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 DES-CATE Sociedad Limitada of Urb. Mas Aliu s/n, 17180- Vilablarieux, Girona, Spain, represented by José Saubí-Costa, DES-CATE Sociedad Limitada. ("Respondent").

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

The Panelist certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the panelist in this proceeding. Furthermore, that the Panelist does not have any commercial, personal or any other type of relationship with any of the Parties nor the counsels to the case. Moreover that there has been no communication whatsoever with any of the Parties nor the counsels to the case with the Arbitrator prior to the Decision.

Honorable Carlos Rodríguez García, as sole Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on November 9, 2000; The Forum received a hard copy of the Complaint on November 14, 2000. On November 17, 2000, Respondent was served electronically with a copy of the Complaint and advised of the November 17, 2000, commencement date of the case at bar.

On November 17, 2000, CORE Internet Council of Registrars ("CORE") confirmed by e-mail to the Forum that the domain names:

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

On November 17, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 7, 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 the respective addresses by e-mail.

Although the twenty (20) day response period had expired in the case, Respondent submitted a Response in Spanish language which the Panelist will consider in his Decision.

Pursuant to Complainantís request to have the dispute decided by a One Member panel, the Forum appointed Honorable Carlos Rodríguez García, 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 Forumís 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 although failed to submit a reply within the deadline to the Panel, a Spanish language Response is within the file submitted to this Panelist and will be taken as his Response. Said Response averts that DES-CATE does not manufacture any of the equipment sold by it and that it sells only equipment and machinery owned and property of DES-CATE. Furthermore, DES-CATE contends that they have to use the Caterpillar name in order to identify the parts and equipment sold as used Caterpillar parts and equipment. Moreover, the Respondent alleges that they are not using, in bad faith, the Caterpillar name nor exposing anybody to confusion since the customers come to them in search of out of stock used parts or parts that are no longer manufactured by Caterpillar.

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.

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.

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 for Uniform Domain Name Dispute Resolution (the "Rules") prescribes 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 did not submit a Response by the deadline but has consequently submitted a Spanish language Response which we will consider, contesting any of the contentions by Complainant. Nevertheless, the Panel will 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 Complainantís 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 Complainantís approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar.") See also, State Farm v. Kaufman, FA 94335 (Nat. Arb. Forum April 24, 2000).. The Domain names registered under CORE by the Respondent, desguacescaterpillar.com and desguacecaterpillar.com are confusingly similar to the trademarks registered by the Complainant.

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 uses the domain names in question in bad faith. The Respondent has not denied that assertion with sufficient evidence or arguments to rebut that contention and allegation.

As a result, the Panel determines that the domain names were registered and used in bad faith. Furthermore, Respondent contends that he uses said trademark to identify the parts with which his business is conducted but that he does not manufacture nor sell new parts. These contentions do not preclude that fact that the use of said trademarks are used for commercial gain and with the specific intention of attracting Caterpillar goodwill towards Respondent.

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 domain names desguacescaterpillar.com and desguacecaterpillar.com be transferred from the Respondent to the Complainant.