Cato-usa.com

The timeline behind cato-usa.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.

NATIONAL ARBITRATION FORUM DECISION Cato of Texas L.P. v. Weinberg Stacy Claim Number: FA2508002171065 PARTIES Complainant is Cato of Texas L.P. ("Complainant"), represented by Henry B. Ward, III, of Bradley Arant Boult Cummings LLP, North Carolina, USA. Respondent is Weinberg Stacy ("Respondent"), Pennsylvania, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <cato-usa.com>, registered with West263 International Limited. PANEL The undersigned certifies that he has independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. The Honorable Neil Anthony Brown KC as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to Forum electronically on August 12, 2025; Forum received payment on August 12, 2025. On August 13, 2025, West263 International Limited confirmed by e-mail to Forum that the <cato-usa.com> domain name is registered with West263 International Limited and that Respondent is the current registrant of the name. West263 International Limited has verified that Respondent is bound by the West263 International Limited 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 August 15, 2025, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of September 4, 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@cato-usa.com. Also on August 15, 2025, the Chinese and English 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 in Chinese and English. On September5, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed The Honorable Neil Anthony Brown KC 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. PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING According to the Registrar, the registration agreement for the Domain Name is written in Chinese. Rule 11(a) provides that the language of the proceedings is the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the case. Complainant filed its Complaint in Chinese and English and argues that the proceedings should be conducted in English. It is established practice in this regard to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as important include evidence showing that the respondent can understand the language of the complaint, the language of the domain name, the content on any web pages resolving from the domain name, prior correspondence between the parties, and potential unfairness or unwarranted delay in ordering translation of the pleadings and the Decision. See Fair Isaac Corporation v. AKPOVO Chidiac, FA 2034648 (Forum Apr. 12, 2023) (finding panel has discretion to conduct proceedings in English contrary to registration agreement given evidence that respondent understands the language). See also, Maxim Integrated Products, Inc. v. wang xing xing, FA 2035248 (Forum Apr. 11, 2023) ("Respondent … advertise its products and services in English, and the resolving website asks in English for potential customers to contact Respondent directly...."); United Parcel Service of America, Inc. v. MEHKMET ISYAN AYIRKAN, FA 2035819 (Forum Apr. 11, 2023) ("Factors … seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent's understanding of the … language included in the Registration Agreement."); POC Sweden AB d/b/a POC North America v. Ma Fanghua, FA 2034043 (Forum Apr. 4, 2023) ("The Domain Name contains an English word, resolves to a website ("Respondent's Website") which is entirely in English and contains material copied from Complainant's English-language website."). In the present proceeding, the Complainant submits that English is the more appropriate language as the Respondent's ability to understand, read, write, and/or speak English is demonstrated through the following: (1) the WHOIS information provided by the Respondent was in English; (2) the content, information, and material provided on the website for the domain name is in English, and no other language, which demonstrates Respondent's high level of familiarity and proficiency in the English language; (3) the default US Dollar pricing for the goods offered for sale on the website for the domain name shows that the Respondent's target market are consumers in the United States, where English is the most commonly spoken language; and (4) under the "Terms of Use" link at the bottom of the website for the domain name , the Respondent chose the laws of Florida to apply to the Terms of Use for interpretation and jurisdiction, where English is the de facto official language. The Panel has verified all of those submissions and finds that they have been established. Moreover, if the proceedings were to be translated into Chinese, this would occasion considerable additional cost and time. The Panel therefore finds that English is the more appropriate language in which to conduct the proceeding. Accordingly, the proceeding will be conducted in the English language. PARTIES' CONTENTIONS A. Complainant Complainant made the following contentions. 1. The Complainant is a United States limited partnership engaged in the provision of clothing, fashion, accessories and related goods and services and has been so engaged since 1946. 2. The Complainant provides its goods and services under its registered trademark for CATO. 3. The Complainant acquired its registered trademark rights by virtue of its registration of the CATO trademark with the United States Patent and Trademark Office ("USPTO"), registration number 1,120,083, registered on June 12, 1979 and other registrations for CATO and derivatives, (collectively "the CATO trademark"). 4. The CATO trademark has attracted substantial goodwill and is uniquely associated with the Complainant's goods and services. 5. As well as its aforesaid trademark, the Complainant registered the <catofashions.com> domain name on October 13, 1999 which it has continually used since then in its business and in particular to promote its goods and services at www.catofashions.com. 6. The Respondent registered the <cato-usa.com> disputed domain name on May 8, 2025 ("the disputed domain name"), well after the Complainant had established its aforesaid registered trademark rights in 1979 and many years after it had established associated common law trademark rights in CATO from 1946. 