Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Caterpillar Inc., Peoria, IL, USA ("Complainant") represented by Mark S. Sommers, Finnegan, Henderson, Farabow, Garrett & Dunner LLP. The Respondent is Stephen R. Vine, Penkridge, STAFFS, United Kingdom ("Respondent").

The four domain names at issue are:

1) "usedcat-auction.com"

registered with CORE Internet Council of Registrars ("CORE") and CSL GmbH.

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.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on April 23, 2001; the Forum received a hard copy of the Complaint on April 24, 2001.

On April 24, 2001, CORE and CSL GmbH confirmed by e-mail to the Forum that the domain names usedcat-auction.com, usedcaterpillarspecialistauction.com, catauctions.com, and usedcaterpillarspecialist.com are registered with CORE and CSL GmbH and that the Respondent is the current registrant of the names. CORE and CSL GmbH have verified that Respondent is bound by the CORE and CSL GmbH registration agreements 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 25, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 15, 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@usedcat-auction.com postmaster@usedcaterpillarspecialistauction.com, postmaster@catauctions.com, and postmaster@usedcaterpillarspecialist.com by e-mail.

On May 11, 2001, Respondent requested an extension of time to submit a response. On May 15, 2001, the Forum granted an extension until June 4, 2001, to submit a response.

A timely response was received and determined to be complete on May 31, 2001.

A timely additional submission was received from the Complainant on June 7, 2001.

On June 8, 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.

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

Complainant contends that Respondent's domain names usedcat-auction.com, usedcaterpillarspecialistauction.com, catauctions.com, and usedcaterpillarspecialist.com are confusingly similar to its trademarks CAT and CATERPILLAR; that Respondent does not have any rights or legitimate interests with respect to the infringing domain names; and that the infringing domain names were registered and are being used by Respondent in bad faith.

Respondent does not dispute the allegations with respect to the domain name catauctions.com. Respondent denies, however, the remaining allegations of the Complaint, and contends that it has used the domain names usedcat-auction.com, usedcaterpillarspecialistauction.com, and usedcaterpillarspecialist.com prior to notice of this dispute in connection with a bona fide offering of services (i.e., advertising for used CATERPILLAR equipment).

Complainant has adopted and continuously used since that adoption, the marks CATERPILLAR (since 1904) and CAT (since 1949) as trade names, trademarks, and service marks. Complainant is the world's largest manufacturer of construction and mining equipment, diesel and natural gas engines, and industrial gas turbines. Complainant manufactures, sells and distributes a wide variety of heavy-industry equipment, including track-type tractors, track loaders, wheel loaders, integrated tool carriers, excavators, mining shovels, off-highway trucks, scrapers, motor graders, backhoe loaders, paving products, agricultural equipment, forest machines, wheel tractors and compactors, telescopic handlers, compacts, engines, and gas turbines.

Complainant owns registrations for the CATERPILLAR and CAT trademarks in over 150 countries around the world, including the United Kingdom. Complainant has sold its CATERPILLAR and CAT equipment around the world, including the United Kingdom. Complainant has a worldwide network of authorized dealers who are licensed to use its trademarks in connection with the sale of both new and used CATERPILLAR equipment.

Complainant owns the domain names caterpillar.com, cat.com and catused.com. A sizable part of Complainant's business involves the rental, lease and sale of used CATERPILLAR equipment, some of that business being conducted via the catused.com website.

Respondent is located in the United Kingdom and operates under the domain name usedcat-auction.com to provide online sales services related to used CATERPILLAR and CAT equipment. In other words, Respondent acts as a referral network to match buyers and sellers of CATERPILLAR equipment. Respondent uses the domain names usedcaterpillarspecialistauction.com, catauctions.com, and usedcaterpillarspecialist.com to direct traffic to his usedcat-auction.com website. Respondent is not an authorized CATERPILLAR dealer and has not been licensed to use Caterpillar's trademarks.

Respondent's web site prominently features the name usedcat-auction.com, which incorporates the CAT trademark, across the top of each page of the usedcat-auction.com website.

