DECISION

Caterpillar Inc. v. Thomas Huth

Claim Number: FA0307000169056

PARTIES

Complainant is Caterpillar Inc., Peoria, IL, (“Complainant”) represented by Gene Bolmarcich.  Respondent is Thomas Huth, Dernbach, GERMANY (“Respondent”) represented by Scholz of Herzog und Steinhoff.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <catspares.com> and <cat-spares.com>, registered with Schlund+Partner Ag.

PANEL

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

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 15, 2003; the Forum received a hard copy of the Complaint on July 18, 2003.

On July 17, 2003, Schlund+Partner Ag confirmed by e-mail to the Forum that the domain names <catspares.com> and <cat-spares.com> are registered with Schlund+Partner Ag and that Respondent is the current registrant of the names.  Schlund+Partner Ag verified that Respondent is bound by the Schlund+Partner Ag registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On July 28, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 18, 2003, 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@catspares.com and postmaster@cat-spares.com by e-mail.

A timely Response, in German, was received and determined to be complete August 12, 2003.  An English translation of the Response was received and determined to be complete August 14, 2003. 

On august 19, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant makes the following allegations in this proceeding:

1. Complainant has rights in the CAT mark and associated logos.

2. Respondent registered domain names that are identical to or confusingly similar to this mark.

3. Respondent has no rights to or legitimate interests in the Complainant’s CAT mark.

4. Respondent acted in bad faith in registering and using domain names containing Complainant’s mark.

B. Respondent makes the following points in response in this proceeding:

1. Complainant’s attorney has not shown authority to respond and       Complainant has not translated the exhibits into the German language.

2. The domain names registered by Respondent are operated by Interpart GmbH  

und Co., KG; but Respondent Thomas Huth is “merely a contact person” for the international sales division.

3. Werner Huth, managing director, is the only person “having … power of

      disposition.”

4. Thomas Huth has “surrendered use” of the domain to his employer at no charge.

5. The domain names are not identical to or confusingly similar to Complainant’s marks.

6. By inference, Respondent has rights and legitimate interest “in the domain names” based at least in part on the generic nature of CAT.

7. Complainant is wrong when it contends Respondent “wrongfully registered and used” the domain names.

FINDINGS

The Panel first addresses Respondent’s suggestion that he is a mere agent; that Complainant named the wrong Respondent; and/or that Complainant failed to bring a claim against a person with authority. Respondent contends that he registered the disputed domain names at the request of his employer, Interpart GmbH und Co. KG, and that Respondent surrendered use of the disputed domain names to the employer without charge and that he is not a person with a right to speak for the employer. 

The Panel has considered Respondent’s allegations of an agency relationship with an employer, who allegedly has rights in the domain name. Absent other factors that are present here, a Respondent may establish rights in a domain name where the name was registered for a principal. See K2r Produkte AG v. Trigano, D2000-0622 (WIPO Aug. 23, 2000) (finding that Respondent had rights and legitimate interests in the domain name <k2r.com> where he registered the domain name for a website in connection with his mother’s store, "KIRK ET ROSIE RICH"). 

But here, Respondent concedes his agency relationship on behalf of Interpart GmbH und Co. KG as an employee, which advertises itself as a distributor of spare parts for CAT products.  Yet, Respondent registered the domain names in question under his name and whatever the subsequent conduct Respondent alleges, Respondent offered no documentary proof here of his principal’s rights, his purported transfer of the domain names to someone else, or this Respondent’s right to act on behalf of anyone other than himself. 

The record shows that Respondent registered both disputed domain names March 31, 2003; that Respondent listed himself as the Administrative contact; and that Respondent produced no records to show any other party with an interest in the domain names. 

