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Caterpillar Inc. v. Off Road Equipment Parts [2000] GENDND 1232 (10 October 2000)

National Arbitration Forum

Caterpillar Inc. v Off Road Equipment Parts

Claim Number: FA0008000095497

The Complainant is Caterpillar Inc., Peoria, IL, USA ("Complainant"). The Respondent is Off Road Equipment Parts, Alcoa, TN, USA ("Respondent").

The domain name at issue is "catparts.com", registered with Network Solutions.

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 the panelist in this proceeding.

Judge Ralph Yachnin as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on August 28, 2000; The Forum received a hard copy of the Complaint on August 28, 2000.

On September 5, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name "catparts.com" is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's UDRP.

On September 5, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 25, 2000 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@catparts.com by e-mail.

On October 4, 2000, pursuant to Complainant's request to have the dispute decided by a One Member panel, the Forum appointed Judge Ralph Yachnin, as Panelist.

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

A. Complainant

The Complainant Caterpillar, Inc., is a long-established, multinational company involved in the manufacturing and sale of earthmoving and construction machinery, parts, repair and maintenance services therefor through licensees, all of whom have entered into service mark agreements permitting them to use the Caterpillar marks in connection with the sale and

services of Caterpillar parts.

In 1963, 1972 and 1990 the Complainant registered with the United States Patent and Trademark Office the trademark "Cat" and in 1964 and 1990 registered the service mark "Cat" for among other things "parts," "maintenance" and "repair" of its products. Since that time the Complainant has continuously used these marks. These registrations were long before the Respondent's registration of the domain name at issue in 1997.

Complainant also owns domain names that include "Cat" and "Caterpillar."

The domain name "Catparts.com" consists of Complainant's "Cat" mark in combination with a term that describes a principal category of Complainant's products -- parts. Respondent's domain name is confusingly similar to Complainant's "Cat" mark, and likely to cause confusion in that others may believe that Complainant authorized the web site and that Respondent is

associated with Complainant.

Respondent has no right or legitimate interest in the domain name at issue.

Respondent's bad faith in using the domain name is evidenced by:

B. Respondent

Respondent Off Road Equipment Parts is a Tennessee corporation with one office and was incorporated in 1996. Its sole business is the purchase and sale of new and used parts for equipment manufactured by the Complainant.

The domain name "www.catparts.com" describes the Respondent's legitimate ongoing business.

If one types the domain name as a URL, the Respondent's homepage is displayed and a prominent disclaimer disassociating Respondent from Complainant. Since the majority of Respondent's customers are dealers, they are not likely to be confused about the Respondent's relationship with Complainant.

Only one of the Complainant's web sites, i.e., "cat.com" was registered by the Complainant. The other three were acquired by Name Transfer Decisions by arbitration in the year 2000. Further, Complainant makes no use of these three.

Complainant has failed to identify any instances of actual confusion.

Respondent has taken steps to make sure that consumers will not access the "catparts.com" web site when searching for Caterpillar or Cat parts by not listing the site with any search engine. Therefore, the only way to access "catparts.com" is to specifically type in that web address.

Respondent denies that the domain name is "confusingly similar and likely to (be) confuse(d) "with the Complainant's domain name "cat.com."

Complainant has not shown a single instance of actual confusion.

In June 2000, Complainant's counsel wrote to Respondent that its homepage was likely to lead to confusion in three instances:

In accordance with Complainant's request, Respondent revised the contents of its website. Hence there is no longer any likelihood of confusion as to its not being an authorized dealer of the Complainant and that it buys and sells only the Complainant's parts.

Respondent has rights and a legitimate interest in the domain name.

Respondent denies it has registered the domain name in bad faith.

The Complainant is in the business of manufacturing construction and earth moving equipment, as well as selling parts for them. Respondent buys and sells new and used parts made by the Complainant, both to dealers and others and registered for its use the domain name "catparts.com."

Complainant registered "Cat" as a trade and service mark with The United States Patent and Trade Mark Office well before Respondent obtained the domain name at issue. Complainant also owns domain names with the word "Cat"and "Caterpillar" contained therein.

