WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Caterpillar Inc. v. Acquisitie Belgie

Case No. D2012-2060

1. The Parties

The Complainant is Caterpillar Inc. of Peoria, Illinois of United States of America, represented by Hogan Lovells (Paris) LLP, France.

The Respondent is Acquisitie Belgie of Maasmechelen, Belgium.

2. The Domain Name and Registrar

The disputed domain name <usedcatmachinery.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2012. On October 18, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 18, 2012, 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.

The Center verified that 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 October 30, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 19, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2012.

The Center appointed Nicholas Smith as the sole panelist in this matter on December 3, 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 a leading manufacturer of heavy equipment, including construction and mining equipment, diesel and gas engines, industrial gas turbines and diesel-electric locomotives. It was founded in 1925 in Peoria, Illinois and since the 1950s has set up numerous foreign subsidiaries and operations around the world. The Complainant operates in 500 locations in over 180 countries. In 2011 it had revenues of USD 60.138 billion and profits of USD 4.928 billion.

The Complainant has sold its heavy equipment products under the Caterpillar and Cat brands for many years. The “Cat” brand is both represented as a word and a figurative mark. The Complainant has held trade mark registrations for the word mark CAT (the “CAT Mark”) since at least 2000, having registered the CAT Mark in the European Union for services in classes 35, 39 and 42 in that year. The Complainant also maintains an official website at “www.cat.com”.

The Domain Name <usedcatmachinery.com> was registered on October 16, 2006. The Domain Name redirects to a website maintained by the Respondent (“Respondent’s Website”). The Respondent’s website uses a predominantly yellow and black colour scheme and prominently displays the name of the Respondent in the top right-hand corner. The Respondent’s website advertises that the Respondent sells used construction equipment and displays photos of the Complainant’s products. It also indicates that the Respondent sells used construction equipment provided by competitors of the Complainant, including Volvo and JCB products. A visitor to the Respondent’s site has the opportunity to conduct a search through the Respondent’s inventory, which appears to include construction equipment from many companies, including the Complainant. There is no indication on the Respondent’s website what the relationship between the Respondent and the Complainant is, although a page on the Respondent’s website does note that the Respondent “has more than30 years of Caterpillarexperience”. At various time the Respondent’s website has contained material copied from the Complainant’s press releases about the Complainant’s products.

The Respondent is a company based in Belgium, founded in 1990 and in the business of selling, importing, exporting, transporting and renting used heavy equipment. The Respondent is not an official distributor of the Complainant’s products. While the Respondent claims to specialise in the Complainant’s products, from both the Respondent’s website and its official website at “www.acquisitiebelgie.com” it is clear that it also sells heavy equipment made by the Complainant’s competitors.

Upon receiving a cease and desist letter from the Complainant’s counsel, the Respondent responded to the letter and acknowledged that the Respondent overhauled and sold heavy machinery, both that of the Complainant and machinery produced by other entities but refused to transfer the Domain Name, or provide a disclaimer that the Respondent was not an official distributor of the Complainant’s products.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainant’s CAT Mark;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

The Complainant is the owner of the CAT Mark. It owns a Community trade mark registration for the CAT Mark through the whole of the European Union, including Belgium, the location of the Respondent.

The Domain Name consists of the CAT Mark in its entirety with the addition of the terms “used” and “machinery”. These additional words are merely descriptive and therefore not sufficiently distinctive to distinguish the Domain Name from the Complainant’s CAT Mark. Furthermore, the addition of the terms “used” and “machinery” actually reinforce the confusingly similarity between the CAT Mark and the Domain Name as they refer to the core activities of the Complainant.

The Respondent has no rights or legitimate interests in the Domain Name. The Respondent does not hold a trade mark for CAT or any similar trade mark. The Respondent is not an authorised user of the CAT Mark nor is the Respondent authorised or affiliated with the Complainant. Rather the Respondent uses the Domain Name containing the CAT Mark to re-sell products including those of the Complainant and its competitors. In the case of Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903, the panel set down four requirements as to whether such usage is a bona fide offering. They were:

“- Respondent must actually be offering the goods or services at issue. E.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (WIPO Jan. 24, 2001) (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering).

- Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. v. Technilab, WIPO Case No. D2000-1774 (WIPO Feb. 26, 2001) (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., Case No. 0109 (CPR July 25, 2001) (bait and switch is not legitimate).

- The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211 (WIPO April 25, 2001) (no bona fide offering where website's use of Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering v. Luton, WIPO Case No. D2000-1201 (WIPO Nov. 14, 2000) (no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent's deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Prods., WIPO Case No. D2001-0344 (WIPO June 14, 2001) (no bona fide use when respondent suggested that it was the manufacturer of complainant's products).

- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525 (WIPO Jan. 29, 2001) (“a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark”).”

In the present proceeding, the Respondent does not accurately disclose its relationship with the Complainant, nor is the Respondent using the website to sell only the Complainant’s products. The Respondent’s use of the Domain Name does not give the Respondent any rights or legitimate interests in the Domain Name. Furthermore the Respondent is not commonly known by the Domain Name, nor is it using the Domain Name for legitimate non-commercial or fair use.

