Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant is Caterpillar, Inc., ("Caterpillar"), a Delaware Corporation whose principal place of business is at 100 Northeast Adams Street, Peoria, Illinois 61629, USA. The Complainant is represented by Mary E. Innis and Danielle B. Lemack of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson with a mailing address of 311 South Wacker Drive, Suite 5000, Chicago, Illinois 60606, USA.

The Respondent is Globe Tex, Inc., whose address is 2031 North Slappy Boulevard, Albany, Georgia 31701, USA.

The Domain Name subject to this Complaint is <caterpillars4sale.com>. The Registrar of the Domain Name is Network Solutions, Inc., of 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 28, 2001 (electronic copy) and March 29, 2001 (hard copy) and assigned the case number D2001-0448.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), in accordance with paragraph 4(a) of the Rules, and paragraph 5 of the Supplemental Rules. The Administrative Panelist ("Panel") is satisfied that the Complaint satisfied the Rules and Supplemental Rules.

Notification of the Complaint and commencement of the administrative proceeding were given to Respondent by notice dated April 9, 2001. The notification of Complaint and commencement of administrative proceeding were sent by email, facsimile, and courier. The Panel has seen the courier receipt and is satisfied that the Complaint satisfied the Rules and Supplemental Rules with regard to notification. No response was received by the expiry of the twenty-day deadline on May 1, 2001. Notification of Respondent’s default was given on May 2, 2001, by email at the address given in the Complaint. The Panel is therefore satisfied that the notification of Respondent’s default was effectively given.

The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers, or extensions of deadlines. The Panel has not found it necessary to request any further information from the parties, as a consequence of which the date scheduled for the issuance of the Panel’s decision is June 20, 2001.

Under Paragraph 5(e) of the Uniform Rules, "[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the [C]omplaint." Since Respondent failed to submit a Response before the date of this decision, the Panel adopts here the following asserted facts in the Complaint as undisputed facts, and decides the dispute between Complainant and Respondent based on the following undisputed facts:

The Complainant is Caterpillar. The Complainant is the owner of several federal trademark registrations for the marks CATERPILLAR and CAT, including Reg. No. 277,417, registered on November 11, 1930; Reg. No. 345,499, registered on April 27, 1937; Reg. No. 506,258, registered on February 1, 1949; Reg. No. 531,626, registered on October 10, 1950; Reg. No. 955,141, registered on March 13, 1973; Reg. No. 985,439, registered on June 4, 1974; Reg. No. 2,140,605, registered on March 3, 1998; Reg. No. 984,444, registered on May 21, 1974; and Reg. No. 1,579,437, registered on January 23, 1990.

Complainant uses its marks in connection with its business operations including "the development, manufacture, distribution, marketing and sale of earthmoving and construction machinery and equipment, repair and maintenance services therefore, and the distribution of . . . promotional items." Complainant sells and provides its goods and services through authorized dealerships, which have entered into Service Mark License Agreements to use Complainant’s marks.

Complainant uses the domain names <www.caterpillar.com> and <www.cat.com> in connection with advertising, promotion, and sale of it machinery and equipment, repair and maintenance services therefore, and its promotional items. The web sites also provide source and contact information for Complainant’s authorized dealerships.

On February 11, 2000, Complainant sent Respondent a cease and desist letter via certified mail requesting that Respondent cancel or assign to Caterpillar its registration for the domain name. Respondent did not respond to Complainant’s letter.

The Complainant contends:

(i) The Domain name <caterpillars4sale.com> registered by Respondent is confusingly similar to the CATERPILLAR marks because it incorporates the entire CATERPILLAR mark. Complainant contends that the pluralization of the mark and the addition of "4sale" to the mark does not reduce the domain name’s similarity with the CATERPILLAR marks. Complainant contends that consumers will associate the domain name with the CATERPILLAR mark and are likely to believe falsely that Caterpillar is affiliated with or endorses Respondent.

(ii) Complainant argues that Respondent has produced no evidence to show a right or legitimate interest in the domain name. Complainant has not licensed or otherwise permitted Respondent to use the CATERPILLAR marks or to apply for or use any domain name incorporating those marks. Respondent promotes itself and does business under the name Globe Tex, Inc., and is not commonly known by the CATERPILLAR name or the domain name at issue. Complainant contends that the fact that Respondent sells Caterpillar goods along with other types of machinery does not entitle it to use the CATERPILLAR mark as its domain name. Complainant further contends that since registering the name, Respondent’s web site has been under construction. Therefore, the name never has been used with a bona fide offering of goods or services by Respondent.

