Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

1. The Parties

The Complainant Caterpillar Inc. 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 U.S.A.

Respondent Roam the Planet, Ltd., the registrant of the domain name catmachines.com, has an address at Parliament Street, Magna Carta Crt, Nassau, Bahamas. In its Response, the Respondent declares that Roam the Planet, L.L.C. is an Idaho, U.S.A. limited liability company, whose principal address is Roam the Planet, L.L.C., P.O. Box 447761, Boise, Idaho 83704 and whose parent company is Roam the Planet, Ltd., a Bahamas company.

2. The Domain Name and Registrar

The domain name in issue is catmachines.com. The registrar is Network Solutions, Inc.

3. Procedural History

The WIPO Arbitration and Mediation Center (the "Center") received Caterpillar Inc.’s Complaint by e-mail on April 8, 2000 and by hard copy on April 10, 2000.

On April 12, 2000, the Center transmitted via e-mail to Network Solutions, Inc. a request for registrar verification in connection with this case.

On April 13, 2000, Network Solutions, Inc. transmitted to the Center by e-mail Network Solutions Inc.’s verification response, confirming that the registrant of the domain name in issue is Roam the Planet, Ltd., that the technical contact is Don M. Nicolaus in Hayward, California and that the billing contact is the Vice-President, Administration, Roam the Planet L.L.C., in Boise, Idaho.

By its Formal Requirements Complaints Checklist, completed April 13, 2000, the Center confirmed that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

By letter of April 17, 2000, the Center notified the Respondent that an Administrative Proceeding had been commenced against it pursuant to the aforesaid Policy, concerning the domain name catmachines.com. The Center advised the Respondent that the Complaint satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules, that the formal date of commencement of the Administrative Proceeding was April 17, 2000, and that the last day for the Respondent to send its Response to the Complainant and to the Center was May 6, 2000.

On April 19, 2000, the Center received by e-mail an amendment to the Complaint entitled "First Amended Complaint", and received a hard copy of the same on April 26, 2000.

On April 27, 2000, the Respondent’s authorized representative wrote by e-mail to the Center, enquiring whether the Respondent’s Response could be provided to the Center via e-mail, and what the latest date for submission could be. By a letter later the same day, the Center advised the Respondent by e-mail that its Response should be submitted in hard copy and in electronic form, and that its Response should be submitted to the Center within twenty days of the date of commencement of the Administrative Proceeding. Since the Administrative Proceeding commenced on April 17, 2000, the last date for submission of a Response by the Respondent was May 6, 2000, and the Center further advised the Respondent that this communication was being copied to the Complainant as required by the Rules.

On April 27, 2000, the Center forwarded to the Respondent a copy of the Amended Complaint.

On May 5, 2000, the Center received the Response of the Respondent by e-mail and, on the same date by e-mail, advised both the Complainant and the Respondent of its receipt that day of the Response.

The Complaint contains the statement as required by Rule 3(b)(xii) that a copy thereof had been sent to the Respondent.

Although the Response does not contain a statement, as required by Rule 5(b)(vii), that a copy of the Response had been sent or transmitted to the Complainant, in a letter from the Respondent’s authorized representative to the Center dated May 5, 2000, the Respondent advised that, in accordance with Rule 5(b)(vii), the Respondent had forwarded an electronic copy of the prepared Response to all contacts identified in the Complaint, which included the contacts for the Complainant.

On May 12, 2000, the Center forwarded to the Parties a Notification of Appointment of Administrative Panel and a projected decision date. This advised the Parties that Joan Clark was appointed as the single member of the Administrative Panel and advised that the decision of the Panel was required by May 25, 2000, absent exceptional circumstances.

4. Factual Background and Parties’ Contentions

A. The Complaint

The Complainant states that it is "a long-established, multinational company with business operations in many areas", to which the Respondent "makes no challenge". The Complainant continues to add that these areas include "the development, manufacture, distribution, marketing and sale of earth moving and construction machinery and equipment, repair and maintenance services therefore …".

