DECISION

Caterpillar Inc. v. GameWays

Claim Number: FA0308000183726

PARTIES

Complainant is Caterpillar Inc., Peoria, IL (“Complainant”) represented by Gene Bolmarcich. Respondent is GameWays, Las Vegas, NV (“Respondent”) represented by  Scott Jacobs.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <catracing.com> registered with Network Solutions, Inc.

PANEL

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

Judge Irving H. Perluss (Retired) is the Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 8, 2003; the Forum received a hard copy of the Complaint on August 11, 2003.

On August 13, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <catracing.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 August 14, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 3, 2003 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@catracing.com by e-mail.

A timely Response was received on September 3, 2003. However, the electronic copy of this Response was not received therefore the Forum does not consider this Response to be in compliance with ICANN Rule #5(a).

In addition, Respondent did not sign its Reponse. It could be concluded, accordingly, that Respondent has failed to certify that the Response is, to the best of Respondent’s knowledge, complete and accurate pursuant to Rule 5(b)(vii).  See Talk City Inc. v. Michael Robertson, D2000-0009 (WIPO Feb. 29, 2000) (concluding that no weight would be afforded to the facts alleged in Respondent’s deficient submission, partly because it “did not contain any certification that the information contained in the e-mail was, ‘to the best of Respondent’s knowledge complete and accurate’” in accordance with Rule 5(b)(viii)).

Finally, Respondent sent an additional letter to the Forum’s case coordinator on September 25, 2003.  Because the correspondence was late, was not copied to Complainant, and was not accompanied by the appropriate fee required by NAF Supplemental Rule 7, it is within the sole discretion of the Panelist as to whether it should be considered.

The Panelist will consider Respondent’s submissions despite the failure to comply with procedural requirements.

On September 12, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

            1.            Caterpillar, which is also known and referred to as “CAT,” is a Fortune 100 company and is the world’s largest manufacturer or construction and mining equipment, diesel and natural gas engines, and industrial gas turbines.  Caterpillar is ranked first in its industry, with more than $26 billion in assets.

            2.            Caterpillar manufactures, sells, and distributes a wide assortment of heavy-industry equipment, including track-type tractors, track loaders, wheel loaders, integrated tool carriers, excavators, mining shovels, off-highway trucks, scrapers, motor graders, backhoe loaders, paving products, agricultural equipment, forest machines, wheel tractors and compactors, telescopic handlers, compacts, engineers, and gas turbines.

            3.            Caterpillar has since 1997 sponsored a NASCAR Winston Cup stock car racing team under the “CAT RACING” trademark.  During this time and up to the present, the “CAT RACING” mark has developed valuable goodwill and become synonymous with Caterpillar’s successful NASCAR sponsorship (including first place in the 2002 Daytona 500).

            4.            Since long prior to Respondent’s registration of the disputed domain name, Caterpillar adopted, and has continuously used since that adoption, the inherently distinctive marks CAT and CAT RACING (the “Caterpillar Marks”).

            5.            Caterpillar has continuously used CAT as a trade name, trademark, and service mark since 1949, and owns registrations for the CAT mark in over 150 countries around the world.  Caterpillar owns 24 registrations for the CAT word and design mark in the United States. 

            6.            In addition to the registered trademark rights in the CAT mark, Complainant owns a common law trademark in the mark CAT RACING.  This is because Complainant has licensed the CAT RACING mark to various parties since 1997 for the purpose of manufacturing and selling a wide range of merchandise to the general public, including clothing, accessories, and die case models.  In 2002, retail sales of CAT RACING merchandise exceeded $15 million and were distributed through major retail chains including Target, K-Mart, and Wal-Mart.  As a result of Complainant’s extensive use and licensing of the CAT RACING mark and the level of sales and promotion of CAT RACING products, Complainant enjoys common law rights in this mark.

            7.            Having been used by Caterpillar in connection with its products and services, and having been widely promoted and advertised, the Caterpillar Marks have become property of incalculable value.  Further, the Caterpillar marks enjoy unquestionable fame as a result of extensive and long use and advertising, and favorable public acceptance and recognition worldwide.