The website's home page has a box containing a disclaimer of affiliation between Respondent and Complainant. The disclaimer states, "This site is dedicated to the independent owner and discerning buyer of quality USED Caterpillar® heavy equipment around the globe. Association with manufacturer or manufacturer's official dealership is not implied." At the bottom of the disclaimer box, the word "more" links to another website page that specifically refers to the lack of affiliation between Respondent and Caterpillar Inc. (not simply "manufacturer"), and which contains a link to cat.com, Complainant's website.

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.

In the first paragraph of its response, Respondent relinquishes rights to the domain name catauctions.com, because Respondent declares that he is making no use of this domain name. The parties have not completed a transfer agreement for this domain name. Because the Registrar will transfer a domain name only if the parties have completed a transfer agreement, or only if a transfer order from a UDRP panel is received, this decision contains findings for all four domain names, including catauctions.com.

The domain names usedcat-auction.com, usedcaterpillarspecialistauction.com, catauctions.com, and usedcaterpillarspecialist.com each combine one of Complainant’s CATERPILLAR or CAT marks with additional descriptive or generic words. The additional words are "used," "auction(s)," and "specialist."

The mere addition of descriptive or generic words to a famous mark, however, does not eliminate the similarity between the domain name and the trademark. See Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum, Dec. 14, 2000) (finding that a number of domain names, including "cat-usedparts.com", were confusingly similar to the registered trademark CAT); Christie's Inc. v. Tiffany's Jewelry Auction Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name "christiesauction.com" is confusingly similar to the Complainant's mark since it merely adds the word auction used in its generic sense); 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"); Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (caterpillarparts.com and caterpillarspares.com are confusingly similar to the mark CATERPILLAR); Hewlett Packard Co. v. Posch Software, FA 95322 (Nat. Arb. Forum, Sept. 12, 2000) (hp-software.com is confusingly similar to complainant's HP marks).

Accordingly, this panel finds that the domain names usedcat-auction.com, usedcaterpillarspecialistauction.com, catauctions.com, and usedcaterpillarspecialist.com are confusingly similar to the Complainant's registered marks CATERPILLAR and CAT.

Respondent acts as a referral network for the sale of used CATERPILLAR equipment, which is a legitimate business. However, this Panel holds that Respondent's use of the usedcat-auction.com, usedcaterpillarspecialistauction.com, catauctions.com, and usedcaterpillarspecialist.com domain names in connection with this business is not legitimate. Respondent has made an illegitimate use of the domain names, with the intent, for commercial gain, of misleading and diverting consumers who are seeking the Complainant or Complainant's dealer network.

Because the marks CAT and CATERPILLAR are fully incorporated into the domain names, it would be reasonable for Internet users to assume that the usedcat-auction.com, usedcaterpillarspecialistauction.com, catauctions.com, and usedcaterpillarspecialist.com domain names are operated or sponsored by Complainant or an authorized CATERPILLAR dealer, when in fact they are not. See 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); The Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent's use of domain names confusingly similar to Complainant's mark to sell competing goods was an illegitimate use and not a bona fide offering of goods); Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from the Complainant's site to a competing website).

Moreover, Respondent is not commonly known by any of the disputed domain names. 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).

Respondent contends that he is making a fair use of the domain names, as described in Policy ¶ 4(c)(iii), because he is not competing with Complainant's business, given that he sells used Caterpillar equipment, and Complainant sells new Caterpillar equipment. However, the evidence shows that Complainant and/or Complainant's dealers do indeed sell used Caterpillar equipment.

Nominative fair use allows a person to truthfully use a trademark to identify the trademarked product or service, as in the statement "We sell used CATERPILLAR equipment." Nominative fair use also requires that the person use only so much of the mark as is reasonably necessary to identify the product and do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder. New Kids on the Block v. News America Publishing, Inc., [1992] USCA9 2148; 971 F.2d 302 (9th Cir. 1992); Toho Co. v. William Morrow & Co., 33 F.Supp.2d 1206 (D.C. Cal. 1998) (use of GODZILLA trademark in title of book not fair use).

The fair use doctrine does not provide a reseller with the right to incorporate a famous trademark into the reseller's domain name if the resulting domain name leads computer users to believe that there is an affiliation or sponsorship between the trademark owner and the reseller. As a UDRP panel stated in Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., D2000-0113 (WIPO Apr. 13, 2000):

See also Nikon, Inc. and Nikon Corp. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2001) (majority view rejects claim that a seller of trademarked goods can, without authorization, use the manufacturer's or licensor's name as part of a domain name).