The Complainant states that it has adopted and continuously used since adoption, the inherently distinctive marks CATERPILLAR and CAT and design marks CATERPILLAR and CAT. The Complainant attaches as exhibits several of its CATERPILLAR and CAT marks as registered with the United States Patent and Trademark Office showing Complainant to be the owner of the marks.

The Respondent has challenged the Complainant’s claim to these registered trademarks. Since no evidence has been produced by the Respondent to cast doubt on the authenticity or validity of the trademark registrations produced by the Complainant, the Administrative Panel accepts that the registrations of CATERPILLAR and CAT as word marks, and of CAT as a design mark are authentic and enjoy a presumption of validity. The Respondent’s challenge may have been intended to refer to the extent of protection granted by such trademarks, and not to the Complainant’s ownership of the registered trademarks or their validity.

The Complainant also alleges that it owns, uses and has registered domain names that include "caterpillar" and "cat" such as www.caterpillar.com and www.cat.com. The Respondent stated it "made no challenge" to this claim by the Complainant.

The Complainant states that its CATERPILLAR marks and the goodwill symbolized by them are exceedingly valuable corporate assets, and that in 1999, the Complainant invested in excess of $50,000,000 US in advertising and promoting the CATERPILLAR marks and sold in excess of $19,000,000,000 U.S. in products and services under the marks.

The Complainant further states that the domain name at issue consists of the Complainant’s CAT mark in combination with the term "machines" which describes the Complainant’s principal category of products and that, as such, it is likely to cause confusion, mistake or deception as to the source, origin, sponsorship or approval of Respondent’s services and that consumers and others are likely to believe the Complainant authorizes or controls the Respondent’s web site and services or that the Respondent is associated with or related to the Complainant.

The Complainant further states that the Respondent’s lack of rights in the disputed domain name, and its bad faith in registering and using it, are demonstrated by numerous facts, including specifically the following:

"(i) Long after Complainant’s adoption, use and registration of its Caterpillar marks and domain names, Respondent began making unauthorized use of those marks by registering the domain name at issue, "catmachines.com".

(ii) The page located at this domain name address announces that the domain name is available for sale, rent, lease or joint venture. Interested persons are invited to visit www.powernames.com or to contact powernames.com at addresses in Boise, Idaho, Nassau, Bahamas, and Alberta, Canada. Only the address in Boise, Idaho is complete. Powernames.com identifies its services as domain name registration and premium names dealer and appears to be serving as a broker for Respondent’s warehouse of domain names. A printout of this page is attached as Exhibit E.

(iii) On its web page, powernames.com acknowledges that it sells domain names with "easy to remember addresses" and encourages visitors to lock-up one of the "few remaining «winning» Domain Names." It lists for sale several domain names that incorporate famous and distinctive trademarks to which neither Respondent nor Powernames.com have any evident rights, including, 7upgame.com, cokegame.com, deeremachines.com, and the domain name at issue, catmachines.com. The domain names in this list are acknowledged to be sole property of Respondent, Roam the Planet L.L.C. A printout of powernames.com site is attached as Exhibit F. The registration of numerous domain names that contain the names or marks of well-known business entities suggests an intent to profit from those registrations and is inconsistent with an intent to engage in any legitimate use of the domain names. See Stella D’Oro Biscuit Co., Inc. v. The Patron Group, Inc., ICANN Case No. D200012 ¶ 5(b)(1), (2); Nabisco Brands Co. v. The Patron Group, Inc., ICANN Case No. D2000-0032 ¶ 5(b)(1), (2); Parfums Christian Dior v. I Netpower, Inc., ICANN Case No. D2000-0022 ¶6 (c) (cases attached as Exhibit G).

