Cybersquatter crushed by Caterpillar in clash over 'catwear.dk'
In Caterpillar Inc v PD Security Service, a Danish Internet Forum (DIFO) panel has ordered the transfer of 'catwear.dk' to the complainant. The panel rejected the registrant's defence that the complainant could not claim trademark protection over the common English words 'cat' and 'wear', concluding that it was taking advantage of the complainant's reputation in its CAT marks.
Caterpillar Inc, a US manufacturer of heavy machinery and clothing, owns two Danish registrations for CAT device marks. It filed a complaint with DIFO following Danish company PD Security Service's registration and use of the domain name 'catwear.dk' to sell a variety of goods, including clothing manufactured by Caterpillar. Caterpillar had not sold the products directly to PD Security, instead they had been obtained through third parties in Sweden.
Caterpillar supplied the panel with printouts from PD Service's website showing a logo consisting of a CAT device mark with the text 'wear.dk' beneath it. It claimed that PD Security's registration and use of the disputed domain name was contrary to (i) the Danish Marketing Practices Act since it was taking advantage of Caterpillar's reputation in its marks, and (ii) the Trademark Act as it was likely to mislead consumers into believing that PD Security was authorized to sell Caterpillar's products.
The panel agreed with Caterpillar and ordered the transfer of 'catwear.dk'. It concluded that PD Service did not have a justifiable reason to register and use the disputed domain name as it was not essential to the marketing and sale of its goods and services as a whole. Thus, PD Service had registered and used the domain name with the intention of taking advantage of Caterpillar's reputation in its marks. The panel rejected PD Security's defence that Caterpillar could not claim trademark protection over the terms 'cat' and 'wear' as they are common and descriptive words, noting that the use of the words in combination was likely to mislead consumers into believing that there was a connection with the CAT mark, and that PD Security Service was authorized by Caterpillar to sell its products.
Lisbet Andersen, Bech-Bruun Dragsted, Copenhagen (with the assistance of Jens Jakob Bugge, Lindh Stabell Horten A/S)
Copyright © Law Business ResearchCompany Number: 03281866 VAT: GB 160 7529 10