The Panel finds that it must decide the case based on the proof in the record and the Panel gives greater weight to proof supported by extrinsic objective evidence than to mere subjective statements not supported by objective proof. Without proof, the Panel declines to consider the rights of Respondent’s purported principle.    See RC Ritzenhoff Cristal AG v. Mitsuhashi, D2000-1796 (WIPO Feb. 19, 2001) (declining to consider the rights of Respondent’s purported principal under Policy ¶ 4(a)(ii) where Respondent alleged to have registered the domain name for its principal but provided its own name as the registrant of record).

On the other hand, Complainant Caterpillar established in this proceeding that it has legal and common law rights in the CAT word mark for numerous matters, including heavy equipment “and parts for all of the above.” Complainant established numerous registrations with the United States Patent and Trademark Office and asserts international protection for the mark. (Registration numbers include: 2140605, 2140606, 0564272, 0770639, 0984444, 1290411, 1579437.)  First use was July 13, 1988, and first use in commerce was October 20, 1988, some 15 years before Respondent registered the disputed domain names.  Complainant also asserts common law use back to the 1940’s.

Complainant also established with extrinsic proof that Interpart GmbH und Co. KG, the entity that Respondent claims is the principal owner of the domain names in issue, advertises itself on the Internet to be: “Your reliable partner for spare parts fitting JCB, CAT and other earth moving equipment!”.

Complainant established that Respondent is the person who registered and serves as administrative contact for the domain names that advertise that Interpart GmbH und Co., KG distributes parts for CAT products and asserts that it does so without any permission or license. Complainant asserts that it has a network of licensed dealers.

Complainant established by its allegation that Respondent has no license or permission to use Complainant’s mark and Respondent did not refute the allegation that Respondent or his alleged principal have no permission or license.  Instead, Respondent urges, without proof, that his principal has been selling parts for Complainant’s equipment.

Further, other than the subjective statements made by Respondent in his Response referenced above and set out under Respondent’s points in response, Respondent offered no objective proof to support any of his statements.

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 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;

(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 to and/or Confusingly Similar

Complainant contends that it has established rights in the CAT mark through several registrations with the U.S. Patent and Trademark Office, as set out above, and including Reg. Nos. 2,421,077 (registered January 16, 2001) and 984,444 (registered May 21, 1974).  Both of these dates preceed the 2003 registration by Respondent.  Complainant also alleges that it holds several registrations worldwide for the CAT mark and contends that it has established rights in the CAT mark through the mark’s use in commerce since 1949.  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates.  It is sufficient that Complainant can demonstrate a mark in some jurisdiction); see also Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that Complainant has common law rights in the mark FISHTECH, which it has used since 1982).

Furthermore, Complainant argues that the disputed domain names are confusingly similar to Complainant’s mark because the disputed domain names fully incorporate the CAT mark and merely add the generic word “spares.”  See Am. Online, Inc. v. Anytime Online Traffic School, FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to Complainant’s mark).

In addition, the Panel may find that the addition of the hyphen to Complainant’s mark is insufficient to distinguish the <cat-spares.com> domain name from Complainant’s CAT mark.  See Teleplace, Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that the domain names <teleplace.org>, <tele-place.com>, and <theteleplace.com> are confusingly similar to Complainant’s TELEPLACE trademark); see also InfoSpace.com, Inc. v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”).

Respondent contends that since “spares” can have several meanings besides “parts,” the disputed domain names are not confusingly similar to Complainant’s mark because Internet users will not necessarily conclude that the domain names refer to something offered by the Complainant or its authorized dealers. Further, Respondent argues that “spares” describes the Respondent’s business, and therefore does not constitute confusing similarity pursuant to Policy ¶ 4(a)(i).