            8.            Respondent, Game Ways, is located in Las Vegas, Nevada, and is not affiliated with or related to Caterpillar in any way, nor does Caterpillar license Respondent.

            9.            On February 23, 2002, long after the Caterpillar marks became famous, Respondent registered the disputed domain name.

            10.            The disputed domain name <catracing.com> is identical to Complainant’s common law CAT RACING mark.

            11.            In addition, <catracing.com> is confusingly similar to the CAT mark.  The mere addition of descriptive or generic words to a famous mark does not eliminate the similarity between the domain name and the trademark.

            12.            Respondent promotes itself as and does business under the name Game Ways and is not commonly known as “CAT” or the Infringing Domain Name.  Respondent has not acquired any trademark or service mark rights in the Caterpillar marks.

            13.            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.

            14.            Respondent’s use of the disputed domain name does not constitute fair use and is not a legitimate non-commercial use.  Respondent has not made use of the <catracing.com> domain name since owning it.

            15.            Respondent is not using the Infringing Domain Name in connection with a bona fide offering of good or services.

            16.            Long after Caterpillar’s adoption, use and registration of its Caterpillar marks and domain names, Respondent began making unauthorized use of those marks by registering the disputed domain name.

            17.            Based on the fame of the Caterpillar marks, Respondent necessarily has actual knowledge of Caterpillar’s rights.  In addition to actual knowledge, Respondent has constructive notice as a matter of law of Caterpillar’s trademark rights in the Caterpillar marks.  15 U.S.C. Section 1072.  Because Respondent had knowledge of Caterpillar’s trademark rights in the Caterpillar marks, Respondent could not have registered the disputed domain name with the intention of using it legitimately.

            18.            Respondent has not made any use of the disputed domain name in connection with a substantive website (or any other use of which Complainant is aware) since registering it over one and a half years ago.  Such prolonged non-use has been held to be itself a bad faith use.

B. Respondent

            1.            The disputed domain name is not confusingly similar to the Caterpillar marks.  The name Caterpillar is not used, and while the name is similar, it is not confusing.

            2.            Clearly, the name “CAT RACING” exploits the novelty and ambiguity of the term, which Caterpillar is using for their NASCAR team.  However, the term cannot usurp the inherent rights for fictional or real cat racing, for which Game Ways is the developer of in a commercial, cartoon, wagering, television sense.  For competitive reasons, Game Ways cannot reveal the content of the programs being developed.  For a similar format, please refer to <www.tvgnetwork.com>, which is the owner of Game Ways founded.

            2.            Respondent has rights and a legitimate interest in the disputed domain name.  As a game developer, Game Ways creates games where players can race various animals against each other, including cats and dogs.  Game Ways does not feel that the word “cat” is the sole property of the Caterpillar Corporation.  By extension of this logic, <catlovers.com>, <catusa.com>, <catgroup.com>, <catworld.com>, etc., would also be infringing on their trademark.  Game Ways is in the business of developing channels and is not attempting to deceive by forwarding to <catraces.com>.  Instead, this proves that there should be no confusion or bad faith.  Neither domain will be in use until content is fully developed and ready to go.  Currently, Game Ways is in the U.K., meeting with the BBC, and pitching television and game developing.  It is critical to the value of our project, which are the animated racing shows and the wagering therein, that the rights to the domain <catracing.com> are retained.

            3.            Respondent did not register and is not using the disputed domain name in bad faith.  In respect to paragraph 4(a)(iii) of the Policy, Game Ways did not register or use the domain name in bad faith, and feels that the Complainant has failed to establish that the domain name was registered with malicious intent.  The name was arrived at independently, along with other <racing.com> sites that were registered at the same time that referred to other animals, both domesticated and wild.  Game Ways does not have the intent or a history of “warehousing” multiple domain names, or of deliberately causing confusion with similar trademarks, without regard to the goods or services of the parties.  There has been no intent to divert to a website that could hurt the trademark’s owner goodwill.

C. Additional Submission by Respondent

            The additional material submitted by Respondent indicates that on November 5, 2002, a senior intellectual property attorney told Respondent that Complainant was not interested in buying the disputed domain name.