The Domain Name was registered and is being used in bad faith. The Respondent, being a reseller of the Complainant’s products, must have known of the Complainant and its reputation at the time the Domain Name was registered. Furthermore, the Respondent is using the Domain Name to sell heavy equipment, both equipment manufactured by the Complainant and equipment manufactured by the Complainant’s competitors. Such use amounts to use intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, or affiliation of its website, in accordance with paragraph 4(b)(iv) of the Policy.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the CAT Mark, having registrations for CAT as a trade mark in the European Union, as well as other locations around the world.

The Domain Name consists of the CAT Mark and the words “used” and “machinery”. The addition of these words does not distinguish to the Panel the Domain Name from the CAT Mark. Rather, as the Complainant manufactures heavy machinery as its core activity, the addition of the word “machinery” actually reinforces the confusing similarity between the CAT Mark and the Domain Name, see Caterpillar INC. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275. The Panel finds that the Domain Name is confusingly similar to the Complainant’s CAT Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c))”.

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the CAT Mark or a mark similar to the CAT Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial use.

The Respondent uses the Domain Name to operate a website to sell used machinery, including used Caterpillar machinery. The Respondent also maintains its own website at www.acquisitiebelgie.com, which it uses to sell the same products.

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) paragraph 2.3 summarizes the consensus views of UDRP Panels in response to the question about whether a reseller/distributor of trademarked goods or services has rights or legitimate interests in a domain name which contains such a trademark in the following manner:

“Normally, a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements. These requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site's accurately and prominently disclosing the registrant's relationship with the trademark holder. The respondent must also not try to "corner the market" in domain names that reflect the trademark. Many panels subscribing to this view have also found that not only authorized but also unauthorized resellers may fall within such Oki Data principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark.”

Such principles have been adopted in a variety of UDRP Decisions, starting with the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. While the test outlined in the WIPO Overview 2.0 and Oki Data is not necessarily the sole or exclusive way in which a respondent in using a domain name to distribute goods can demonstrate rights or legitimate interests, it does provide some useful tests for a panel in determining when it is appropriate, under the Policy, for a reseller to be able to use another trade mark holder’s trademark in their domain name.

In the present proceeding, the Respondent appears to be offering genuine used Caterpillar machines from the Respondent’s Website. However the Respondent’s Website also appears to sell machines manufactured by other companies. Furthermore, the Respondent’s Website does not accurately and prominently disclose the Respondent’s relationship with the Complainant, in particular that it is not an authorised dealer or has any particular connection with the Complainant. Members of the public who are interested in used Caterpillar products may visit the Respondent’s Website on the assumption that the Respondent is an authorised dealer or reseller of Caterpillar products. This is not the case. In addition, visitors to the Respondent’s Website may be attracted to the website by Domain Name but may then purchase, machinery made by the Complainant’s competitors sold by the Respondent from the Respondent’s Website. It is for these reasons that the fact that the Respondent appears to be offering genuine used Caterpillar machines does not amount to use of the Domain Name for a bona fide offering of goods and services.

The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. It has chosen not to do so despite the fact that the Complaint was sent to its proper address, where it had engaged in prior correspondence with the Complainant. In the absence of such a response the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) the Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

The Panel finds that the Respondent at the time of registration of the Domain Name knew of the existence of Complainant. The Domain Name resolves to a website that displays the CAT Mark and sells used machinery made by the Complainant. The Respondent’s website asserts that the Respondent has “has more than 30 years of Caterpillarexperience”. This clearly indicates an awareness of the Complainant and its rights in the CAT Mark at the time of registration.

The Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights and legitimate interests of its own amounts to registration in bad faith under the circumstances.

The Respondent registered the Domain Name for the purposes of operating a website specifically to benefit from the Domain Name. The website was to sell used heavy machinery, the Respondent’s area of business. The Respondent was aware of the reputation of the Complainant’s CAT Mark and must have been aware that the Domain Name would attract:

a) People interested in purchasing used Caterpillar products; and

b) People interested in purchasing used Caterpillar products from an authorised dealer.

The Respondent is not an authorized dealer of the Complainant’s products, and maintains is own website at “www.acquisitiebelgie.com”. Rather than relying on its own website, which reflects its own business name, the Respondent used the Domain Name to attract customers and then attempts to sell visitors the whole range of used heavy machinery sold by the Respondent, not just Caterpillar products. Furthermore the absence of any disclaimers on the website as to the relationship between the Respondent and the Complainant and the fact that the Respondent’s Website has contained material copied from the Complainant’s website means that the Respondent both creates and benefits from any confusion customers may have about whether they are dealing with an authorized Caterpillar dealer.

In the present circumstances, the Respondent is using a Domain Name that implies a connection with the Complainant to sell products other than those of the Complainant. Consequently, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant’s CAT Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith 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 Domain Name <usedcatmachinery.com> be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Date: December 17, 2012