(iv) Complainant sent Respondent and Powernames.com cease and desist letters on August 31, 1999. Both letters were returned as undeliverable. Copies of the letters are attached as Exhibits H and I. Respondent’s failure to maintain with its domain name registrar accurate contact information is further evidence of bad faith.

(v) After Complainant filed its original complaint in this matter, Respondent wrote Complainant and offered to sell the domain name to Complainant for $9,000.00. Complainant declined the offer. Copies of this correspondence are attached as Exhibits J and K."

The Complainant also states that the Respondent’s actions show it is improperly trafficking in the disputed domain name, and demonstrates that it has registered and is using the domain name in bad faith, in violation of paragraph 4.a of the Policy.

For the above reasons, the Complainant requests the Administrative Panel to issue a decision that the domain name be transferred to the Complainant.

B. The Response

The Respondent argues in its Response that the Administrative Panel does not have jurisdiction to decide this dispute on the alleged ground that the Complainant cannot show convincing evidence to establish the three requirements:

1. that the domain name is identical or confusingly similar to trademarks in which the Complainant has rights,

2. that the Respondent has no rights or legitimate interests in the domain name, and

3. that the domain name is registered and is being used in bad faith.

The Administrative Panel determines that, whether or not the Complainant could show convincing evidence as to the foregoing, the Administrative Panel nevertheless has jurisdiction, as was agreed to by the Respondent in its agreement with Networks Solutions, Inc. that if its use of the domain name registration were challenged by a third party it would be subject to the provisions set forth in the Dispute Policy in effect at the time of the dispute.

The Respondent challenges the Complainant’s claim to the registered trademarks CAT and CATERPILLAR and, in support, refers to several domain name arbitration decisions which the Administrative Panel finds are not applicable to the present situation. In E Auto L.L.C. v. Net Me Up, Case No. D2000-0104, the Panel concluded that the domain name eautomotive.com was confusingly similar to the trademark EAUTO, because the domain name incorporated in its entirety a registered trademark which was entitled to a rebuttable presumption of distinctiveness. (The Panel concluded that the domain name should not be transferred to the Complainant, on other grounds.)

In Gatewaym Inc. v. Pixelera.com, Inc., Case No. D2000-0109, the domain name was registered by the Respondent prior to the registration of the Complainant’s trademark in the United States. In Pet Warehouse v. Pets.Com, Inc., Case No. D2000-0105. the Panel determined that the Complainant had not established its rights in the trademark or service mark in question.

The Respondent disputes the Complainant’s claim based upon "machines" being a word describing a principal category of products, and alleges that "likely confusion, mistake or deception related to the source, origin, sponsorship or approval by the Complainant is not relevant to this case". The Respondent further indicates that its evidence shows multiple usages for such a domain, and argues that any potential confusion can be eliminated through searching means on the internet.

The Respondent claims that there are many plausible and credible usages of catmachines.com as a domain, and refers to 1,221 active internet domains containing "machines.com". This is irrelevant as those domain names are not at issue in this dispute. The Respondent also refers to 1,294 registered trademarks containing "cat" and 116 registered trademarks containing "machines". These assertions are irrelevant.

The Respondent identifies "numerous legitimate domain uses" for a domain combining "cat" with "machines", such as CAT for Computer Aided Technologies, Cat (the animal) associated with machines (e.g. Littermaid), Category 5, CATscan, Center for Advanced Technology (CAT), Computed Axial Tomography (C.A.T.), Covert Action Teams (C.A.T.) and Catalog (abbreviation). This information is also irrelevant.

The Respondent alleges that it has "developing interests relating to catmachines.com", which include:

1. Site development discussions with Windmere Innovative Pet Products Inc. to resell widely recognized Littermaid products, and

2. Offering catmachines.com to the general public for development, sale, rental or co-venture.

The Respondent denies that it lacks rights in the disputed domain name, and asserts that the Complainant is engaged in "reverse domain hijacking".