Some cases in the past would tend to support Respondent’s view were it not for other factors. See Kittinger Co. v. Kittinger Collector, AF-0107 (eResolution May 8, 2000) (finding that <kittingercollector.com> is not identical or confusingly similar to a trademark of the Complainant because the use of Complainant's trademark in this domain is purely nominative, the domain name as a whole is descriptive of the Respondent's business, and the domain name is unlikely to cause confusion with Complainant's business); see also Caterpillar Inc. v. McKean, FA 97302 (Nat. Arb. Forum Aug. 6, 2001) (finding that the <used-caterpillars.com>, <used-caterpillar.com>, <usedcaterpillars.com>, <caterpillarsused.com> and <used-cats.com> domain names were not confusingly similar to Complainant’s marks because the disputed domain names describe Respondent’s business and because the word “used” distinguishes the domain names from the marks).

However, in this case, Respondent concedes that he knew of Complainant’s mark, and one assumes the protected nature of Complainant’s rights in the mark, prior to using it.  The facts suggest that Respondent sought to take advantage of Complainant’s mark and the notoriety associated with it by placing it first in the domain names in issue.  Mere placement alone suggests the greater likelihood that Respondent intended for Internet users seeking Complainant to end up at Respondent’s site.

The Panel finds that Complainant satisfied the requirements of Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant established in this proceeding that it has legal and common law rights to and legitimate interests in the CAT mark. Complainant asserts that Respondent lacks such rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the disputed domain names or by the CAT mark.  Complainant further argues that Respondent lacks rights in the disputed domain names because Respondent is neither affiliated with Complainant nor licensed to use Complainant’s marks.  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 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 never applied for a license or permission from Complainant to use the trademarked name).

Furthermore, Complainant asserts that Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant’s used parts without a license from Complainant to do so.  See G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding Respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from Complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no “bona fide” offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website, which offered both Complainant’s products and those of Complainant’s competitors).

Respondent first contends that Complainant’s assertion that the disputed domain names belong to Respondent is inaccurate.  That concession itself would tend to suggest that Respondent has conceded that Respondent has no rights to or legitimate interest in the domain names.  Yet, Respondent also asserts that he is merely a commercial employee of Interpart GmbH und Co. KG and that he registered the disputed domain names at the request of his employer.  Respondent further alleges without proof that he surrendered use of the disputed domain names to his employer at no charge.  When determining if Respondent has rights or legitimate interests in the disputed domain names, the Panel has discretion to take into consideration Respondent’s alleged agency relationship with its employer; but here Respondent concedes his agency relationship on behalf of Interpart GmbH und Co. KG as an employee and the documents show that his employer advertises itself as a distributor of spare parts for CAT products.  Yet, Respondent registered the domain names in question under his name and whatever the subsequent conduct of Respondent, this Respondent offered no documentary proof of his principal’s rights, his purported transfer to someone else, or this Respondent’s right to act on any one other than himself.  In this action Respondent has shown no rights that are legitimate rights or interest in the domain names containing in their entirety Complainant’s CAT mark. 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). Furthermore,

Respondent also claims that he has made a bona fide offering of goods using the disputed domain names because Interpart GmbH und Co. KG sells parts, including parts made by Complainant, that fit both Complainant’s and other manufacturers’ machines.  He then contends that although Interpart GmbH und Co. KG is not contractually integrated into Complainant’s dealer network, it lawfully stocks Complainant’s product line and offers for sale original spare parts manufactured by Complainant.  Respondent further contends that Interpart GmbH und Co. KG is entitled to use Complainant’s trademarks for purposes of describing its offering of goods. Although some cases have held that it is a bona fide use to have a website that “describes the content of the site,” they do not apply here. See Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (stating that “Respondent is using the domain <groceryoutlet.com> for a website that links to online resources for groceries and similar goods. The domain is therefore being used to describe the content of the site,” as evidence that Respondent was making a bona fide offering of goods or services with the disputed domain name); see also Verkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (finding that Respondent’s use of the disputed domain name to make a bona fide offering of services bestowed rights and legitimate interests in the domain name).  Here Respondent is knowingly using Complainant’s mark as the initial enticement to Internet users to get them to do business with Respondent and Respondent concedes that he does so without authority in a manner that competes with Complainant’s authorized dealer network for spare parts.

