Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

1. The Parties

Complainant is Caterpillar Inc., 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.

The Respondent is Matthew Quin, Transdat, 75 South Queensborough Pde, Karalee, Brisbane, Qld 4306, Australia.

2. The Domain Name(s) and Registrar(s)

The domain names in issue are "CATERPILLARPARTS.COM" and "CATERPILLARSPARES.COM"; the Registrar with which the disputed domain names are registered is Network Solutions, Inc., 505 Huntmar Park Drive, Herndon, VA 20170. U.S.A

3. Procedural History

The Complaint was filed on April 19, 2000. The Center acknowledged receipt of the Complaint on April 25, 2000. A request for Registrar verification was forwarded to the Registrar on April 25, 2000. On April 28, 2000, Network Solutions, Inc. confirmed by e-mail that Quins, 75 South Queensborough Pde, Karalee, Brisbane, Qld 4306, Australia is the current registrant of the domain names in issue.

On April 28, 2000, the Center forwarded notification of the Complaint and commencement of Administrative Proceeding to Matthew Quin by E-mail, Facsimile and Post/Courier. The Center advised the Respondent that a response was due within twenty (20) calendar days from the day of receipt of the notification. The Respondent was advised that the last day for sending the Response to the Complainant and the Center is May 17, 2000. Not having received a Response by the due date, the Center forwarded a notification of Respondent Default to Matthew Quin on May 22, 2000, by Post/Courier, Facsimile and E-mail. On May 26, 2000, the Center forwarded a Notification of Appointment of Administrative Panel to the Parties.

a. The Trademarks

The Complaint is based on the ownership of a number of registered Trademarks for CATERPILLAR, & CATERPILLAR Design registered in relation to a broad list of goods and services including heavy equipment and parts therefore. Some of the United States Trademark Registrations having been on the Register of Trademarks maintained by the United States Patent and Trademark Office for well over fifty years.

b. The Complainant submits that the domain names CATERPILLARPARTS.COM and CATERPILLARSPARES.COM are confusing with the registered trademarks CATERPILLAR and CATERPILLAR Design. The Complainant further submits that Matthew Quin has no rights or legitimate interest in respect of the domain names and finally, the Complaint states that the domain names have been registered and are used in bad faith.

With respect to the first element of confusion between the domain names and the registered trademarks for CATERPILLAR and CATERPILLAR Design the Complainant attaches as Exhibit C several of the Complainants registered trademarks for CATERPILLAR and CATERPILLAR Design. The trademarks are registered in relation to a broad list of goods and services in the field of heavy equipment including earth moving equipment and parts for such heavy equipment. The CATERPILLAR trademarks are extensively advertised and used. Sales in 1999 alone of products and services under the CATERPILLAR marks were in excess of 19 billion U.S. dollars. Complainant invested in excess of 50 million U.S. dollars in advertising and promoting CATERPILLAR heavy equipment and other products associated with the trademark CATERPILLAR in the year 1999 alone.

The Complainant also owns and has registered domain names that include CATERPILLAR and CAT, such as www.caterpillar.com and www.cat.com. A list of some domain names owned, used and registered by Complainant is attached as Exhibit "D" to the complaint.

With respect to the second element whether the Respondent has no rights or legitimate interest in respect of the disputed domain names; the Complainant`s evidence is that the Respondent is not known by the CATERPILLAR name and is not making non-commercial or fair use of the CATERPILLAR name. The evidence is that entry of the domain names www.caterpillarparts.com or www.caterpillarspares.com takes the visitor to a web site at which is located a series of "want-ad" listings posted by parties seeking spares parts for trucks, cranes, industrial equipment and other heavy machinery. The postings of those who want parts are sold to spare parts manufacturers and spare parts suppliers who purchase access to the posted requests for spare parts.

With respect to the third element as to whether the Respondent has registered and is using the disputed domain names in bad faith the Complainant submits the additional fact that the Respondent has registered several domain names that incorporate famous and distinctive domain names to which Respondent has no evident rights, including, www.komatsu-equipment.com and www.case-parts.com, other manufacturers of heavy construction equipment whose goods are listed by person posting "want-ads" on the Respondant`s web site.

c. The Response

No response with respect to the Complaint was received by the Center or by the Panel.

