WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Caterpillar Inc. v. Frendi Nicon

Case No. D2011-1969

1. The Parties

The Complainant is Caterpillar Inc. of Peoria, Illinois, United States of America, represented by The GigaLaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States of America.

The Respondent is Frendi Nicon of Changsha, Hunan, China.

2. The Domain Name and Registrar

The disputed domain name <catbootssale.com> is registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2011. On November 9, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On November 14, 2011, the Center transmitted an email to the parties in both Chinese and English language regarding the language of proceedings. On November 14, 2011, the Complainant confirmed its request that English be the language of proceeding. The Respondent did not comment on the language of proceedings by the specified due date. On November 22, 2011, the Center received an amendment to the Complaint from the Complainant regarding additional evidence of bad faith.

The Center verified that the Complaint together with the amendment to 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2011.

The Center appointed Jonathan Agmon as the sole panelist in this matter on January 6, 2012. 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.

4. Factual Background

The Complainant is an American corporation with extensive operations around the world. The Complainant is the world’s largest manufacturer of construction and mining equipment, diesel and natural gas engines and industrial gas turbines. The Complainant offers a variety of other services and products, and has licensed the CAT trademark for use in connection with footwear, including boots..

The Complainant serves customers in more than 180 countries around the globe with more than 300 products, and employs approximately 104,490 employees worldwide.

The Complainant is a publicly traded company listed on the New York Stock Exchange under the mark CAT.

The Complainant is the owner of multiple worldwide trademark registrations for the mark CAT. For example: United States trademark registration No. 1,908,556 – CAT (logo) with the registration date of August 1, 1995; United States trademark registration No. 2,488,264 – CAT with the registration date of September 11, 2001; The People's republic of China trademark registration No. 1728319 – CAT with the registration date of March 14, 2002; Community trademark registration No. 000446278 – CAT (logo) with the registration date of February 4, 2004; United States trademark registration No. 3,365,449– CAT with the registration date of January 8, 2008, and many more.

The Complainant has been using the CAT trademark in connection with footwear, since at least 1991.

The Complainant also developed its presence on the Internet and is the owner of several domain names consisting of the term “cat”. For example: <catfootwear.com> and <cat.com>.

The disputed domain name <catbootssale.com> was registered on September 8, 2011.

The disputed domain name <catbootssale.com> leads Internet users to a website that markets footwear bearing the Complainant's marks.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the CAT trademark, in which the Complainant has rights, seeing that it incorporates the CAT trademark as a whole. The Complainant further contends that the beginning of the URL (“http://www.”) and the addition of the gTLD “.com” are disregarded for this purpose.

The Complainant further argues that the addition of the descriptive words “boots” and “sale” are insufficient to avoid confusing similarity between the CAT trademark and the disputed domain name. The Complainant further contends that the addition of the descriptive words “boots” and “sale” are likely to increase consumer confusion, since they are related to the Complainant’s business.

The Complainant further argues that numerous UDRP decisions have recognized the Complainant’s well-established rights in its famous CAT trademark.

The Complainant further argues that the Respondent has no rights of legitimate interests in respect of the disputed domain name.

The Complainant further argues it has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the CAT trademark in any manner.

The Complainant further argues that the Respondent is not generally known by the disputed domain name, or has acquired trademark or service marks rights in the disputed domain name.

The Complainant further argues that it registered its first CAT trademark more than 100 years ago.

The Complainant further argues that the Respondent has registered and is using the disputed domain name in bad faith.

The Complainant further argues that the Respondent uses the website under the disputed domain name to market footwear that is falsely associated with the Complainant and bears the Complainant's mark, yet the footwear is not manufactured, distributed or licensed by the Complainant and the Respondent is not actually shipping any footwear to customers who order products from the website associated with the disputed domain name.

The Complainant further argues that the Respondent registered the disputed domain name for commercial gain. The Respondent further contends that by including the Complainant's logo on the website under the disputed domain name, the Respondent has increased the likelihood of confusion.

The Complainant further argues that the Respondent was aware of the Complainant’s existence and of the CAT trademark and products at the time the Respondent registered the disputed domain name.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of the Proceedings

Paragraph 11(a) of the Rules provides that:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

The language of the Registration Agreement for the disputed domain name is Chinese.

