Catterpilar.com

The timeline behind catterpilar.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

DECISION Caterpillar Inc. v. higor lacerda / empresario Claim Number: FA2501002133255 PARTIES Complainant is Caterpillar Inc. ("Complainant"), represented by AJ Schumacher of Kelly IP, LLP, District of Columbia, USA. Respondent is higor lacerda / empresario ("Respondent"), Brazil. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <catterpilar.com>, registered with NameCheap, 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. Paul M. DeCicco, as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to Forum electronically on January 3, 2025; Forum received payment on January 3, 2025. On January 3, 2025, NameCheap, Inc. confirmed by e-mail to Forum that the <catterpilar.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy"). On January 6, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 27, 2025 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@catterpilar.com. Also on January 6, 2025, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts. Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default. On January 28, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco as Panelist. Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, 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 name be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant Complainant contends in part as follows: Caterpillar is the world's largest manufacturer of construction and mining equipment, diesel and natural gas engines, industrial gas turbines, and diesel-electric locomotives. In addition to its common-law rights, Complainant owns numerous registrations for its CATERPILLAR marks in various countries throughout the world, including multiple U.S. registrations. Respondent registered and uses the domain in bad faith with actual knowledge of Complainant's prior rights in its CATERPILLAR mark and for the express purpose of trading on the goodwill of Complainant's mark. This conclusion is inescapable because, among other things, the domain name consists of a typosquatted version of Complainant's identical CATERPILLAR mark and official domain CATERPILLAR.COM, differing by only two letters, namely, the addition of a second "t" towards the beginning of Complainant's mark and the deletion of an "l" towards the end of the mark. Respondent's at-issue domain name is confusingly similar to Complainant's famous and registered CATERPILLAR mark, including because it is a clear typosquatted version of, and at least highly visually and phonetically similar to, Complainant's CATERPILLAR mark and official domain CATERPILLAR.COM. Respondent lacks rights and legitimate interests in respect of the at-issue domain name. Respondent is not commonly known by the at-issue domain name or any derivation thereof. Respondent's registration of the confusingly similar Domain that is a close and highly similar intentional misspelling of Complainant's CATERPILLAR mark and official domain CATERPILLAR.COM constitutes typosquatting and evidences that Respondent has no legitimate rights or interests in the domain name. Further, the domain name is used to resolve to a webpage hosting pay-per-click hyperlinks that display advertising for, and redirect visitors to, third-party websites and services, including at least some of which that compete with or relate to Complainant and its CATERPILLAR mark. To the extent that Respondent does not reply in this case, the Panel may presume that Respondent lacks rights and legitimate interests in the domain name. Respondent registered and used the at-issue domain name in bad faith. The evidence shows that Respondent "intentionally attempted to attract, for commercial gain, Internet users" to the webpage located at the Domain "by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of" the Domain and/or Respondent's activities. The at-issue domain name is confusingly similar to Complainant's CATERPILLAR mark, including because it is a clear typosquatted misspelling of Complainant's CATERPILLAR mark and official domain CATERPILLAR.COM. The domain name is also used to resolve to a webpage hosting pay-per-click hyperlinks that display advertising for, and redirect visitors to, third-party websites and services, including at least some of which that compete with or relate to Complainant and its CATERPILLAR mark. Respondent's use of the confusingly similar domain name to operate a webpage in this manner to pass itself off as Complainant, or as affiliated with Complainant, and to resolve to a webpage hosting pay-per-click hyperlinks is likely to cause confusion in the marketplace, disrupts Complainant's business, infringes Complainant's intellectual property, and indicates Respondent's bad faith registration and use of the Domain under Policy ¶¶ 4(b)(iii), (iv). Additionally, Respondent, in registering the domain name, has engaged in typosquatting, which has been consistently found to constitute an independent ground of bad faith under prior UDRP decisions. Lastly, Respondent registered the at-issue domain name in bad faith with actual knowledge of Complainant's rights in its CATERPILLAR mark given at least (i) the long-term prior use and fame of Complainant's CATERPILLAR Marks; (ii) that the domain name is a clear typosquatted version of Complainant's identical CATERPILLAR mark and official domain CATERPILLAR.COM; and (iii) that the domain name resolves to a webpage hosting pay-per-click hyperlinks that display advertising for, and redirect visitors to, third-party websites and services, including at least some of which that compete with or relate to Complainant and its CATERPILLAR mark. All of this establishes that Respondent was aware of Complainant before registering and using the domain name and chose the domain name and used it accordingly in a calculated and premeditated attempt to impersonate Complainant or otherwise create the false impression that the at-issue domain name was actually Complainant, or were otherwise connected or affiliated with, or a partner of, Complainant. B. Respondent Respondent failed to submit a Response in this