DECISION

Caterpillar Inc. v Turn Key Web Solutions.com

Claim Number: FA0104000097080

PARTIES

Complainant is Gene Bolmarcich Caterpillar Inc., Peoria, IL, USA (“Complainant”) represented by Mary E. Innis, of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson.  Respondent is David  Purdy Turn Key Web Solutions.com, Barrie, ON, CANADA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <caterpillarcanada.com> registered with Tucows, Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

Judge Ralph Yachnin, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 18, 2001; the Forum received a hard copy of the Complaint on April 19, 2001.

On April 19, 2001, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <caterpillarcanada.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name.  Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On April 20, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 10, 2001 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 postmaster@caterpillarcanada.com by e-mail.

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 May 24, 2001, pursuant to Complainant’s request to have the dispute decided by a single-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 Rules for Uniform Domain Name Dispute Resolution Policy (the “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 Respondent.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

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.

FINDINGS

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 and equipment, repair and maintenance services therefor, and the distribution, through licensees and otherwise, of a wide variety of licensed merchandise, including casual clothing and promotional items, such as note pads, stationery portfolios, pencils and pens.

Complainant holds multiple trademarks with the U.S. Patent and Trademark Office.  Complainant’s CATERPILLAR mark was first registered on November 11, 1930 in connection with: tractors, tractor engines, track links, track shoes, grousers, grease guns, agricultural machinery tools and equipment, road construction and maintenance machinery tools and equipment, and the parts for all said goods.

Respondent is located in Ontario and is not affiliated with or related to Complainant in any way, nor is Respondent licensed by Complainant.

On April 27, 2000, long after the Complainant established rights to the mark, Respondent registered the domain name <caterpillarcanada.com>.

On the web site connected to the Respondent’s domain name, Respondent promoted itself as being "a worldwide buyers and sellers marketplace” where you can “[s]earch for new and used trucks, trailers, heavy equipment, agricultural machinery, industrial equipment and more.”  Respondent sells many brands and does not sell only Caterpillar products.  In fact, Respondent promotes and sells numerous brands that compete with Caterpillar's products.

On March 21, 2001, Complainant sent Respondent a cease and desist letter via registered mail requesting that Respondent cancel or assign to Complainant its registration for the disputed domain name.  Respondent did not respond to Complainant's letter.

In lieu of a response, Respondent removed all content from the web site at the disputed domain name.  However, Respondent did not assign its registration to Complainant, nor did it cancel its registration.

DISCUSSION

Paragraph 15(a) of 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.”

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

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.

Identical and/or Confusingly Similar

Respondent’s <caterpillarcanada.com> domain name is confusingly similar to the Complainant’s mark because Respondent’s domain name incorporates in its entirety the CATERPILLAR mark.  The combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar.  See Texaco, Inc. v. Texaco Domain Canada, FA 94869 (Nat. Arb. Forum June 27, 2000) (<texacocanada.com> is confusingly similar to the TEXACO mark).

Respondent’s use of the domain name increases the possibility of confusion because Respondent’s web site offers similar types of goods produced by Complainant.  See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).

The Panel finds that the disputed domain name is confusingly similar to Complainant’s well-known mark.  Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not used the domain name in connection with a bona fide offering of goods, has not been known by the name “Caterpillar Canada,” and has not made a legitimate noncommercial or fair use of the domain name because Complainant has not given Respondent permission to associate its CATERPILLAR mark with any of Respondent’s ventures.  See Telstra Corporation Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (Respondent had no rights or legitimate interests to use domain name because Respondent was not licensed or otherwise permitted to use Complainant's non-descriptive trademark); see also Alta Vista Company v. Gamanche, FA 95249 (Nat. Arb. Forum Aug. 17, 2000) (Respondent was not licensed to use Complainant's mark and therefore had no rights or legitimate interests in the domain name).

The Panel finds that Respondent has no rights to or legitimate interest in the mark.  Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Because of the uniqueness of Complainant’s CATERPILLAR mark, it does not seem likely that Respondent did not know of Complainant’s mark when it registered the <caterpillarcanada.com> domain name for use with an online heavy machinery marketplace.  See Ticketmaster Corp. v. Spider Web Design, Inc., D2000-1551 (WIPO Feb. 4, 2001) ("active or constructive knowledge of the Complainant's rights in Trademarks is a factor supporting bad faith").

The evidence shows that Respondent registered the domain name to intentionally attempt to attract, for commercial gain, Internet users to its web site in violation of the Policy, Paragraph 4(b)(iv).  The domain name encompasses the CATERPILLAR mark and adds a descriptive phrase that suggests that the web site is associated with Complainant.  Respondent's use of the Caterpillar mark in connection with its web site creates a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of Respondent's web site.  By creating a likelihood of confusion, Respondent is acting in bad faith.  See Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the domain name <pitneybowe.com> where Respondent purports to resell original Pitney Bowes’ equipment on its website, as well as goods of other competitors of Complainant); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (use of the domain names caterpillarparts.com and caterpillarspares.com to drive consumers to a "want-ad" web site for parts constitutes bad faith).

Late Receipt of Reply

The Forum received the only communication from the Respondent on May 24, 2001.  Not only was it submitted fourteen days past the return date and hence not timely, but in addition, it did not meet the requirements of an official response as required by Rule 5.

Notwithstanding the aforesaid, in the interest of justice and equity, the Panel had taken the contents thereof into consideration. 

On April 27, 2001, during the pendency of this proceeding, the Respondent’s registration of the domain name expired.  However on April 20, 2001, the date the proceeding was commenced, the Respondents still were the owner of the domain name.  Once an ICANN proceeding is commenced, the Registrar of the domain name is required to place the domain name on hold.  As such, even though Respondent reveals in his communication that the domain name registration has expired, the domain name cannot become active until this proceeding is remedied.  Thus the action against the Respondent is proper and much continue to a decision.

Therefore, the Panel finds that the proof supports a finding that Respondent registered and used the domain name at issue in bad faith.  Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that the requested relief shall be and is hereby granted.

Accordingly, it is Ordered that the domain name <caterpillarcanada.com> should be transferred from Respondent to Complainant.

Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: May 29, 2001

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