The Complainant requested that the language of proceedings should be English.

The Panel cites the following with approval:

“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).

The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of proceedings:

a) The disputed domain name <catbootssale.com> includes the Complainant's mark, as well as other words in the English language, namely “boots” and “sale”;

b) The Respondent is operating on the website under the disputed domain name an online marketplace which markets footwear, while using the English language.

c) The Respondent did not object to the Complainant’s request that English be the language of proceedings.

Upon considering the above, the Panel decides to render the Complainant’s request and rules that English be the language of proceedings.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of numerous worldwide trademark registrations for the marks CAT. For example: United States trademark registration No. 1,908,556 – CAT (logo) with the registration date of August 1, 1995;United States trademark registration No. 2,488,264 – CAT with the registration date of September 11, 2001; The People's republic of China trademark registration No. 1728319 - CAT with the registration date of March 14, 2002; Community trademark registration No. 000446278 – CAT (logo) with the registration date of February 4, 2004; United States trademark registration No. 3,365,449 – CAT with the registration date of January 8, 2008, and others.

Also the Complainant's rights in the CAT mark have been established in numerous UDRP decisions (see e.g.Caterpillar Inc. v. personal, WIPO Case No. D2010-2190).

The disputed domain name <catbootssale.com> differs from the registered CAT trademark by the additional words “boots” and “sale” and the additional gTLD “.com”.

The disputed domain name integrates the Complainant’s CAT trademark in its entirety, as a dominant element.

The additional words “boots” and “sale” do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s CAT trademark, as they are common terms directly relating to the Complainant’s business.

Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name <redbull-jp.net> is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd., WIPO Case No. D2006-0909).

Indeed, “[t]he mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red BullGmbH v. Chai Larbthanasub, WIPO Case No. D2003-0709).

The addition of the gTLD “.com” to the disputed domain name does not avoid confusing similarity. (See F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451, and Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Thus, the gTLD “.com” is without legal significance since the use of a gTLD is technically required to operate the domain name.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights.

C. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1).

In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent failed to assert any such rights, or legitimate interests.

The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its CAT trademark or a variation of it. The Respondent did not submit a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Respondent did not rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

D. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).

The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the CAT trademark at least since the year 1995. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

The Complainant also provided evidence to demonstrate its trademark's vast goodwill. The Panel cites the following with approval: “The Respondent's selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence… Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent's registration and use of the disputed domain name other than that of bad faith” (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name.

Indeed, “when a domain name is so obviously connected with a Complainant, it's very use by a registrant with no connection to the Complainant suggests ‘opportunistic’ bad faith”. (Tata Sons Limited v. TATA Telecom Inc/Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671).

Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the domain name it had intentionally attempted to attract, for commercial gain, Internet users to the websites or other on-line locations to which the disputed domain name is resolved to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites or locations or of a product or service on the websites or locations to which the domain name resolved to.

The disputed domain name leads Internet users to a website that engages in marketing footwear bearing the Complainant's trademark, while displaying the Complainant’s logo, without the Complainant's authorization.

The Respondent’s use of the disputed domain name to resolve to a website that is designed to look like a website associated with the Complainant which promotes goods similar or identical to the goods being offered by the Complainant is clear evidence in the Panel’s view that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making of its widely known CAT trademark and intended to trade off the value of these. The Respondent’s actions therefore constitute bad faith. (See Herbalife International, Inc. v. Surinder S. Farmaha, WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”).

The Complainant provided evidence showing that the Respondent has also registered many other domain names incorporating the well-known trademarks of others. This pattern of conduct was found by previous UDRP panels to be a classic conduct of cybersquatting (see The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113).

Furthermore, the disputed domain name is confusingly similar to the Complainant’s trademark. Previous UDRP panels ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (See Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the use of the Complainant’s trademark in the disputed domain name, the Respondent's pattern of conduct and the similarity between the disputed domain name and the Complainant’s mark, the Panel draws the inference that the disputed domain name was registered and used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

7. Decision

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 name <catbootssale.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Dated: January 20, 2012