7. The disputed domain name embodies, without the consent of the Complainant, the CATO trademark, with the addition of a hyphen, the geographic indicator "usa" and the generic Top Level Domain ".com". 8. The disputed domain name is confusingly similar to the CATO trademark. 9. The Respondent has no rights or legitimate interests in the disputed domain name. That is so because: (a) the Complainant has owned and used the CATO trademark since at least as early as its registration, but the Respondent did not register the disputed domain name until May 8, 2025 which it did without any consent from the Complainant; (b) the Respondent has caused the dispute domain name to resolve to a website that offers the same goods and services as the Complainant and prominently displays the CATO trademark, giving rise to a likelihood of confusion among internet users; (c) the Complainant has not given the Respondent any permission or other consent to use its trademark in a domain name or in any other way and the Respondent has no relationship with the Complainant; (d) the aforesaid use of the domain name by the Respondent is not a bona fide offer of goods or services within the meaning of Policy¶4(c)(i); (e) the Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii); (f) the aforesaid use of the disputed domain name is not a legitimate, noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii); and (g) there is no other basis on which it could conceivably be contended that the Respondent has a right or legitimate interest in the domain name. 10. The Respondent has registered and used the disputed domain name in bad faith. That is so because: (a) the Respondent registered the disputed domain name on May 8, 2025, well after the Complainant had established its aforesaid rights in the CATO trademark; (b) the Respondent having registered the confusingly similar disputed domain name, incorporating as it does the CATO trademark without permission, and having used it for a website to offer the same goods and services as those of the Complainant, has generated confusion among internet users within the meaning of Policy ¶ 4(iv); (c) the Respondent at all material times had actual knowledge of the Complainant and its trademarks, brand and business; (d) the Respondent has traded on the goodwill of the Complainant and the CATO trademark and passed itself off as the Complainant; and (e) all of the acts, facts, matters and circumstances to be revealed by the evidence will show that the Respondent registered and used the disputed domain name in bad faith and that there is no plausible circumstance under which the Respondent could legitimately have registered and used the disputed domain name. The evidence will therefore establish that the Complainant has been able to make out all of the grounds it must establish and that it is entitled to the relief that it seeks. B. Respondent Respondent failed to submit a Response in this proceeding. FINDINGS 1. The Complainant is a United States limited partnership engaged in the provision of clothing, fashions, accessories and related goods and services and has been so engaged since 1946. 2. The Complainant provides its goods and services under its registered trademark for CATO. 3. The Complainant acquired its registered trademark rights by virtue of its registration of the CATO trademark with the United States Patent and Trademark Office ("USPTO"), registration number 1,120,083, registered on June 12,1979 and other registrations for CATO and derivatives, (collectively "the CATO trademark"). 4. The Respondent registered the <cato-usa.com> disputed domain name on May 8, 2025 ("the disputed domain name"), well after the Complainant had established its aforesaid registered trademark rights in 1979 and many years after it had established its associated common law trademark rights in CATO from 1946. 5. The Respondent has caused the disputed domain name to resolve to its website, targeted the Complainant, its potential customers and internet users in general, infringed and tarnished the Complainant's CATO trademark, impersonated and passed itself off as the Complainant and actively sought to mislead and confuse internet users to believe that the goods and services offered on the Respondent's website were genuine and official goods and services of the Complainant, which they were not. 6. By reason of the matters aforesaid, and as established by the evidence, the disputed domain name is confusingly similar to the CATO trademark, the Respondent has no rights or legitimate interests in the disputed domain name and the disputed domain name has been registered and used in bad faith. 7. Accordingly, the disputed domain name should be transferred from the Respondent to the Complainant. 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 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 first question that arises is whether the Complainant has rights in a trademark or service mark on which it may rely. The evidence has established that the Complainant provides its goods and services under its registered trademark for CATO and has done so for many years and in particular for many years prior to the registration of the domain name by the Respondent. In particular, the evidence is that the Complainant acquired its registered trademark rights by virtue of its registration of the CATO trademark with the United States Patent and Trademark Office ("USPTO"), registration number 1,120,083, registered on June 12, 1979 and other registrations for CATO and derivatives (collectively "the CATO trademark"). The evidence also includes the informative declaration of John P. D. Cato, Chairman, President & Chief Executive Officer of The Cato Corporation, the parent entity of the Complainant. Mr. Cato's evidence is in substance that the Complainant has used the CATO trademark for its goods and services for many years prior to the registration of the domain name and that consumers have come to recognize it as identifying the Complainant, the renown of its goods and services and the goodwill associated with them. The evidence also shows that the CATO trademark is registered with respect to a range of clothing and fashions, particularly for ladies