(iii) Complainant contends that Respondent registered and used the domain name in bad faith. Citing the "fame" of the CATERPILLAR marks, Complainant contends that Respondent necessarily had actual knowledge of Caterpillar’s rights in the CATERPILLAR mark. Complainant also contends that Respondent registered the domain name intentionally to attempt to attract users to its web site in violation of the Policy, Paragraph 4(b)(iv). Respondent is, Complainant argues, attracting consumers to its web site by deliberately creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the web site. Furthermore, Complainant argues that Respondent registered the domain name over two years ago and the web site does not contain any content. This suggests that Respondent registered the domain name primarily for the purpose of selling it to Caterpillar. Complainant sent Respondent a cease and desist letter on February 11, 2000, to which Respondent did not reply. This failure to respond, according to Complainant, is further evidence of Respondent’s bad faith.

Respondent failed to respond to Complainant’s contentions; therefore, the Panel has no alternative but to determine the case on the basis of Complainant’s submissions only and to determine whether Complainant has established its Complaint.

The domain name in dispute is <caterpillars4sale.com>. The domain name contains the CATERPILLAR mark and implies endorsement by the Caterpillar Company. The Respondent may sell Caterpillar machinery, but it is not an authorized dealership and sells many brands other than Caterpillar. The Panel notes that the domain name does not currently appear to be in use. However, based on Complainant’s submission, when the domain name was in use, it was used in connection with Respondent’s current business, and as such, was being used to take advantage of Caterpillar’s goodwill through use of this website and to confuse customers by making them think there was a legal relationship or license between Complainant and Respondent.

The Panel finds for the Complainant on the first element, that Respondent’s domain name is confusingly similar to the service marks in which the Complainant has rights.

Respondent has no right or legitimate interests in respect to the domain name <caterpillars4sale.com>. Although Respondent sells Caterpillar equipment, Respondent also sells other types of equipment and is not an authorized Caterpillar dealership. Complainant clearly has established the CATERPILLAR mark and the goodwill associated with it. Based on Complainant’s assertions, and Respondent’s default, the Panel has no choice but to agree with Complainant that Respondent has no right or legitimate interest in the domain name.

The Panel therefore concludes that Respondent has no right or legitimate interest in the domain name. Mere registration alone cannot constitute such rights.

The Panel finds that Respondent registered and used the disputed domain name in bad faith. Policy paragraph 4(b) provides four circumstances that are evidence of registration and use in bad faith: (1) evidence of the registration and use of a domain name in circumstances indicating registration for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant; (2) evidence of registration of the domain name in order to prevent the owner of the trademark or service mark from using the mark in a corresponding domain name; (3) evidence of the registration of the domain name for the purpose of disrupting the business of a competitor; or (4) evidence of use of the domain name to intentionally attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website.

Based on Respondent’s prior use of the CATERPILLAR mark in its domain name to attract consumers looking to purchase Caterpillar equipment, there is sufficient evidence to show use by Respondent of the domain name to intentionally attract, for commercial gain, Internet users to Respondent’s website based on confusion with Complainant’s mark. Any consumer doing a search for Caterpillar equipment would find Respondent’s website and could easily be misled to believe that the site belonged to an authorized Caterpillar dealership. The Panel sees no need to address whether Respondent’s failure to reply to Complainant’s cease and desist letter is evidence of bad faith. Likewise, the Panel sees no reason to address whether Respondent’s registration of the domain name two year’s previous and subsequent failure to use the domain name is evidence alone of Respondent’s intention to sell the domain name to Complainant.

Nevertheless, the Panel concludes that the Complainant has succeeded in proving that the domain name was registered and is being used in bad faith.

Thus, Complainant has proven its three submissions in accordance with Paragraph 4(a) of the Policy, and accordingly, Complainant has succeeded in its Complaint.

In light of the foregoing, the Panel decides that the domain name registered by Respondent is confusingly similar to the trademarks of Complainant, that Respondent has no right or legitimate interest in respect to the domain name, and that Respondent’s domain name has been registered and is being used in bad faith. Accordingly, pursuant to paragraph 4(a) of the Policy, the Panel requires that registration of the domain name <caterpillers4sale.com> be transferred to Complainant.

Timothy D. Casey
Solo Panelist

Dated: June 20, 2001