondent is not using the domain name in connection with a bona fide offering of goods and services.  Policy ¶ 4(c)(i).  Unauthorized use of a mark in connection with the sale of multiple brands of goods does not constitute bona fide use, even if the complainant’s goods can be purchased.  See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of a mark to sell complainant’s perfume, as well as other brands of perfume, is not bona fide use); National Collegiate Athletic Assoc. v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell complainant’s goods without complainant’s authority, as well as others’ goods is not bona fide use).

Since Respondent is using the domain name in connection with commercial activities, Policy ¶ 4(c)(iii) does not apply as evidence of rights and legitimate interests in the domain name.

Therefore, the Panel concludes that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website in violation of Policy¶ 4(b)(iv).  The domain name encompasses the CATERPILLAR mark and adds a descriptive phrase that suggests that consumers can purchase Caterpillar's goods.  Respondent’s use of the Caterpillar mark in connection with its website creates a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent's website, particularly in light of the fact that consumers recognize the Caterpillar mark as an indication that a dealer is authorized by Caterpillar.  By creating a likelihood of confusion, Respondent is acting in bad faith.  See Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding that use of complainant’s mark to attract consumers to buy complainant’s, or others’, products is in bad faith because it is likely to cause confusion).

Consumers will visit Respondent’s website assuming that they can purchase Caterpillar products, however, because Respondent sells many brands, consumers may buy other manufacturers’ goods. The fact that Respondent is “baiting” consumers to its website and likely “switching” them to other brands further establishes Respondent's bad faith.  See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that courts have long recognized that baiting consumers to a website by using complainant’s mark and potentially switching them to other brands is not permitted).

In addition, after commencement of this ICANN proceeding, Respondent offered to sell the domain name for $10,000.  This price far exceeds any reasonable out of pocket costs that Respondent would have incurred to purchase and maintain the domain name.  Respondent’s unsolicited offer to sell "caterpillarengineparts.com" for a price that far exceeds Respondent’s out of pocket costs constitutes additional evidence of his bad faith registration and use of the domain name.  Policy ¶ 4(b)(iv).  See Little Six, Inc v. Domain For Sale, FA 96967 (Nat. Arb. Forum, Apr. 30, 2001) (finding respondent's offer to sell the domain name at issue to complainant was evidence of bad faith); Matmut v. Tweed, WIPO D2000-1183 (WIPO Nov. 27, 2000) (holding that respondent's offer to sell the disputed domain name for $10,000 constitutes evidence of bad faith).

Accordingly, for all the various reasons discussed above, the Panel finds that the domain name has been registered and is being used by the Respondent in bad faith, as required by Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

 

Accordingly, for all of the foregoing reasons, it is ordered that the domain name "caterpillarengineparts.com" be transferred from the Respondent to the Complainant.

Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: May 29, 2001

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