and children and related goods and services, that it is current and that it is registered in the name of the Complainant. In view of the Complainant's well-established registered trademark rights, is not necessary to dwell on the Complainant's common law trademark rights in CATO and that it has had those rights for many years before the registration of the disputed domain name. All of the aforesaid facts have been established by documentary evidence that the Panel has examined and finds to be in order. The Complainant has thus established its trademark rights pursuant to Policy ¶ 4(a)(i) and hence its standing to bring this proceeding. The next question that arises is whether the disputed domain name is confusingly similar to the Complainant's CATO trademark. The Panel finds that the <cato-usa.com> disputed domain name is confusingly similar to the CATO trademark. That is so because it consists solely of the wording of the trademark itself, a hyphen, the geographic indicator "usa" and the ".com" Top Level Domain. When a domain name includes a trademark, it is more likely than not that the domain name is confusingly similar to the trademark, as the domain name will usually be dominated by the trademark which is the most significant portion of the domain name. In the present case that is obviously so, as the domain name includes as its first and most prominent feature, the word "cato". The domain name in the present case also includes the geographic indicator "usa", which will not negate the conclusion that the domain name is confusingly similar to the trademark because internet users would see the domain name as invoking the trademark and the goods and services offered under it in the United States of America. Features like a hyphen are also universally regarded as too minor to have any effect on this interpretation. It is also the established practice in this field that extensions such as ".com" are disregarded for the purposes of the comparison between a trademark and a domain name, as all domain names require such an extension and its presence does not inform internet users one way or the other whether a domain name is confusingly similar to a trademark. There are many prior UDRP decisions to that effect. Applying these well-accepted principles, the Panel finds that the disputed domain name is confusingly similar to the CATO trademark. The Complainant has thus made out the first of the three elements that it must establish as provided in Policy ¶4(a)(i). Rights or Legitimate Interests It is now well established that the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and that, if the prima facie case is made out, the burden then shifts to the Respondent to show that it does have such rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)). The Panel finds on the evidence that the Complainant has made out a prima facie case that arises from the following considerations. The Respondent has no rights or legitimate interests in the disputed domain name on all of the grounds relied on by the Complainant, namely: 1. the Complainant has owned and used the CATO trademark at least as early as 1979 when it was registered, although there is evidence that the same trademark was used by the Complainant as early as 1969; however, the Respondent did not register the disputed domain name until May 8, 2025 which it did without any consent from the Complainant; thus, the evidence shows that the Complainant used its trademark, its own official domain name, <catofashions.com>, and its own official website, to offer its goods and services for many years before the Respondent registered the domain name; accordingly, the Respondent could not have acquired any right or legitimate interest in a domain name which included the Complainant's trademark; 2. the Respondent has caused the disputed domain name to resolve to a website that offers the same goods and services as the Complainant and prominently displays the CATO trademark, giving rise to a likelihood of confusion among internet users; that situation could not conceivably give rise to a right or legitimate interest in a domain name that was used to generate that confusion; 3. the Complainant has not given the Respondent any permission or other consent to use its trademark in a domain name or in any other way and the Respondent has no relationship with the Complainant; this has been established by the evidence and shows that it could not be argued that the domain name was registered or used with anything like the consent of the Complainant; 4. the aforesaid use of the domain name by the Respondent is not a bona fide offer of goods or services within the meaning of Policy ¶ 4(c)(i); there is nothing bona fide in taking another party's trademark without consent and using it to resolve to a bogus website that offers the same goods and services as the Complainant, making prominent use of the Complainant's trademark and, in the course of doing so, passing itself off as the trademark owner; this has amply been proven by the evidence and in particular Annex E to the Complaint, which makes open and brazen use of the CATO trademark and another of the constituent trademarks of the Complainant, namely C CATO, illustrations of garments that are clearly intended to be taken as legitimate CATO products, frequent use of expressions such as "choose Cato dresses", "Cato dresses make you the focus of attention", "Cato handbags are soft to the touch and comfortable to wear, making them the perfect fashion companion", and absurdly low prices showing that the products are obviously counterfeit or illegally acquired and are now being illegally sold; the website also offers blandishments such as "support@Cato-USA.com, CATO-USA © 2025. All Rights Reserved" and offers specific credit cards, no doubt to enable phishing for financial information; and the whole get-up is clearly designed to copy the Complainant's website, pretend that it is the Complainant's website and to give the false illusion that the goods being offered are genuine CATO goods which they obviously are not; thus the Respondent by engaging in these subterfuges has not acted bona fide; it would be more accurate to describe the Respondent's motives