The overall impression created by Respondent's website is that the website is somehow sponsored by or affiliated with the Complainant. Neither Mr. Vine's name nor the EU Direct Ltd. name appears on the site. The CAT and CATERPILLAR trademarks appear several places on the Respondent’s usedcat-auction.com site. The website name and copyright notice inform customers that the site is owned by usedcat-auction.com. Although Respondent's home page contains a nominal disclaimer, the disclaimer is not prominent and the lack of an affiliation between Complainant and Respondent is not clearly stated on the home page. A more complete disclaimer appears when the computer user links to an additional disclaimer page, but the hyperlink is small and easily overlooked.

For the above reasons, this Panel concludes that Respondent has no rights or legitimate interest in respect of any of the four disputed domain names.

Respondent was obviously aware of Complainant’s famous mark prior to registering the disputed domain names, in view of the fact that Respondent's business is based upon the sale of used CATERPILLAR equipment. Moreover, the CATERPILLAR trademark appears to have achieved the status of a famous mark. 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).

The disclaimer on Respondent's website does not preclude a finding that Respondent acted in bad faith. Although a disclaimer may help rectify consumer confusion after the Internet user arrives at the website, a disclaimer cannot prevent the diversion of Internet users caused by the use of a famous mark in the domain name itself. See Madonna Ciccone p/k/a Madonna v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (finding use of disclaimer insufficient to avoid a finding of bad faith because the disclaimer could not dispel initial interest confusion). Moreover, the particular disclaimer used by Respondent on the usedcat-auction.com site is ineffective in this situation, as explained above.

Another factor indicating Respondent's bad faith is the fact that Respondent has registered six separate domain names featuring Complainant's mark. Besides the four names in dispute in the present proceeding, Respondent has also registered caterpillar.eu.com and cat-auctions.com.

Even Respondent's offer to relinquish its rights in catauctions.com and caterpillar.eu.com indicates Respondent's bad faith. As of the filing date of the Complainant, the domain name catauctions.com was still in use, forwarding traffic to Respondent's usedcat-auctions.com website. See Marcor Int’l. v. Langevin, FA 96317 (Nat. Arb. Forum Jan. 12, 2001) (Respondent's registration and use of the domain name at issue coupled with its expressed willingness to transfer the name amply satisfies the bad faith requirements set forth in ICANN Policy); Colgate-Palmolive Co. v. Domains For Sale, FA 96248 (Nat. Arb. Forum Jan. 18, 2001) (Respondent's willingness to transfer the domain name at issue to Complainant, as reflected in its Response, is evidence that it has no rights or legitimate interests in the domain name).

It is clear that Respondent has registered the disputed domain names for the specific purpose of trading off the name and reputation of the Complainant. 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).

In view of the fact that each party’s services relate in some way to the sale of used CATERPILLAR equipment, Respondent is Complainant’s competitor. Respondent registered each of the disputed domain names in order to gain customers and to disrupt Complainant’s business of authorizing dealers to sell its CATERPILLAR equipment. 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 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).

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). If Respondent wished to trade off the goodwill associated with the CATERPILLAR marks, he should have sought a license from Complainant. See Volkswagen of Am., Inc. v. Site Design Online, FA 95753 (Nat. Arb. Forum Nov. 6, 2000) (finding that the failure to seek a license from Complainant dictated a finding of bad faith with respect to the domain name "bayareavw.com").

In summary, this Panel finds that the domain names usedcat-auction.com, usedcaterpillarspecialistauction.com, catauctions.com, usedcaterpillarspecialist.com are confusingly similar to Complainant's CATERPILLAR and CAT trademarks, that the Respondent has no rights or legitimate interests in those domain names, and that Respondent has registered and used those domain names in bad faith.

It is the decision of this Panel that the four domain names at issue, usedcat-auction.com, usedcaterpillarspecialistauction.com, catauctions.com, usedcaterpillarspecialist.com, be transferred from Respondent to Complainant.