Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Caterpillar, Inc., Peoria, IL, USA ("Complainant"). The Respondent is Colony Holding Ent., Inc., Ft. Lauderdale, FL, USA ("Respondent").

The domain name at issue is "caterpillar.org" 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 a panelist in this proceeding.

Herman D. Michels as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on December 8, 2000; The Forum received a hard copy of the Complaint on December 13, 2000.

On December 11, 2000, Network Solutions confirmed by e-mail to The Forum that the domain name "caterpillar.org" 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 ICANNís Uniform Domain Name Dispute Resolution Policy (the "Policy").

On December 13, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 2, 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 Respondentís registration as technical, administrative and billing contacts, and to postmaster@caterpillar.org by e-mail.

On December 7, 2000, pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed Herman D. Michels as Panelist.

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

A. Complainant

Complainant contends that it has all rights in the trademark Caterpillar and that it has adopted and continuously used since that adoption the distinctive marks Caterpillar and Cat and design marks Caterpillar and Cat. It further contends that it has invested in excess of $50 million in advertising and promoting the Caterpillar marks and has sold in excess of $19 billion in products and services under these marks. Caterpillar contends that Respondentís domain name caterpillar.org is identical or confusingly similar to its Caterpillar trademarks and design marks. It further contends that Respondent does not have any rights or legitimate interests in the domain name caterpillar.org and that it has registered and is using said domain name caterpillar.org in bad faith.

B. Respondent

Respondent contends that Complainant has filed the Complaint against the incorrect registrant for the domain name address www.caterpillar.org. It further contends that it is not the current owner of said domain address. It contends that the Registrant Name Change Agreement had been received by Network Solutions on November 30, 2000, but due to the massive amount of paperwork received by Network Solutions, it took more than four to six weeks to update the database of records. Respondent claims, therefore, that it should not be penalized because of Network Solutionsí data update backlog.

Respondent further contends that the Domain Name Purchase and Assignment Agreement between it and Peter George was completed on December 23, 1999 and a copy of the Network Solutionsí Registrant Name Change Agreement was received and acknowledged by Network Solutions on November 30, 2000. Accordingly, Respondent contends that Complainant has filed this Complaint against the incorrect registrant and, therefore, the Complaint should be dismissed.

Respondent is the only party in a position to submit a response to the Complaint filed in this matter. While Respondent initiated a transfer of the domain name to a third party and while the Registrant Name Change Agreement was received by Network Solutions on November 30, 2000, fourteen days before Complainant filed this Complaint, a hold was placed on the domain name until this proceeding is resolved. Consequently, Network Solutions has not yet transferred the domain name to the third party and, therefore, Respondent is still the owner of the domain name for purposes of this proceeding. The Complainant has not filed this Complaint against the incorrect registrant for the domain address www.caterpillar.org and the issues raised in this Complaint against Respondent are not moot.

Turning to the substantive merits of the Complaint, Respondent has not addressed those issues. Nonetheless, the documentary proofs establish that Complainant is a long established multi-national company with business operations in many areas, including the development, manufacture, distribution, marketing and sale of earth moving and construction machinery, equipment and parts, repair and maintenance services thereof and the distribution through licensees and otherwise of a variety of licensed merchandise. Complainant provides such goods and services through a network of authorized dealerships all of which have entered into Service Mark License Agreements which allow them to use Complainantís Caterpillar trademark in connection with the sale and service of Caterpillar products.

Prior to Respondentís registration of the domain name caterpillar.org, Complainant adopted and has continuously used since that adoption the distinctive marks Caterpillar and Cat and design marks Caterpillar and Cat. Complainantís Caterpillar marks and the good will symbolized them are exceedingly valuable corporate assets of Complainant. Complainant has invested in excess of $50 million in advertising in promoting the Caterpillar marks and sold in excess of $19 billion in products and services under those marks. Complainant has the exclusive right to use the Caterpillar and Cat trademarks and design marks.

The domain name caterpillar.org registered by Respondent is identical or confusingly similar to Complainantís Caterpillar mark. Rule 4(a)(i). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, Apr. 17, 2000) (finding that the domain name samsonite.org is nearly identical or confusingly similar to the trademark of the Complainant.)

Moreover, Respondent does not have any rights or legitimate interests in respect to the domain name Caterpillar.org. Rule 4(a)(ii). See also Charles Jourdan Holding, AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the Respondent is not a licensee of the Complainant; (2) the Complainantís prior rights in the domain name proceed Respondentís registration; and (3) the Respondent is not commonly known by the domain name in question.) See Cruzeiro Licenciamentos Ltda v. Sallen & Sallen Enterprises, D2000-0715 (WIPO Sept. 6, 2000] [finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark); Ritz-Carlton Co. v. Club Car Executive Transportation and Dennis Rooney, D2000-0611 (WIPO Sept. 18, 2000) (finding that prior to any notice of the dispute Respondent had not used the domain name in connection with any type of bona fide offering of goods and services). Respondent is not engaged in the bona fide offering of goods and services under the Caterpillar name or mark, is not known by the Caterpillar name and is not making a non-commercial or fair use of the Caterpillar mark.

Respondent has registered the domain name caterpillar.org and is using said domain name in bad faith. By virtue of the fact that Respondent registered the domain name primarily for the purpose of transferring the domain name registration to Complainant who is the owner of the trademark for valuable consideration in excess of Respondentís documented out-of-pocket costs directly related to the domain name. See Rule 4(b)(i). See also Exxon Mobile Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding bad faith where the respondent offered the domain name for a sale for $150,0000.00 the day after registration of the domain name); see also Wembley National Stadium, Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent willingness of the Respondent to sell the domain name in issue from the outset albeit not at a price reflecting only the costs of registering and maintaining the name); Cruzeiro Licenciamentos Ltda v. Sallen & Sallen Enterprises, D2000-0715 (WIPO Sep. 6, 2000) (finding that mere possessive holding of a domain name can qualify as bad faith if the domain nameís ownerís conduct creates the impression that the name is for sale).

Respondent registered the domain name caterpillar.org with the intention of disrupting the business of Complainant. It did this by creating a likelihood of confusion with Complainantís trademark Caterpillar. Rule 4(b)(iii). Finally, Respondent registered and used the domain name caterpillar.org in bad faith in order to prevent Complainant the owner of the Caterpillar mark from reflecting the mark in a corresponding domain name and that Respondent has engaged in such a pattern of conduct. Rule 4(b)(ii). See Hitachi, Ltd. v. Fortune Intíl Div. Ent., D2000-0412 (WIPO July 2, 2000) (finding a pattern of conduct where the Respondent registered numerous domain names).

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.

The domain name caterpillar.org registered by Respondent is identical or confusingly similar to Complainantís Caterpillar mark and which Complainant has all rights and interests.

Respondent does not have any substantial rights or legitimate interests in respect to the domain name caterpillar.org.

Respondent registered and is using the domain name caterpillar.org in bad faith by registering the name primarily for the purpose of reselling it to the Complaint. Additionally, Respondent registered and used the domain name caterpillar.org in bad faith with the intention of disrupting the business of Complainant.

Based upon the above findings and discussions and pursuant to Rule 4(i) of the Rules of Uniform Domain Name Dispute Resolution Policy and the National Arbitration Forum Supplemental Rules of ICANNís Uniform Domain Resolution Policy, I hereby order that (1) the domain name caterpillar.org registered by Respondent Colony Holding Ent., Inc. be transferred forthwith to Complainant Caterpillar, Inc.; and (2) Respondent Colony Holding Ent., Inc. shall cease and desist from any and all use of the domain name caterpillar.org.