as mala fide; 5. the Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii); there is no evidence that the Respondent is known by the domain name, either commonly or otherwise, and there is no evidence that it is known by any name other than its own, which is Weinberg Stacy; 6. the aforesaid use of the disputed domain name is not a legitimate, noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii); it is not legitimate as it is entirely illegitimate, based as it is on a series of falsehoods; it is not noncommercial as it is purely commercial, being intended to make money; and it is not fair, either to the Complainant or to internet users in general because they are being duped; and 7. there is no other basis on which it could conceivably be contended that the Respondent has a right or legitimate interest in the domain name. The Complainant has thus made out a persuasive and detailed case on the evidence for all of the grounds it relies on to show that the Respondent does not have a right or legitimate interest in the disputed domain name. All of these matters make out the prima facie case against the Respondent. The Respondent is in default and has not advanced any evidence or submissions to show that it could rebut the Complainant's contentions. The Complainant has therefore made out the second of the three elements it must establish under Policy ¶4(a)(ii). Registration and Use in Bad Faith It is clear that to establish bad faith for the purposes of the Policy, the Complainant must show that the disputed domain name was registered and used in bad faith. It is also clear that the criteria set out in Policy ¶4(b) are not exclusive but that domain name proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression. In view of the evidence discussed above, particularly Annex E, which is equally as applicable to bad faith as it is to rights and legitimate interests and which it is not necessary to repeat here, it is clear that the Complainant has made out all of the grounds relied on. The Respondent has clearly been motivated by bad faith in the registration of the domain name and has continued in that conduct after its registration, showing bad faith use; the registration was, as was its use, clearly an attempt by the Respondent to use its domain name, incorporating as it does the Complainant's trademark, for a dishonest and financial objective, as it resolves to a website that passes itself off as that of the Complainant, and uses it to pretend that the products offered for sale on the website are genuine CATO products which they are not. It is therefore clear from the evidence that, as the Complainant has submitted: 1. the evidence shows that the Respondent registered the disputed domain name on May 8, 2025, well after the Complainant had established its aforesaid rights in the CATO trademark; 2. the evidence shows that the Respondent having registered the confusingly similar disputed domain name, incorporating as it does the CATO trademark without permission, and having used it for a website to offer the same goods and services as those of the Complainant, has generated confusion among internet users within the meaning of Policy ¶ 4(iv); this has particularly been shown by Annex E to the Complaint; 3. the evidence shows that the Respondent at all material times had actual knowledge of the Complainant and its trademarks, brand and business because of the renown of the Complainant, its brand, trademark and products and because the Respondent has copied the trademark so many times on its website; the Respondent also must have had such actual knowledge in view of its copying of the Complainant's website and it could not have carried out its subterfuge without having that actual knowledge; 4. the evidence shows that the Respondent has traded on the goodwill of the Complainant and the CATO trademark and impersonated and passed itself off as the Complainant; and 5. all of the acts, facts, matters and circumstances revealed by the evidence have shown that the Respondent registered and used the disputed domain name in bad faith and that there is no plausible circumstance under which the Respondent could legitimately have registered and used the disputed domain name. Finally, in addition to the specific provisions of the Policy and having regard to the totality of the evidence, the Panel finds that, in view of the Respondent's registration of the disputed domain name using the CATO trademark and in view of the conduct of the Respondent, as shown by all of the available evidence, the Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression. It is clear that, from the beginning, the Respondent set about targeting the Complainant, its potential customers and internet users in general, infringed and tarnished the Complainant's trademark, impersonated and passed itself off as the Complainant, copied the Complainant and its website and actively sought to mislead and confuse internet users to believe that the products offered on the Respondent's website were genuine and official CATO products of the Complainant, which they were not. The Complainant has thus made out the third of the three elements that it must establish under Policy ¶4(a)(iii). The Complainant has thus presented a detailed and persuasive case consisting of evidence that has established all of the constituent elements that must be proved under the Policy. In that regard it should also be said that the declarations of Mr. Cato and Mr. Henry B. Ward, III, a member of the law firm of Bradley Arant Boult Cummings LLP who act for the Complainant, have been particularly helpful and effective in proving all of the constituent elements that the Complainant was obliged to prove. The Complainant has also cited numerous prior UDRP decisions which support all of its contentions. The Complainant has therefore established all the elements that it must show under the Policy and it is entitled to the relief it seeks, namely transfer of 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 <cato-usa.com> domain name be TRANSFERRED from Respondent to Complainant. The Honorable Neil Anthony Brown KC, Panelist Dated: September 8, 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.