 

Respondent further contends that Interpart GmbH und Co. KG has rights in the disputed domain names because the company has managed its legitimate product line for approximately sixteen years, which is prior to the registration of the CATERPILLAR and CAT marks. Respondent offered no proof to support that contention.

Respondent also urges that Complainant’s CAT mark is generic.  Where a mark is generic, a Respondent may show rights. See Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001) (finding that Respondent has rights and legitimate interests in the domain name where “Respondent has persuasively shown that the domain name is comprised of generic and/or descriptive terms, and, in any event, is not exclusively associated with Complainant’s business”); see also Tough Traveler, Ltd. v. Kelty Pack, Inc, D2000-0783 (WIPO Sept. 28, 2000) (finding that Respondent had a legitimate interest in the domain name, <kidcarrier.com>, as a generic term for a class of products that Respondent sells).  Respondent’s contention is contrary to the proof. Complainant urges that the CAT mark is synonymous with Complainant’s heavy machinery. It is CAT spares that Respondent sells in competition with Complainant and Respondent’s own use of the term CAT shows that the mark has international recognition along with an international nexus with Complainant’s poducts.

The Panel finds that Complainant satisfied the requirements of Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant contends that Respondent had actual or constructive knowledge of Complainant’s rights in the CAT mark because the CAT mark is recognized worldwide, and that therefore Respondent registered the disputed domain names in bad faith.  The Panel finds that Respondent knew of Complainant’s rights in the CAT mark prior to registering the domain names in issue because Respondent knew of Complainant’s business and had sold Complainant’s parts.  See Digi Int’l, Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also 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 worldwide prominence of the mark and thus Respondent registered the domain name in bad faith).

In addition, Complainant asserts that Respondent has engaged in bad faith because Respondent attempted to benefit commercially from the goodwill associated with the CAT mark by registering domain names that fully incorporate the CAT mark and causing Internet user confusion as to the domain names’ source, sponsorship, affiliation, etc.  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also State Fair  v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website).  The Panel agrees.  Respondent’s placement of Complainant’s mark first in the domain names seems calculated to opportunistically capitalize on Complainant’s goodwill and to cause Internet users to believe that Complainant was the source or sponsor of the domain names.

The Panel further finds that Respondent registered and used the disputed domain names in bad faith because Respondent competes with Complainant and the disputed domain names fully incorporate Complainant’s mark.  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from Respondent, a watch dealer not otherwise authorized to sell Complainant’s goods, to Complainant).

Respondent conceded that he knew of Complainant’s CATERPILLAR mark but contended that he had no reason to know that CAT had existing trademark protection because he believed the word “cat” was generic.  See e.g. Anticybersquatting Consumer Protection Act, 15 U.S.C. §1125 (d)(1)(B)(ii), "[b]ad faith intent … shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.”  Respondent himself used the mark CAT as an identifier for the heavy equipment that Caterpillar manufactures.  Respondent has no reasonable grounds for believing that CAT was generic when Respondent used CAT in a manner consistent with the protected mark.

Finally, under his agency challenge, Respondent stated that Interpart GmbH und Co. KG is using the disputed domain names; therefore, Complainant cannot establish that Respondent used the domain names in bad faith; that Interpart GmbH und Co. KG is using the domain names to make a bona fide offering of goods; and that although Interpart GmbH und Co. KG is not contractually integrated into Complainant’s dealer network, it lawfully stocks Complainant’s product line and offers for sale original spare parts manufactured by Complainant. The Panel has already held that Respondent offered no proof to enable the Panel to give weight to any of his statements in that area but the Panel notes that even if Interpart GmbH und Co. KG is doing these things, it has not shown a right to do so under the Complainant’s CAT mark.

The Panel finds that Complainant met the requirements of Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.  Accordingly, it is Ordered that the <catspares.com> and <cat-spares.com> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist
Dated: September 2, 2003.

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