Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Caterpillar Inc., Peoria, IL, USA ("Complainant") represented by Gene Bolmarcich, Caterpillar Inc. The Respondent is Miguel Miyar, Miami, FL, USA ("Respondent").

The domain names at issue, registered with Bulkregister.com, are:

The Panelist certifies that he or she has acted independently and impartially and to the best of his nowledge, 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 September 20, 2000; The Forum received a hard copy of the Complaint on September 18, 2000.

On September 20, 2000, Bulkregister.com confirmed by e-mail to the Forum that the domain names:

are registered with Bulkregister.com and that the Respondent is the current registrant of the name. Bulkregister.com has verified that Respondent is bound by the Bulkregister.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On September 25, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 15, 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 the following addresses by email: postmaster@caterpillar-americas.com, postmaster@caterpillar-usa.com, postmaster@caterpillaraftermarket.com, postmaster@caterpillaraftermarketparts.com, postmaster@caterpillaraftermarketparts.net,

postmaster@caterpillaramerica.com, postmaster@caterpillaramericas.com, postmaster@caterpillarnewparts.com, postmaster@caterpillarpartsonline.com, postmaster@caterpillarpartsusa.com, postmaster@caterpillarsurplus.com, postmaster@caterpillarsurplus.net, postmaster@noncat.com, postmaster@caterpillarsurplusparts.com,

postmaster@caterpillarsurplusparts.net, postmaster@caterpillarusa.com, postmaster@caterpillarusa.net, postmaster@caterpillarmiami.com, postmaster@catmiami.com, postmaster@cat-hose.com, postmaster@cat-usedparts.com, postmaster@noncatparts.com, postmaster@partsforcat.com, postmaster@catpartsusa.com, postmaster@catpartsusa.net, postmaster@catsurplusparts.com, postmaster@catsurplus.net, and postmaster@catsurplus.com.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On December 13, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Judge Ralph Yachnin, as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

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

A. Complainant

The Complainant contends that the Respondent has registered a domain name that is identical to and confusingly similar to its marks registered for and in use by the Complainant. Further, the Complainant contends that the Respondent has no rights or legitimate interests to the domain name, and that the respondent has registered and is using the domain name in bad faith.

B. Respondent

Respondent failed to submit any reply with the Panel.

Complainant is a long-established, multi-national company with business operations in many areas, including the development, manufacture, distribution, marketing and sale of earthmoving and construction machinery, equipment and parts, repair and maintenance services therefor, and the distribution, through licensees and otherwise, of a wide 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 the Caterpillar marks in connection with the sale and service of Caterpillar products.

Complainant adopted, and has continuously used since that adoption, the inherently distinctive marks CATERPILLAR and CAT, and design marks and . Complainant holds multiple trademarks, some which date back as early as 1930, with the U.S. Patent and Trademark Office for these marks.

Complainant also owns, uses and has registered domain names that include CAT and CATERPILLAR, such as www.caterpillar.com, www.caterpillarparts.com, www.catequipment.com, www.catmachines.com, and www.cat.com.

Complainant wrote to Respondent on September 8, 2000 to inform him of Complainant's rights in connection with the disputed domain names.

Respondent registered the domain names between August 21, 2000 and August 24, 2000.

Respondent replied by letter dated September 12, 2000. Respondent's reply states that the disputed domains are "available if you would like to purchase them." A price list was included therein, with prices ranging from $950 to $19,500.

Rule 15 of the Rules prescribes that the Panel shall decide a Complaint on the basis of the statements made and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

In the case of no response by a Party, Rule 14 of the Rules prescribe that if a Party, in the absence of exceptional circumstances, does not comply with a provision of or a requirement under these Rules, the Panel shall draw such inferences therefrom as it considers appropriate. In this case Respondent has not submitted any Response and has consequently not, despite the opportunity given, contested any of the contentions by Complainant. The Panel will therefore have to operate and consider the case on the basis of the factual circumstances contained in the Complaint and the documents available to support the contentions. See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000).

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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 names at issue each consist of Complainant's CAT and CATERPILLAR marks in combination with terms describing a principal category of Complainant’s products, a geographic term, or another generic term often used in connection with Complainant's trademarks. See Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names of "caterpillarparts.com" and "caterpillarspares.com" were found to be confusingly similar to the registered trademarks of "Caterpillar" and "Caterpillar Design" because "the idea suggested by the disputed domain names and the trademarks was that the goods and services offered in association with the domain name are manufactured by or sold by the Complainant or one of the Complainants approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar.")

The Complainant asserts that the Respondent has no rights or legitimate interests in the domain names in question. The Respondent has not denied that assertion.

Respondent has failed to prove any aspect of Policy ¶ 4.c. Respondent has no rights or legitimate interest in the domain names at issue. Respondent is not engaged in a bona fide offering of goods and services under the CATERPILLAR name, is not known by the CATERPILLAR name, and is not making non-commercial or fair use of the CATERPILLAR name. As such, the Panel concludes that the Complainant has established the elements of Policy ¶ 4.a.(ii).

The Complainant asserts that the Respondent registered and used the domain names in question in bad faith. The Respondent has not denied that assertion.

Respondent's offer to sell these domain names to Complainant for valuable consideration over his out-of-pocket costs demonstrates bad faith registration and use. Policy ¶ 4.b.(i). See Dollar Rent A Car Systems Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that the Respondent demonstrates bad faith by registering the domain name for the purpose of transferring the domain name in the amount of $3,000, an amount in excess of out of pocket costs).

Further, multiple domain name registrations in a short time frame by a single actor indicates an intention to prevent the mark holder from using its mark in a domain name and provides evidence of a pattern of conduct. Policy ¶ 4.b.(ii). See Gamesville.com, Inc. v. John Zuccarini, FA 95294 (Nat. Arb. Forum Aug. 30, 200) (finding that Respondent has engaged in a pattern of conduct of registering domain names to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, which is evidence of registration and use in bad faith).

As a result, the Panel determines that the domain names were registered and used in bad faith.

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the following domain names be transferred from the Respondent to the Complainant.