<p><strong>What<br /></strong><br />Domain name  dispute&nbsp;<br /><br /><strong>Who</strong><br /><br />The Complainant, Caterpillar, is a  MNC with a stellar reputation built in heavy equipment and  construction.<br /><br />The Respondent is a regional software house with offices in  the Middle East &amp; Canada operating a business known as  Catcontrols.<br /><br /><strong>The Prize<br /><br /></strong><a href="http://www.catcontrols.com/">www.catcontrols.com<br /><br /></a>Why<br /><br />CAT  is the Complainant&rsquo;s house mark, which it has cultivated over decades to become  a household name in heavy equipment and construction machinery. The Complainant  enjoys substantial goodwill and reputation in its CAT mark.<br /><br />The use of  CAT in <a href="http://www.catcontrols.com/">www.catcontrols.com</a> is  unauthorised and detrimental to the Complainant as its use is likely to create  confusion amongst consumers that the website is dealing with CAT products and  services or is somehow related to the Complainant. Such use is damaging to the  Complainant&rsquo;s goodwill and reputation and results in brand dilution of its CAT  mark.<br /><br /><strong>Where</strong><br /><br />World Intellectual Property  Organization (&ldquo;WIPO&rsquo;) Arbitration and Mediation Centre under the Rules for  Uniform Domain Name Dispute Resolution Policy<br /><br /><strong>Facts of the  Case</strong><br /><br />The Respondent had registered the disputed domain name and  had been actively operating the website to provide extensive information on its  software products, which were offered for sale.<br /><br />The Complainant has trade  mark registrations for Caterpillar &amp; CAT in a number of countries and has  been using both names as trade marks for decades.<br /><br />The Complainant argued  that the disputed domain name was confusingly similar to marks in which the  Complainant has rights, the Respondent has no rights or legitimate interests in  use of the disputed domain name and the Respondent&rsquo;s registration and use of the  disputed domain name was in bad faith.<br /><br /><strong>WIPO&rsquo;s  Findings</strong></p>
<ol>
<li>The WIPO Panel agreed with the Complainant that the &nbsp;disputed domain name  had incorporated its CAT trade &nbsp;mark in its entirety and that the addition of  the word, &ldquo;controls&rdquo;, had done nothing to remove the confusion likely to be  caused by the Respondent&rsquo;s use of the Complainant&rsquo;s CAT mark in the disputed  domain name.<br /><br />Accordingly, the WIPO Panel found that the disputed domain  name was confusingly similar to the Complainant&rsquo;s CAT mark.</li>
<li>It was found that the Respondent&rsquo;s use of the disputed domain name cannot be  characterised as use in connection with the bona fide offering of goods and  services. The Complainant had argued that the Respondent&rsquo;s prominent use of CAT  and the adoption of the Complainant&rsquo;s well known &ldquo;Caterpillar Yellow&rdquo; in its  corporate livery and website reinforced the impression of a false association  with the Complainant and the Complainant&rsquo;s products. Such contrived use of CAT  must necessarily lead to the inescapable conclusion that there was no bona fide  offering of goods under the disputed domain name.</li>
<li>The WIPO Panel found that the disputed domain name was registered and used  in bad faith.</li>
</ol>
<p>The Complainant had vigorously argued that there was no plausible reason why  the Respondent would have chosen to use CAT as part of the disputed domain name  except to misappropriate the vault of goodwill and reputation, which the  Complainant had painstakingly cultivated over decades of use. Quite clearly, <a href="http://www.catcontrols.com/">www.catcontrols.com</a> was not a  domain name, which any user would have chosen unless they knew of the CAT trade  mark and the custom, which it attracts. The Respondent had manifestly registered  the domain name solely for the purpose of attracting users who would be misled  into thinking that there was some association between the disputed domain name  and the Complainant.<br /><br />It was obvious from the matrix of use that the  disputed domain name was being used in bad faith.<br /><br />Accordingly, the WIPO  Panel was satisfied that the Complainant had succeeded in proving its case and  ordered that the disputed domain name be transferred to the  Complainant.<br /><br /><strong>Learnings<br /><br /></strong>Caterpillar was able to  leverage on its well known CAT trade mark to stop the use of Catcontrols in  relation to software. Caterpillar had argued successfully that Caterpillar was  more than yellow iron.<br /><br />&ldquo;Caterpillar is more than big heavy equipment &ndash;  and much more than yellow iron. The products and applications it is best known  for have evolved from simple mechanical workhorses to sophisticated,  electronically controlled solutions driven by state of the art  software.<br /><br />Caterpillar is not just an iron company, it is a world class  electronics company.&rdquo;<br /><br />Counsel swayed the WIPO panel with arguments that  Caterpillar&rsquo;s fame extended beyond its traditional core business of heavy  equipment and into software.<br /><br />This important case demonstrates  Caterpillar&rsquo;s far reaching fame.<br /><br />It is important to build brand equity in  your trade mark as it will pay dividends in the years to come in arresting  unauthorised use of your mark in domain names, which seek to capitalize on the  goodwill and reputation subsisting in your mark.<br /><br />Brand owners ought to be  vigilant in monitoring any unauthorised usage of their trade marks in cyberspace  and to act swiftly and decisively in rooting out the problem. Using the WIPO  Arbitration and Mediation Centre as a means to do so has proven highly effective  and quick in resolving domain name disputes. The fact that the Caterpillar had  been vigilant in enforcing its rights against offenders in cyberspace was  important in shoring up its arguments that any attempt to free ride on its  substantial goodwill and reputation was damaging to its brand integrity and  likely to cause brand dilution.<br /><br />Fortifying one&rsquo;s cyber presence has never  been more important as an increasing number of users log onto the internet to  shop and be entertained especially in the Middle East where internet penetration  has witnessed exponential growth as investments pour into the development of the  online space as indicated by the proliferation of Arabic language content and  Arabic domain names.<br /><br />This significant case represents yet another  decisive victory for the ATCO Domain Name Dispute Resolution practice, part of  our award winning IP practice which continues to counsel clients in ensuring  that their valuable goodwill and reputation is well protected in cyberspace.</p>