The domain name at issue is a combination of Complainant's mark and the word "part."

There is no evidence that Respondent has a right to the use of the domain name.

After Complainant's counsel wrote to Respondent contending that the disclaimer on its web site was insufficient to notify readers that Respondent was not associated with Complainant, and although Respondent denied the contention, nevertheless it altered the web site to alleviate any possibility of one being led to the counsel's allegation.

The domain name registered by the Respondent is the Complainant's Trade and Service Mark "Cat" with the addition of the word "Parts" to form the name "catparts.com." Complainant certainly has rights in its Caterpillar and Cat marks in association with construction machinery and its parts. Obviously the domain name "catparts," which incorporates the Complainant's Cat mark in its entirety is confusingly similar, to the Complainant's Caterpillar and Cat mark because the generic words can be associated with Complainant's business.

Respondent's assumption that there is no likelihood of confusion because it has not listed the site with any search engine, is an assumption that is not persuasive.

There is no doubt that the domain name suggests some affiliation or connection of the Respondent with the Complainant when in fact there is no such affiliation. Complainant has authorized certain dealers to sell its parts, and Respondent is not one of them. However, that does not preclude the Respondent from selling both new and used parts manufactured by the Complainant. The ultimate issue to resolve herein is whether the Respondent, due to its selling merchandise made by the Complainant obtained a Right or Legitimate interest in a domain name, part of which has by registered by the Complainant with the United States Patent and Trade Mark Office. I think not. In addition, Respondent has never been known by any part of the domain name. Respondent has no Right or Legitimate Interest in the domain name.

Before the Complainant can prevail it must establish that the domain name at issue has been registered in bad faith. The Uniform Domain Name Dispute Resolution Policy (Section 4. B.) sets forth those circumstances, which if found to be shown, would warrant the transfer of the domain name.

The first is that domain name was obtained for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant or a competitor for a valuable consideration. This has not even been alleged.

The second is that the domain name was registered by the Respondent to prevent the Complainant from reflecting the mark in a corresponding domain name. Again this has not even been alleged.

The third is that the domain name was registered by the Respondent primarily for the purpose of disrupting the business of a competitor. There has been no allegation of this.

Finally, the fourth circumstance is that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a confusion with the complainant's mark An examination of the facts presented show that from the beginning the Respondent was very careful to set forth on its web site (Complainant's Exhibit 2) that "Off Road Equipment Parts is not an authorized dealer for Caterpillar Inc." The words "Off Road Equipment Parts" appear in regular type and in a smaller font than the following words, "not an authorized dealer for Caterpillar Inc." which is set in larger and bold type. In spite of this clearly worded statement, and bold type emphasis on the words "not an authorized dealer for Caterpillar Inc.," Complainant's counsel wrote to Respondent and complained that the . . . disclaimer is written in a smaller type font and located in a lower portion of the page than the more eye-catching positioned statement that "We buy & sell used & unused parts for Caterpillar tm [sic] equipment," which implies that your company works on behalf of Caterpillar. (Complainant's Exhibit E)

There is no possibility that a person reading it could fail to see the disclaimer of any interest between the Complainant and Respondent and come to the conclusion that the Respondent is using the domain name to create the likelihood of affiliation with the Complainant. Accu-Find Internet Services v. AccuFind, FA 94831 (Nat. Arb. Forum June 19, 2000)

Section 4.b. states that For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but with out limitation, if found . . . shall be evidence . . . of bad faith." (underlining supplied) Hence, there could be other circumstances to show bad faith, but none have been shown to exist.

I therefore find that there has been no establishment by the Complainant of using and registering the domain name in bad faith.

THE UNDERSIGNED DETERMINES THAT THE COMPLAINANT HAS FAILED TO PREVAIL IN ITS CLAIM AGAINST THE RESPONDENT. IT IS FURTHER DETERMINED THAT THE RESPONDENT IS RIGHTFULLY ENTITLED TO BE LISTED WITH NETWORK SOLUTIONS AS THE REGISTRANT OF THE DOMAIN NAME CATPARTS.COM.

Ralph Yachnin

Justice, NY Supreme Court (Ret.)

Dated: October 10, 2000