The first element which the Complaint must prove is that the domain names are identical or confusingly similar to the Respondents trademark or service mark. As the domain names are not identical to the Complainants registered trademarks; has the Complainant proved that the disputed domain names are confusingly similar to the Respondents registered trademarks CATERPILLAR and CATERPILLAR Design?

The word CATERPILLAR which is the subject of numerous registrations registered in the name of the Complainant for heavy equipment and parts therefore is an inherently distinctive word as applied to the particular goods and services for which the marks are registered.

The trademark CATERPILLAR has been in use in relation to heavy equipment and parts therefore throughout the world for well over a half century. The trademark CATERPILLAR has been used extensively, the sales of goods and services in association with the trademarks in 1999 alone being over 19 billion U.S. dollars. The domain name in dispute CATERPILLARPARTS.COM and CATERPILLARSPARES.COM are comprised of the prefix CATERPILLAR in combination with the descriptive words parts or spares. The idea suggested by the disputed domain names and the registered trademarks is that the goods or services offered in association with 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 use of the domain names CATERPILLARPARTS.COM and CATERPILLARSPARES.COM by the Respondent are confusingly similar to the Complainants registered trademarks CATERPILLAR and CATERPILLAR Design.

The second element which the Complainant is required to prove is that the Respondent has no rights or legitimate interest in respect of the domain names in dispute. The domain names in dispute suggest some affiliation or connection of the Respondent with the Complainant when there is no such affiliation or connection. The evidence filed by the Complaint shows that entry of the domain names in dispute directs the visitor to a web site posting a series of "want-ad" listings posted by companies or persons seeking spare parts for trucks, cranes, industrial equipment and other heavy machinery. Companies or individuals seeking spare parts for Caterpillar equipment would enter the disputed domain names expecting to contact Caterpillar Inc. or one of its distributors. In fact, the company or person entering the disputed domain name ends up at a web page not affiliated or associated with the Complainant. The Respondent has no rights or legitimate interest in respect of the disputed domain names.

The third element which the Complainant is required to prove is that the disputed domain names have been registered and are being used in bad faith. A print out of the web site which is contacted upon entry of the disputed domain names is attached as Exhibit F to the Complaint. Exhibit "F", discloses that the web site serves both customers of spare parts and suppliers for spare parts. Customers for spare parts are invited to enter a Free Parts Wanted Listing on the web site. Spare Parts manufacturers, used parts suppliers and equipment dismantling companies are invited to sign up to receive out going E-mail copies of requests for spare parts enabling the spare parts manufacturers and spare part suppliers to contact those seeking spare parts. The use of the disputed domain names was intended to divert some Caterpillar customers to spare parts manufacturers and spare parts suppliers not associated with Caterpillar Inc. The disputed domain names were registered and are being used in bad faith.

a. The domain names in dispute are confusingly similar to the Complainants registered trademarks for CATERPILLAR and CATERPILLAR Design registered in respect of various types of heavy equipment and parts therefore.

b. The Respondent has no rights or legitimate interest in respect of the disputed domain names. The disputed domain names promote and suggest a connection or relationship of the Respondent with the Complainant which does not exist.

c. The domain name has been registered and is being used in bad faith by the Respondent to attract some customers to a web site which some of those customers might not otherwise visit resulting in increased income to the web site. In addition, use of the disputed domain names will result in an indeterminate loss of sales of spare parts by the Complainant and its authorized distributors.

In the Complaint, the Complainant requested that in accordance with Paragraph 4(c)(i) of the Uniform Domain Name Dispute Resolution Policy, the Administrative Panel issue a decision that the disputed domain names be transferred to Complainant. The Complainant having proved each of the three elements set out in paragraph 4(a)(i)(ii) and (iii) of the Uniform Domain Name Dispute Resolution Policy are entitled to the decision requested. The Panel requires that the domain names CATERPILLARPARTS.COM and CATERPILLARSPARES.COM be transferred to Caterpillar Inc.

Ross Carson
Panelist

Dated: June 12, 2000