Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Caterpillar Inc., Peoria, IL, USA ("Complainant"). The Respondent is Jeff Fadness, Herndon, VA, USA ("Respondent").

The domain names at issue are "CATERPILLARAUCTIONS.COM", "CATERPILLARAUCTION.COM", "CATERPILLARMACHINERY.COM", "CATERPILLARHEAVYEQUIP.COM", and "CATERPILLARTRACTOR.COM", registered with Network Solutions, Inc ("NSI").

Honorable Carolyn Marks Johnson sits as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 06/14/2000; The Forum received a hard copy of the 06/19/2000.

On 06/20/2000, NSI confirmed by e-mail to The Forum that the domain names "CATERPILLARAUCTIONS.COM", "CATERPILLARAUCTION.COM", "CATERPILLARMACHINERY.COM", "CATERPILLARHEAVYEQUIP.COM", and "CATERPILLARTRACTOR.COM" are registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On 06/21/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 07/11/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via email, post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts by email.

On 07/11/2000, 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 07/13/2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed Honorable Carolyn Marks Johnson as Panelist.

Having reviewed the communications records in the case file, 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 trademark 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.

The Respondent submitted no response in this matter and, accordingly, all reasonable inferences of fact in the allegations of the Complaint will be deemed to be true.

The Complainant owns several registered trademarks involving the term CATERPILLAR, which date back to 1930. The Complainant also owns and uses the domain names <caterpillar.com> and <cat.com>.

The Complainant is a well-established company involved in the development, manufacturing, distribution, marketing, and sale of earthmoving and construction equipment, parts, and repair and maintenance services. The Complainant provides such goods and services through a network of authorized dealerships, all of which have entered into service mark license agreements that allow them to use the Caterpillar marks in connection with the sale and service of Caterpillar products.

The Respondent registered the domain names on 12/07/1999. Entry of the domain names at issue takes the user to an auction website for conducting business-to-business auctions of capital machinery, equipment, and property.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") directs that the complainant must prove each of the following three elements in order to demonstrate claims 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; and

(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 Complainant has rights in the registered mark CATERPILLAR. Each of the Respondent’s domain names contains the Complainant’s mark in addition to a generic term. The Respondent’s domain names are confusingly similar to the Complainant’s mark. See Marriott Int’l, Inc. v. Café au lait, FA 93670 (Nat. Arb. Forum March 13, 2000) (holding that the Respondent’s domain name <marriott-otel.com> was confusingly similar to Marriott’s marks and domain name <marriott.com>).

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.

The panel concludes that the respondent has no rights or legitimate interest in the domain names at issue. Policy ¶ 4(c). 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. Policy ¶ 4(c)(i) – (iii). Respondent neither sells CATERPILLAR products nor provides any service specific to CATERPILLAR products. Respondent has no relationship with CATERPILLAR Inc., nor is Respondent engaging in any "fair use" protected activity.

The Respondent has not responded to the Complaint and, therefore, cannot deny that the domain names were registered and are being used in bad faith, as alleged by Complainant.

By using the domain names in question to transport users to its auction site, the Respondent is diverting business traffic to its own commercial site, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Complainant’s mark. Policy ¶ 4(b)(iv). This is evidence of registration and use in bad faith. See Fanuc Ltd. v. Machine Control Services, FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s use of the Complainant’s trademark violated ICANN Policy).

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, "CATERPILLARAUCTIONS.COM", "CATERPILLARAUCTION.COM", "CATERPILLARMACHINERY.COM", "CATERPILLARHEAVYEQUIP.COM", and "CATERPILLARTRACTOR.COM", be transferred from the Respondent to the Complainant.

Honorable Carolyn Marks Johnson, Panelist

Dated: 07/27/2000