            Moreover, Respondent has not been contacted since. Complainant’s claim is weak and offensive.  Complainant could have had the disputed domain name for little or nothing in November 2002.

FINDINGS AND DETERMINATIONS

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.

Identical and/or Confusingly Similar

Complainant has provided evidence of numerous trademark registrations with the United States Patent and Trademark Office for the CAT mark, including Reg. No. 564,272 (registered on September 23, 1952) in relation to, inter alia, diesel and other internal combustion engines.  The Panelist, accordingly, finds that Complainant has established its rights in the CAT mark for purposes of Policy paragraph 4(a)(i).[1]  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption.).

Moreover, Complainant contends that it holds common law rights in the “CAT RACING” mark.  Complainant provides evidence of its use of the mark since 1997.  The Panelist does find that Complainant’s evidence establishes its right in the “CAT RACING” mark pursuant to Policy paragraph 4(a)(i).  See McCarthy on Trademarks and Unfair Competition, Section 25:74.2 (4^th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required – unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also British Broadcasting Corp. v. Renteria, D2000-0500 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”)..

Complainant asserts that Respondent’s <catracing.com> domain name is identical to Complainant’s “CAT RACING” mark.  The Panelist agrees that the disputed domain name is identical to the mark because the addition of a generic top-level domain such as “.com” does not sufficiently differentiate the domain name from the mark under Policy  4(a)(i).  See Pomellato S.p.A v. Tonetti, D2000-0493) (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Fe’dn of Gay Games, Inc. v. Hodgson & Scanlon, D2000-0432 (WIPO June 28, 2000) (finding that the domain name <gaygames.com> is identical to Complainant’s registered trademark GAY GAMES).

In any event, the <catracing.com> domain name is confusingly similar to Complainant’s registered trademark CAT because the disputed domain name appropriates the entire mark and simply adds a generic term, “racing,” to the end of the mark.  Thus, the Panelist holds that the disputed domain name is confusingly similar to Complainant’s mark because the addition of a generic term to a famous mark does not sufficiently distinguish the domain name from the CAT mark.  See Caterpillar Inc. v. Roam the Planet, Ltd., D2000-0275 (WIPO Mar. 25, 2000)(finding that “the addition of the word ‘machines’ as a suffix to the word “cat” in the domain name under consideration does not serve to distinguish the domain name from the trademark CAT, but rather would reinforce the association of the Complainant’s trademark with its primary line of products”); see also Pfizer, Inc. v. Papol Suger, D20002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to Complainant’s mark).

Rights or Legitimate Interests

The Panelist finds that Respondent is not commonly known by “CAT RACING” or <catracing.com> nor is it licensed to use those names.  The Panelist finds and concludes that Respondent has failed to establish any rights to or legitimate interests in the disputed domain name pursuant to Policy paragraph 4(c)(ii).  See RMO, Inc. v. Burbrdige, FA 96949 (Nat. Arb. Forum May 16, 2001)(interpreting Policy paragraph 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Registration and Use in Bad Faith

Based on the fame of Complainant’s mark, it is evident that Respondent necessarily had actual or constructive knowledge of Complainant’s rights in its mark.  Thus, Respondent’s registration of a domain name identical or confusingly similar to Complainant’s marks, despite actual or constructive knowledge of Complainant’s rights, demonstrates Respondent’s registration of the <catracing.com> domain name in bad faith.  See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9^th Cir. Feb. 11, 2002) (finding that “[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse”).

The Panelist understands Respondent’s frustration from the apparent Complainant’s change of mind with respect to the disputed domain name.  In his view, however, this does not rise to the level of any kind of estoppel.  The Panelist believes Respondent would be well advised to register the domain name <catraces.com> as suggested by Complainant.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <catracing.com> domain name be TRANSFERRED from Respondent to Complainant.

JUDGE IRVING H. PERLUSS (Retired), Panelist
Dated: September 30, 2003

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[1] It is of interest to note that Webster’s Ninth New Collegiate Dictionary (1983) p. 213, contains the mark CAT defined as “trademark – used for a Caterpillar tractor.”

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