The Respondent urges that the use of the Complainant’s trademarks prior to registration of catmachines.com is irrelevant because, according to the Respondent, "cat" and "machines" combined represent two popular generic words which added to the general top-level domain extension ".com" (gTLD) create an unusual, distinctive, brandable and potentially valuable domain. The Administrative Panel finds this is an unfounded argument in view of the extensive use of the trademark CAT in association with machines.

The Respondent further contends that domain sales constitute "fair use" because domain resellers provide valuable services to the internet community at large. The Administrative Panel concludes that the domain name in dispute is not being used but rather it is being offered for sale.

The Respondent makes no challenge to the Complainant’s claim that "the page located at this domain name address (catmachines.com) announces that the domain name is available for sale, rent, lease or joint venture", and does not contest the Complainant’s claim that "powernames.com identifies its services as domain name registration and premium names dealer". The Respondent adds that PowerNames.com does in fact serve as the domain broker for Roam the Planet, Ltd. and acts as agent to obtain domains for its customers when requested.

The Respondent further states it does not contest the Complainant’s claim that "it sells domain names with easy to remember addresses", and does not contest that it does "encourage visitors to lock-up one of the few remaining «winning» domain names".

The Respondent denies that it lists for sale several domain names that incorporate famous and distinctive trademarks to which neither Respondent nor powernames.com have any evident rights.

The Respondent disputes the Complainant’s claim that "the registration of numerous domain names that contain the names or marks of well-known business entities suggests an intent to profit from these registrations, and is inconsistent with an intent to engage in any legitimate use of domain names".

The Respondent objects to the Complainant’s claim that the Respondent wrote the Complainant and offered to sell the domain name to the Complainant for $9,000. The Respondent states that, in fact, it was attempting to settle the matter outside arbitration. The Respondent stated that its past domain sales history indicated that a settlement of $9,000 would compensate for Respondent’s time spent while transferring the domain name to the Complainant "at a cost far below fair market value".

The Respondent states it objects to this Arbitration Panel and challenges the latter’s rights under the ICANN domain dispute resolution process, on numerous grounds which need not be traversed here. Objections which Respondent may have to the policies, procedures and dispute resolution process of ICANN should be addressed directly to that body. In the meantime, the Respondent is subject to the terms and conditions of the agreement entered into between Respondent and Network Solutions, Inc., by which Respondent has agreed to abide by the ICANN Policy and Rules.

For the reasons set forth in the Response, the Respondent requests the Administrative Panel to issue a decision that the domain name remain with the Respondent, and that additional rules, "strengthening the act of reverse domain hijacking (RDNH)", be explored and implemented to prevent "further occurrences by corporations and influential individuals and punish those who might engage in such actions".

5. Discussion and Findings

Pursuant to paragraph 4.a of the Policy, the Complainant must prove each of the following in order that the Respondent be required to submit to a mandatory administrative proceeding:

"(i) The domain name in issue is identical, or confusingly similar, to a trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the domain name, and

(iii) The domain name has been registered and is being used in bad faith."

Paragraph 4.b of the Policy sets out four illustrative circumstances which, for the purpose of paragraph 4.a(iii) above, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4.c of the Policy sets out three illustrative circumstances, each of which, if proven, shall demonstrate Respondent’s rights or legitimate interest in the domain name for purposes of paragraph 4.a(ii) above.

A. Identity or confusing similarity of the domain name to a trademark or service mark in which the Complainant has rights

The domain name consists of the word "cat" followed by the word "machines" and ".com". CAT is a registered trademark of the Complainant. Several other trademarks of the Complainant consist of the word "CATERPILLAR".

The Complainant has for many years been using its trademarks CAT and CATERPILLAR primarily in relation to machines, such as earthmoving and construction machinery and equipment. The Complainant has alleged that, in 1999 alone, it invested in excess of $50,000,000 US in advertising and promoting the marks CATERPILLAR and CAT, and the Respondent has stated it makes "no challenge" to this statement. Further, the Complainant has stated it has sold in excess of $19,000,000,000 US in products and services under those marks in 1999.

