Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Caterpillar Inc., Peoria, IL, USA ("Complainant") represented by Mary E. Innis, of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson. The Respondent is Ivenue.com, Inc., Whittier, CA, USA ("Respondent") represented by Curtis L. Purintun.

The domain name at issue is "caterpillarparts.org", registered with AWRegistry.

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

Panelist is Judge Karl V. Fink (Retired).

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

On April 24, 2001, AWRegistry confirmed by e-mail to the Forum that the domain name "caterpillarparts.org" is registered with AWRegistry and that the Respondent is the current registrant of the name. AWRegistry has verified that Respondent is bound by the AWRegistry 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 26, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 16, 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@caterpillarparts.org by e-mail.

A timely response was received on May 15, 2001. Thereafter Complainant made a supplemental submission. All submissions have been considered by the Panel.

On May 24, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Karl V. Fink (Retired) as Panelist.

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

A. Complainant

Complainant, Caterpillar Inc., ("Caterpillar"), is a corporation incorporated under the laws of the State of Delaware, with a principal place of business at 100 Northeast Adams Street, Peoria, Illinois 61629 USA.

Caterpillar is a long-established, multi-national company with business operations in many areas.

Long prior to Respondent’s registration of the Infringing Domain Name, Caterpillar adopted, and has continuously used since that adoption, the inherently distinctive mark CATERPILLAR and the design mark CATERPILLAR (the "Caterpillar Marks").

Caterpillar owns valid and subsiding federal trademark registrations for the Caterpillar Marks for many goods and services.

Caterpillar also owns, uses and has registered domain names that include the mark CATERPILLAR such as caterpillar.com.

The Caterpillar Marks and the goodwill symbolized by them are exceedingly valuable corporate assets of Caterpillar.

Respondent, Ivenue.com, Inc., is located in California and is not affiliated with or related to Caterpillar in any way, nor is Respondent licensed by Caterpillar.

On May 11, 2000, long after the Caterpillar Marks became famous, Respondent registered the Infringing Domain Name, Caterpillarparts.org.

To Caterpillar’s knowledge, Respondent does business under the names Around the World Salvage and Ivenue.com. Respondent’s web site at the Infringing Domain Name prominently features the name Around the World Salvage.

On March 21, 2001, Caterpillar sent Respondent a cease and desist letter via certified mail requesting that Respondent cancel or assign Caterpillar its registration for the Infringing Domain Name. Respondent did not respond to Caterpillar’s letter.

The Infringing Domain Name, caterpillerparts.org, is confusingly similar to the Caterpillar Marks because the Infringing Domain Name incorporates in its entirety the mark CATERPILLAR.

Respondent promotes itself, as and does business under, the names Around the World Salvage and Ivenue.com and is not commonly known by the Caterpillar name or the Infringing Domain Name.

Caterpillar has not licensed or otherwise permitted Respondent to use the Caterpillar Marks or to apply for or use any domain name incorporating those marks, further proving Respondent’s lack of rights.

Since May 11, 2000, the date on which Respondent registered the Infringing Domain Name, Respondent has not used the Infringing Domain Name with a bona fide offering of goods and services.

Based on the fame of the Caterpillar Marks, Respondent necessarily has actual knowledge of Caterpillar’s rights. In additional to actual knowledge, Respondent has constructive notice as a matter of law of Caterpillar’s trademark rights in the Caterpillar marks. Because Respondent had knowledge of Caterpillar’s trademark rights in the Caterpillar Marks, Respondent could not have registered the Infringing Domain Name with the intention of using it legitimately.

Respondent registered the Infringing Domain name to intentionally attempt to attract, for commercial gain, Internet users to its web site in violation to the Policy, Paragraph 4(b)(iv).

When consumers visit Respondent’s web site to purchase Caterpillar products, they are likely to buy other manufacturers’ goods because Respondent sells many brands. The fact that Respondent is "baiting" consumers to its web site and likely "switching" them to other brands further establishes Respondent’s bad faith.

Complainant’s Additional Submission

In an effort to circumvent these proceedings, Respondent transferred the Infringing Domain Name to Salvage after Caterpillar filed the Complaint, in violation of Paragraph 8 of the Uniform Domain Name Dispute Resolution Policy ("Policy"). AW Registry, however, transferred the Infringing Domain Name back to Respondent after it realized that the transfer was invalid.

