DECISION

Caterpillar Inc. v Comercio e Importaciones EIRL

Claim Number: FA0104000097083

PARTIES

The Complainant is Caterpillar Inc., Peoria, IL, USA (“Complainant”).  The Respondent is Comercio e Importaciones EIRL, Lima, Peru (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is "catdelperu.com" registered with Tucows, Inc.

PANEL

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

Linda M. Byrne, Esquire as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on April 19, 2001; the Forum received a hard copy of the Complaint on April 23, 2001.

On April 19, 2001, Tucows, Inc. confirmed by e-mail to the Forum that the domain name "catdelperu.com" is registered with Tucows, Inc. and that the 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 26, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 16, 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@catdelperu.com by e-mail.

A timely response was received and determined to be complete on May 7, 2001.

On May 21, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Linda M. Byrne, Esquire as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that Respondent's Domain Name catdelperu.com is confusingly similar to its trademarks CAT and CATERPILLAR; that Respondent does not have any right or legitimate interest in respect of the infringing Domain Name catdelperu.com; and that the infringing Domain Name catdelperu.com was registered by Respondent in bad faith and is being used in bad faith.

B. Respondent

Respondent denies the allegations of the Complaint, and contends that it has used the Domain Name catdelperu.com since its creation in connection with a bona fide offering of goods, which are replacement parts suitable for use with CATERPILLAR equipment.

FINDINGS

Complainant has registered the trademark CAT (stylized) and CATERPILLAR in the United States (including U.S. Registration Nos. 277,417; 345,499; 506,258; 531,626; 955,141; 985,439; 2,140,605; 984,444; 2,421,077; and 1,579,437).  In addition, Complainant has registered the CAT mark in over 130 countries around the world, including Peru.  The CAT and CATERPILLAR marks are registered for a variety of equipment and machinery and parts for equipment and machinery.  Complainant has been using the mark CAT continuously since 1949 for various equipment.  Complainant has sold its CAT and CATERPILLAR equipment around the world, including Peru, and Complainant has a worldwide network of authorized dealers.  The English translation of "Cat del Peru" is "Cat of Peru."  The above facts are not disputed by Respondent.

Respondent is a small company with approximately 12 employees.  Respondent is not an authorized Caterpillar dealer, and Respondent does not allege that it sells replacement parts which have actually been manufactured by Caterpillar.  Rather, Respondent's replacement parts are made to fit in Caterpillar equipment.  According to Respondent's website, Respondent buys parts from many manufacturers which are intended for use as replacement parts for Caterpillar products.  About 90 percent of Respondent's business is the sale of replacement parts for Caterpillar equipment.

Respondent's web site prominently features the CATERPILLAR and CAT (stylized) trademarks.  In addition, the home page for the catdelperu.com web site states that the company sells spare parts which are "equivalent" to the parts sold by Caterpillar for use with Caterpillar machinery.  The website contains no disclaimer as to the lack of a relationship between Respondent and Complainant.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

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

The Domain Name catdelperu.com fully incorporates Complainant’s famous CAT mark. See NIIT Ltd. v. Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the Complainant’s VeriSign mark and the domain names "verisignindia.com" and "verisignindia.net" where Respondent added the word “india” to Complainant’s mark).

Moreover, the disputed domain is so confusingly similar that a reasonable Internet user might assume the Domain Name is somehow associated with Complainant’s business.  Because Complainant has a worldwide dealership network, and because "del Peru" means "of Peru," it would be reasonable for Internet users to assume that the catdelperu.com website is operated or sponsored by Caterpillar's Peruvian subsidiary or dealer, when in fact is it not.  See Texaco, Inc. v. Texaco Domain Canada, Case No. FA 94869 (Nat. Arb. Forum, June 27, 2000) (texacocanada.com is confusingly similar to the TEXACO mark).  See also Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that confusion would result when Internet users, intending to access Complainant’s web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship exists). 

Rights or Legitimate Interests

Respondent sells replacement parts which are intended for use with Complainant’s equipment which is a legitimate business.  However, this Panel holds that Complainant's use of the catdelperu.com domain name in connection with this business is not legitimate.  Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that Respondent does not have a legitimate interest in using the domain names "caterpillarparts.com" and "caterpillarspares.com" to suggest a connection or relationship, which does not exist, with the Complainant's mark CATERPILLAR).  Respondent is not licensed or otherwise authorized to use Complainant’s CAT mark. 

Moreover, Respondent is not commonly known by the disputed Domain Name. See Ullfrotté AB v. Bollnas Imports, D2000-1176 (WIPO Oct. 23, 2000) (finding that although the Respondent legitimately sells goods originating from the Complainant, this does not give him the right to register and the use the mark as a domain name without the consent of the holder of the trademark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and did not receive permission

from Complainant to use the trademarked name).  Respondent has not acquired any trademark or service mark rights in the Caterpillar Marks.  Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by mark).

Registration and Use in Bad Faith

Respondent was obviously aware of Complainant’s famous mark prior to registering the disputed domain name.  The CAT mark is used prominently around the world, and ninety percent of Respondent's business emanates from the sale of replacement parts for Caterpillar's equipment.  See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that Respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where Complainant’s BEANIE BABIES mark was famous and thus Respondent should have been aware of it).

In addition, Respondent uses the CAT Design Mark in several places in its website.  Such unauthorized use of Caterpillar's logo, including in an animation sequence appearing upon entering Respondent's web site, is indicative of an attempt to mislead potential customers into believing that Respondent is associated with or authorized by Caterpillar.

Respondent has registered the disputed domain name intentionally to attract Internet users to its web site by incorporating Complainant’s well-established CAT mark into its domain name. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the Respondent had engaged in bad faith use and registration by linking the domain name to a web site that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant’s marks).

With respect to each party's sale of replacement parts for Caterpillar equipment, Respondent is Complainant’s competitor.  Respondent registered the disputed domain name in order to gain customers and to disrupt Complainant’s business.  State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (use of domain name comprised of Complainant's mark to divert consumers to a web site that promotes competing goods is evidence of bad faith); EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (use of Complainant's mark in domain name used to compete with Complainant disrupts Complainant's business and constitutes bad faith); Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business); EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from the Complainant's marks suggests that the Respondent, the Complainant’s competitor, registered the names primarily for the purpose of disrupting the Complainant's business). 

By creating a likelihood of confusion, Respondent is acting in bad faith. Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (use of Complainant's mark to attract consumers to buy Complainant's, or others', products is in bad faith because it is likely to cause confusion); 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); Tall Oaks Pub'g, Inc. and Frank L. Slejko, Ph.D. v. National Trade Publ'ns, Inc., FA 94346 (Nat. Arb. Forum May 5, 2000) (use of domain name comprised of Complainant's mark in a manner likely to cause initial interest confusion demonstrates bad faith).

In summary, this Panel finds that catdelperu.com is confusingly similar to Complainant's CAT trademark, that the Respondent has no rights or legitimate interests in catdelperu.com, and that Respondent has used catdelperu.com in bad faith.

DECISION

It is the decision of this Panel that the Domain Name at issue, catdelperu.com, be transferred from Respondent to Complainant.

Linda M. Byrne, Esq., Panelist

Dated: May 31, 2001

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2001/1060.html