DECISION

Caterpillar Inc. v. VMC Right Track, Inc.

Claim Number: FA0209000125750

PARTIES

Complainant is Caterpillar, Inc., Peoria, IL, USA (“Complainant”), represented by Gene Bolmarcich. Respondent is VMC Right Track Inc., Lachine, PQ, CANADA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <catauction.net> and <usedcatauctions.net>, registered with Network Solutions, Inc.

PANEL

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

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 20, 2002; the Forum received a hard copy of the Complaint on September 25, 2002.

On September 24, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <catauction.net> and <usedcatauctions.net> are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 September 26, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 16, 2002 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@catauction.net and postmaster@usedcatauctions.net 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 November 6, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant’s Submission makes the following assertions:

Respondent’s <catauction.net> and <usedcatauctions.net> domain names are confusingly similar to Complainant’s registered CAT mark.

Respondent does not have any rights or legitimate interests in the <catauction.net> and <usedcatauctions.net> domain names.

Respondent registered and used the <catauction.net> and <usedcatauctions.net> domain names in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Caterpillar Inc., is the holder of many registrations for the trademark CAT (e.g., U.S. Reg. No. 1,151,014), an abbreviated form of their registered CATERPILLAR family of marks.  Complainant originally registered the CAT mark on September 23, 1952 on the Principal Register of the United States Patent and Trademark Office (“USPTO”), first used it in commerce on February 17, 1949, and has continuously used it to the present day.  Complainant holds 25 registrations for the CAT word and design mark in the United States, and holds over 150 registrations worldwide.  Under the CAT family of marks Complainant, as the world’s largest manufacturer of construction and mining equipment, manufactures, sells, and distributes a wide assortment of heavy-industry equipment. Through trademark license agreements with its dealers, Complainant’s mark is used by authorized dealers in connection with the sale, rental and service of new and used equipment and parts.  Complainant also operates websites at <catused.com> and <usedcat.com>, where it conducts business involving the rental, lease, and sale of used CATERPILLAR and   CAT equipment.

Respondent, VMC Right Track, Inc., registered the <catauction.net> and <usedcatauctions.net> domain names on September 20, 2000, and is not licensed or otherwise authorized to make any use of the CAT mark for any purpose.  As Respondent uses both of the disputed domain names to operate identical listing services for various types of machinery, including utility vehicles, snow vehicles, backhoes and snowplows, both domain names will be treated as if they were one for the purposes of this dispute.

Included on the main page of the disputed domain names is a link to Respondent’s company at <vmcrighttrack.com>, where users can view Respondent’s products or obtain quotes thereon.  Respondent’s business involves making and selling snow grooming and utility vehicles, products that are similar to those made and sold by Complainant.

In response to a cease-and-desist letter sent by Complainant, Respondent called Complainant’s attorney, explaining that the disputed domain names were references to “snow cats”, but that Complainant could make good use of the names and that $150,000 would be an appropriate sale price for the subject registrations. Complainant refused to consider this offer.

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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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

Complainant has established rights in its CAT mark through registration on the Principal Register of the USPTO as well as via continuous and widespread use of the mark worldwide.

Respondent’s <catauction.net> and <usedcatauctions.net> domain names are confusingly similar to Complainant’s registered CAT mark.  The only differences between Respondent’s domain names and the registered mark of Complainant is the addition of the top-level domain “.net” and the words “used” or “auction/s” to the disputed domain names.

The addition of a top-level domain is irrelevant when determining whether a domain name is confusingly similar to a mark in which a Complainant has established rights; thus Respondent’s addition of “.net” does nothing to prevent a finding of confusing similarity.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

Furthermore, the addition of the descriptive words “used” and “auction/s” to the disputed domain names does not defeat a finding of confusing similarity by the Panel under Policy ¶ 4(a)(i).  These descriptive words, similar to those used by Complainant on its websites, do not change the fact that the dominant feature of the disputed domain names is the use of Complainant’s distinctive and registered CAT mark.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by the disputed domain names and the trademarks was that the goods and services offered in association with the domain name are manufactured by or sold by the Complainant or one of the Complainants approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar”).