Soon thereafter, on May 9, 2001, Eddie Miduez, a representative from Salvage, contacted Danielle Lemack outside counsel for Caterpillar in this matter. Mr. Miduez said that unless Caterpillar made an offer within a few days, he planned to sell the Infringing Domain Name to another company.

Mr. Miduez explained that after receiving the Complaint, Salvage added some information about the larvae, caterpillars, to the web site at the infringing Domain Name.

Salvage’s and Respondent’s belated attempt to establish legitimate rights in the Infringing Domain Name by adding information about the larvae, caterpillars, to the web site at the infringing Domain Name fails. The relevant period to determine a party’s rights to a domain name is prior to notice of the dispute, not after a complaint is filed.

Respondent’s sole defense that it is a web hosting company for Salvage does not counter the fact that neither Respondent nor Salvage have legitimate rights in the Infringing Domain Name. To allow otherwise would enable domain name registrants to circumvent these proceedings by requesting that web hosting agencies hold disputed domain name registrations on their behalf.

Salvage’s unsolicited offer to sell the Infringing Domain Name to Caterpillar constitutes additional evidence of Salvage’s and Respondent’s bad faith registration.

Respondent’s failure to respond to Caterpillar’s claims of bad faith in the Complaint support the conclusion that Respondent’s registration of the infringing Domain name is in bad faith.

B. Respondent

The Respondent, Ivenue.com, Inc. is a web development and hosting company. Ivenue.com does not do business as Around the World Salvage as alleged in the Complaint. This statement by the Complainant is completely inaccurate. Ivenue registered the domain name in dispute for a customer, Around the World Salvage. The only connection between these businesses in that Ivenue provides web services for Around the World Salvage.

The domain names, aroundtheworld salvage.com and caterpillarparts.org, as well as other domain names listed by Around the World Salvage all point to the same web site, not identical sites.

Ivenue has never purported to have an interest in the domain name caterpillarparts.org. Ivenue’s only contention is that Ivenue is not a party of interest in this proceeding.

Ivenue did not register caterpillarparts.org in bad faith as alleged. Instead our customer, Around the World Salvage requested the domain name in dispute. Ivenue discovered that the name was in fact available and requested it on behalf of our customer.

For the reasons stated below the Panel finds Complainant has proven it is entitled to a transfer of the Domain Name.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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."

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.

Complainant owns several U.S. trademark registrations for the CATERPILLAR mark. Complainant contends that the infringing domain name is confusingly similar to the CATERPILLAR marks because the domain name incorporates the CATERPILLAR mark in its entirety. The addition of the term "parts" does not form a distinctive mark because the term "parts" merely describes a category of Complainant’s products. See Caterpillar, Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the domain names <caterpillar.com> and <caterpillarspares.com> are confusingly similar to the CATERPILLAR mark).

Respondent did not respond to Complainant’s contentions on this issue. Complainant has proven this element.

Respondent has no rights or legitimate interests in the domain name:

Respondent is not commonly known by the CATERPILLAR mark or the infringing domain name. Policy ¶ 4(c)(ii). See Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well established use of the mark).

Complainant has not licensed or otherwise authorized Respondent to use the CATERPILLAR marks.

Respondent’s use of the domain name does not constitute fair use and is not a legitimate noncommercial use. Policy ¶ 4(c)(iii).

Respondent does not claim any interest in the domain name. See also Gallerina v. Wilmhurst, D2000-0730 (WIPO Aug. 16, 2000) (finding no rights and legitimate interests in the domain name where the Respondent, an Internet service provider, stated on several occasions that he has no interest in the domain name).

Respondent, when registering the domain name for its client, knew or should have known of Complainant’s established marks. See Gallerina v. Wilmhurst, D2000-0730 (WIPO Aug. 16, 2000) (finding bad faith where the Respondent, an Internet service provider, and the website client must have known that the domain name would probably create further confusion); Dollar Financial Group, Inc. v. Advanced Legal Systems, Inc., FA 95102 (Nat. Arb. Forum Aug 14, 2000) (finding bad faith where Respondent, a company that registers domain names and designs websites, knew or should have known of Complainant’s mark when the Respondent registered the domain name).

The panel directs that the domain name "caterpillarparts.org" be transferred to Complainant.