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Caterpillar Inc. v. Stan Tomalewski [2005] GENDND 568 (20 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Caterpillar Inc. v. Stan Tomalewski

Case No. D2005-0499

1. The Parties

The Complainant is Caterpillar Inc., Peoria, Illinois, United States of America, represented by J. Michael Hurst, United States of America.

The Respondent is Stan Tomalewski, Lusby, Maryland, United States of America.

2. The Domain Names and Registrar

The disputed domain names, registered with Go Daddy Software, are:

<catapillar-marine.com>;
<catapillarmarine.com>;
<caterpillar-marine-generator.com>;
<caterpillarmarinegenerator.com>;
<caterpillar-marine-generators.com>;
<caterpillarmarinegenerators.com>;
<caterpillar-marine-genset.com>;
<caterpillarmarinegenset.com>;
<caterpillar-marine-gensets.com>;
<caterpillarmarinegensets.com>.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2005. On May 9, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On May 9, 2005, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 19, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 26, 2005.

The Center appointed Steven Fox as the sole panelist in this matter on July 6, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Parties’ Contentions

A. Complainant

1. Complainant is Caterpillar Inc., which is also known by a shorthand name, “CAT,” is a long-established, multinational, Fortune 100 company with business operations in many areas. It is especially well-known for the manufacturing, sale, and distribution of earth moving, construction and mining equipment.

2. Caterpillar has adopted and continuously used, in interstate commerce and worldwide, nearly 3,000 trademark registrations in 192 countries; among them are the trademarks CATERPILLAR, CAT, CATERPILLAR & design and CAT & design as well as the domain names <caterpillar.com> and <cat.com>. The CATERPILLAR mark has been part of the economy of the United States since at least as early as 1904; and the CAT mark since at least as early as 1949.

3. The CATERPILLAR mark has been registered in the United States many times for many years. For example, Registration No. 0345499 has been registered since April 27, 1937, in connection with tractors for farms, road building, mining, logging, earth moving, hauling, and for other industrial and agricultural purposes.

4. Between September 30, 2004, and October 2, 2004, long after Complainant’s adoption, use and registration of its Caterpillar Marks and domain names, Respondent, Stan Tomalewski, registered the domains at issue.

5. Respondent is neither a dealer of CATERPILLAR equipment nor a licensee, nor is he affiliated with a dealer, licensee, Caterpillar or its affiliates. Respondent is not authorized or licensed to use the Caterpillar Marks in any form.

6. On November 5, 2004, and again on January 21, 2005, Caterpillar sent letters to Respondent demanding that he transfer the domains names at issue in this case. Annex I. Respondent failed to respond to either letter.

7. Upon information and belief, shortly after Caterpillar mailed this second letter, on February 5, 2005, Respondent directed his registrar, GoDaddy Software, to “de-list” his personal information from the WHOIS records of the domain names at issue and to place the domains on the status, “Registrar-Lock.”

8. There are no active websites presently located at any of these domains.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

5. Discussion and Findings

Paragraph 15(a) of the Rules states: “A Panel shall 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.” Since all parties are domiciled in the United States, the Panel will look to the principles of the law of the United States of America.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements: “(i) [the] domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and, (ii) [respondent has] no rights or legitimate interests in respect of the domain name; and (iii) [the] domain name has been registered and is being used in bad faith.”

A. Identical or Confusingly Similar

1. Complainant has proven that it is the owner of the trademark CATERPILLAR and marks incorporating the same with regard to a wide variety of goods.

2. This trademark is included in the disputed domain names <caterpillar-marine-generator.com>, <caterpillarmarinegenerator.com>, <caterpillar-marine-generators.com>, <caterpillarmarinegenerators.com>, <caterpillar-marine-genset.com>, <caterpillarmarinegenset.com>, <caterpillar-marine-gensets.com>, <caterpillarmarinegensets.com>.

3. The fact that the words “marine” and/or “generator” and/or “gensets” are added to Complainant’s trademark does not eliminate the similarity between Complainant’s trademark and the disputed domain names. All that was added are generic terms of products Complainant manufactures and sells.

4. In numerous cases, it has been held that a domain name that wholly incorporates a Complainant’s registered mark may be sufficient to establish confusing similarity for purposes of the Policy.

5. The domain names with “caterpillar” misspelled, <catapillar-marine.com>, <catapillarmarine.com>, are likewise confusingly similar. Confusing similarity depends first upon the similarity of sound, appearance and idea suggested by the mark and the domain name.

6. The Panel takes into account previous UDRP decisions relating to the practice of “typosquatting” which arises where the domain name is a slight alphabetical variation from a famous mark e.g. Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314 and Playboy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201. In these cases, the Panel has found the circumstances of “typosquatting” to constitute confusing similarity.

7. In the Panel’s view, this is the position here.

8. The Panel therefore finds that the action brought by Complainant meets the requirement of the Policy, paragraph 4(a)(i). The domain names in the Complaint are confusingly similar to Complainant’s registered marks.

B. Rights or Legitimate Interests

The Panel is satisfied, on the evidence presented, that the Respondent lacks rights or legitimate interests in respect of the domain name. In particular, it appears that none of the circumstances identified in paragraph 4(c) of the Policy, as evidencing such rights or legitimate interests, is present here. There is no evidence that the Respondent has made “demonstrable preparations” to use the domain name in connection with a bona fide offer of goods or services; that its business has “been commonly known” by the domain name; or that it is making any “legitimate non-commerical or fair use” of the domain name. On the contrary, Respondent no doubt knew (when he was registering the disputed domain names) that the names included protected trademarks. Those domain names are not presently being used for any purpose whatsoever, and there is no indication in the record as to what the precise nature of the Respondent’s business or other noncommercial activity is. Accordingly, the Panel concludes that the Complainant has satisfied the second element under paragraph 4(a) of the Policy in the present case.

C. Registered and Used in Bad Faith

The decisions of prior administrative panels have established that a respondent’s lack of use of the domain name in question can constitute “use in bad faith”. As concisely expressed in the Telstra decision, “the relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith.” Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, at paragraph 7.9.

1. Telstra identified on five factors which were relevant. (i) The strength of the trademark’s reputation in the instant case is high; (ii) there is no evidence by Respondent of actual or contemplated good faith use; (iii) while there are no active steps by Respondent to conceal its identity; (iv) nor any active provision of false contact details by Respondent; (v) the lack of any plausible actual or contemplated active use of the domain names by Respondent that would not be illegitimate is also high.

2. Again, the Respondent’s failure to provide any reply on the question of use is a significant factor.

3. In light of the above, the Panel is satisfied that the Respondent has registered and is using the disputed domain names in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

6. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names:

<catapillar-marine.com>;
<catapillarmarine.com>;
<caterpillar-marine-generator.com>;
<caterpillarmarinegenerator.com>;
<caterpillar-marine-generators.com>;
<caterpillarmarinegenerators.com>;
<caterpillar-marine-genset.com>;
<caterpillarmarinegenset.com>;
<caterpillar-marine-gensets.com>;
<caterpillarmarinegensets.com>;

be transferred to the Complainant.

Steven Fox
Sole Panelist

Dated: July 20, 2005