In light of the fame associated with Complainant’s mark, the similarity between Respondent’s listing services and those offered by Complainant (such as the rental and sale of used CAT equipment) only increases the likelihood of confusion.  See Slep-Tone Entm't Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that “likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry”); see also Yahoo! Inc. and GeoCities v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to Complainant’s marks and likely to mislead Internet users into believing that products and services offered by Respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered).

Accordingly, the Panel finds that the <catauction.net> and <usedcatauctions.net> domain names are confusingly similar to Complainant’s registered CAT mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

It is neither a bona fide offering of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii), when the holder of a domain name that is confusingly similar to an established mark diverts Internet users to its own competing website for commercial gain.  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 Complainant's mark CATERPILLAR); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).  Respondent’s use of confusingly similar domain names to gain a commercial profit by directing unsuspecting Internet users to its own website is not a bona fide offering of goods or services, nor a noncommercial or fair use of the domain name.

Additionally, Respondent’s offer to sell the disputed domain name registrations to Complainant for $150,000 after being informed that it was infringing on Complainant’s mark is further evidence that Respondent is not legitimately using the domain names.  See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).

Respondent is not commonly known by the name CATAUCTION, USEDCATAUCTION, <catauction.net>, or <usedcatauctions.net>, and Complainant has not given Respondent permission or consent to use its CAT mark.  Respondent’s assertion to Complainant that the term “cat” in its domain names is a generic reference to “snow cats” is unpersuasive to the Panel, as nowhere on Respondent’s website does the term “snow cat” appear.  In addition, Respondent holds no registered marks establishing it has ever been commonly known by any derivative of the word “cat” (or “snow cat”).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Respondent’s registration of the disputed domain names occurred decades after Complainant initially registered its mark and began using it in commerce.  Furthermore, due to the widespread popularity of the CAT mark, it is doubtful that any entity could claim to be commonly known by the mark.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark). For all of these reasons, Complainant has sufficiently established that Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶¶ 4(c)(i-iii).

Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered and used the disputed <catauction.net> and <usedcatauctions.net> domain names in bad faith.  Bad faith use and registration is shown under Policy ¶ 4(b)(iv) where the disputed domain name was registered to “intentionally attempt to attract, for commercial gain, Internet users…by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location.”  See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 WIPO Apr. 22, 2000) (finding bad faith where Respondent attempted to attract customers to its website, <efitnesswholesale.com>, and created confusion by offering similar products for sale as Complainant).  Respondent’s use of the domain names in connection with its website used for auctioning various types of machinery also offered by Complainant evidences bad faith registration and use.

The fact that the use of the registered CAT mark regularly denotes that a business is authorized by Complainant to perform specific services, coupled with the fame that Complainant has established in its CAT mark, is further evidence of bad faith use and registration by Respondent when it used the CAT mark in the disputed domain names.  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 Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding bad faith when (1) the domain name contains the Complainant’s mark in its entirety, (2) the mark is a coined word, well-known and in use prior to Respondent’s registration of the domain name, and (3) Respondent fails to allege any good faith basis for use of the domain name).

As Respondent submitted no Response to the Complaint, the Panel concludes from the facts presented by Complainant that Respondent registered confusingly similar domain names in order to gain revenue from diverting Internet users to its competing websites. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (holding that Respondent’s failure to offer any evidence permits the inference that the use of Complainant’s mark in connection with the Respondent’s website is misleading and Respondent is intentionally diverting business from Complainant).

Accordingly, the Panel finds that Respondent both registered and used its domain names in bad faith, and Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.

Accordingly, it is Ordered that the <catauction.net> and <usedcatauctions.net> domain names be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: November 14, 2002

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