The registered CATERPILLAR and CAT trademarks are presumed to be valid, and 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.

The domain name is composed of the Complainant’s trademark CAT and the descriptive word "machines". Since the Complainant’s trademark has been used extensively in association with machines, the Administrative Panel finds that the domain name "catmachines.com" is confusingly similar to the trademarks of the Complainant.

B. Rights or legitimate interests of the Respondent in the domain name

The Respondent’s "use" of the domain name catmachines.com is not a use in connection with the bona fide offering of goods or services. The Respondent, by its own admissions, has "developing interests" relating to catmachines.com, which interests include "site development discussions with Windmere Innovative Pet Products, Inc. to resell widely recognized Littermaid products", and also "offering catmachines.com to the general public for development, sale, rental or co-venture." The Respondent makes no challenge to the Complainant’s claim that the page located at catmachines.com "announces that the domain name is available for sale, rent, lease or joint venture", and the Respondent does not contest the Complainant’s claim that "powernames.com identifies its services as domain name registration and premium names dealer." The Respondent admits that powernames.com serves as the Respondent’s domain broker and acts as agent to obtain domains for its customers. Furthermore, the Respondent does not contest the Complainant’s claim that "it sells domain names with easy to remember addresses".

According to all the assertions of both parties, the Respondent’s activity, as far as the domain name in dispute is concerned, is to try to find a buyer for that domain name. Such activity is not and has not been directed to the use of the domain name for the offering of goods or services, other than the domain name itself. There is no evidence that the Respondent has been commonly known by the domain name itself, nor is there any evidence that the Respondent is making a legitimate, non-commercial or fair use of the domain name.

The Administrative Panel therefore finds that the Respondent has no rights or legitimate interests in the domain name.

C. Registration and useof the domain name in bad faith

The passages from the Response quoted in paragraph B above clearly indicate that the domain name was registered primarily for the purpose of selling, renting or otherwise transferring its registration to the Complainant or to a member of the public, for valuable consideration in excess of any documented out-of-pocket costs directly related to the domain name.

The Respondent’s written offer to the Complainant, after the filing of the Complaint, to sell the domain name to the Complainant for $9,000 is further indication that the domain name was registered primarily for the purpose of selling it for a consideration in excess of the documented out-of-pocket costs; no evidence was produced by Respondent to establish that the actual cost of registration and maintenance of the domain name could approach $9,000.

The Complainant has produced a copy of the web page of powernames.com which lists registered domain names which are declared to be the sole property of "Roam the Planet, Ltd. until sold", that is of the Respondent. The very extensive list produced as Exhibit F to the Complaint, includes such well-known names as ainsley.net, 7upgame.com, cokegame.com, deeremachines.com, as well as the domain name in dispute, catmachines.com.

The conclusion to be drawn from this list, supported by the statements found in the Response, is that the Respondent has been in the business of registering or acquiring domain names for the purpose of selling them, not for the purpose of carrying on business under any particular domain name. In fact, it would appear impossible that the Respondent could use each of the domain names which it is stated to own, in providing goods and services in commerce. No evidence has been adduced by the Respondent that it intended to use the domain name in dispute, or any of the domain names so listed, for any purpose other than to sell them at a profit. The Respondent’s offer to transfer the domain name catmachines.com to the Complainant for $9,000 is a confirmation of the above.

6. Decision

The Administrative Panel finds that the domain name catmachines.com is confusingly similar to the trademarks CAT and CATERPILLAR of the Complainant, that the Respondent has no rights or legitimate interests in respect of the domain name and that the domain name has been registered and is being used in bad faith.

Accordingly, the Administrative Panel requires that the Respondent’s registration of catmachines.com be transferred to the Complainant Caterpillar Inc.

Joan Clark
Presiding Panelist

Date: March 25, 2000