proceeding. FINDINGS Complainant has rights in the CATERPILLAR mark. Respondent is not affiliated with Complainant and had not been authorized to use Complainant's trademark in any capacity. Respondent registered the at‑issue domain name after Complainant acquired rights in the CATERPILLAR trademark. Respondent uses the at-issue domain name to address a webpage that displays pay-per-click links. DISCUSSION Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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; 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. In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint"). Identical and/or Confusingly Similar The at-issue domain name is confusingly similar to a trademark in which Complainant has rights. Complainant shows that it has USPTO registrations and other national trademark registrations worldwide for its CATERPILLAR trademark. Any of such registrations is sufficient to demonstrate Complainant's rights in the CATERPILLAR mark under Policy ¶ 4(a)(i). See Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sept. 4, 2018) ("Complainant has rights in the GMAIL mark based upon its registration of the mark with numerous trademark agencies around the world."); see also Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) ("The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO."). Respondent's <catterpilar.com> domain name contains a recognizable version of Complainant's CATERPILLAR trademark where a letter "t" is added to, and a letter "l" is deleted from, such mark. The misspelled trademark is followed by the ".com" top-level to complete the domain name. Respondent's overt misspelling of Complainant's trademark in forming the at-issue domain name fails to distinguish the domain name from Complainant's trademark for the purposes of the Policy. Therefore, the Panel concludes that Respondent's <catterpilar.com> domain name is confusingly similar to Complainant's CATERPILLAR trademark pursuant to Policy ¶ 4(a)(i). See DIRECTV, Inc v. Digi Real Estate Foundation v. Guaranteed Direct Marketing, Inc. / James O'Brien, FA 1439237 (Forum May 14, 2012) (finding "Respondent's <dirtectv.com>, <durectv.com>, <dorecttv.com>, and <dishdirectv.com> domain names are all confusingly similar to Complainant's DIRECTV mark pursuant to Policy ¶ 4(a)(i), because Respondent's domain names each contain Complainant's mark in its entirety or are simply a misspelled variation of the DIRECTV mark)." Rights or Legitimate Interests Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶ 4(c) circumstances Complainant's prima facie showing acts conclusively. Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant's trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)"). The WHOIS information for <catterpilar.com> indicates that "Higor Lacerda" is the domain name's registrant and there is no evidence in the record indicating that Respondent is commonly known by <catterpilar.com>. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name under Policy ¶ 4(c)(iii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). Respondent uses <catterpilar.com> to address a website hosting pay-per-click links. Respondent's use of the <catterpilar.com> domain name is thus not indicative of a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor of a non-commercial or fair use under Policy ¶ 4(c)(iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) ("Respondent's use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering."). Given the forgoing, Respondent's lacks rights and lacks legitimate interests in respect of <catterpilar.com>. Registration and Use in Bad Faith As discussed below without being exhaustive, there is evidence from which the Panel concludes that Respondent acted in bad faith pursuant to the Policy. First, Respondent is using its confusingly similar <catterpilar.com> domain name to address a webpage displaying pay-per-click links. Using the domain name in such manner is disruptive to Complainant's business, takes unfair advantage of the confusion between the at-issue domain name and Complainant's trademark, and indicates Respondent's bad faith pursuant to Policy ¶ 4(b)(iii) and Policy ¶ 4(b)(iv). See Vivint, Inc. v. Online Management, FA 1549084 (Forum Apr. 23, 2014) (holding that the respondent had registered and used the disputed domain name in bad faith according to Policy ¶ 4(b)(iv) where the disputed domain name resolved to a parking page that featured no content besides sponsored advertisements and links). Next, Respondent engages in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark or other identifying text such as a website domain name and then uses the resulting string to form a domain name. The registrant hopes that internet users will inadvertently type the malformed string when searching for content related to the domain name's target trademark or related website and/or in viewing the domain name will confuse such domain name with its target trademark. Respondent's domain name contains an overt misspelling of Complainant's CATERPILLAR trademark where a "t" is added and an "l" removed. Typosquatting is, in itself, indicative of bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)). Moreover, Respondent had actual knowledge of Complainant's rights in the CATERPILLAR mark when it registered <catterpilar.com>. Respondent's actual knowledge is apparent from the mark's long term notoriety, as well as from Respondent's obvious typosquatting of Complainant's mark in forming the domain name. See Lemon Inc. v. Sumer Singh, FA 2110519 (Forum Sept. 5, 2024 ("registration of a disputed domain name with actual knowledge of another's trademark rights is sufficient to establish bad faith, and can be shown by the notoriety of the mark and the use the Respondent makes of the disputed domain name"); see also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). 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 <catterpilar.com> domain name be TRANSFERRED from Respondent to Complainant. Paul M. DeCicco, Panelist Dated: January 29. 2025 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.