Doosan Bobcat North America, Inc. v Andres Grajales

WIPO Case No. D2025-2557

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Doosan Bobcat North America, Inc. v. Andres Grajales

Case No. D2025-2557

1. The Parties

The Complainant is Doosan Bobcat North America, Inc., United States of America (“United States”), represented by Quarles & Brady LLP, United States.

The Respondent is Andres Grajales, Colombia.

2. The Domain Name and Registrar

The disputed domain name <kubobcat.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2025.
On July 1, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On July 1, 2025, the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the disputed domain name
which differed from the named Respondent (Unknown) and contact information in the Complaint. The
Center sent an email communication to the Complainant on July 3, 2025, providing the registrant and contact
information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the

Complaint. The Complainant filed an amended Complaint on July 8, 2025.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 9, 2025. In accordance with the Rules, paragraph 5, the due date for Response was July 29, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 30, 2025.

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The Center appointed Rodrigo Azevedo as the sole panelist in this matter on August 8, 2025. 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. Factual Background

The Complainant is Doosan Bobcat North America Inc., a company engaged in the design, manufacture, and distribution of compact construction and agricultural equipment.

The Complainant and its controlled companies own numerous trademark registrations for the mark BOBCAT, including the United States Trademark Registration No. 670566, registered on December 2, 1958.

The Complainant group also owns and operates several domain names incorporating its BOBCAT trademark, including <bobcat.com>, which was registered on March 28, 1997.

The disputed domain name <kubobcat.com> was registered on April 19, 2010.

The disputed domain name is linked to a website that advertises and sells “Bobcat” brand and competing compact construction and agricultural equipment, such as “Kubota” brand machinery.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Notably, the Complainant contends that:

(i) The disputed domain name is confusingly similar to the Complainant’s trademark. The Complainant asserts that it owns registered trademark rights in the BOBCAT mark, which it has used extensively in connection with compact construction equipment and related goods and services for over 60 years.

According to the Complainant, the BOBCAT mark is widely recognized and associated exclusively with its under the Policy, especially as the dominant portion of the disputed domain name is “bobcat”. The Complainant notes that panels have consistently found confusing similarity where a complainant’s trademark is recognizable within the domain name, regardless of the addition of other terms or letters. Moreover, the Complainant points out that the disputed domain name creates a false association with “Bobcat” brand equipment and services, thereby misleading Internet users. It further contends that the addition of the descriptive prefix “ku” may enhance confusion by suggesting a geographic or brand variant, particularly given that the website associated with the disputed domain name promotes and sells what appear to be construction and agricultural equipment parts. The Complainant concludes that the disputed domain name is confusingly similar to its BOBCAT trademark within the meaning of paragraph 4(a)(i) of the Policy.
products and services across the globe. The Complainant argues that the disputed domain name
<kubobcat.com> incorporates the BOBCAT mark in its entirety and merely prefixes it with the letters “ku”.

(ii) The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant mark in any form. The Complainant asserts that the Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services, as the Respondent is not an authorized Bobcat dealer or reseller. The Complainant submits that the Respondent’s use of the BOBCAT mark is not done in connection with a bona fide offering of goods or services because (a) it falsely suggests that the Respondent is sponsored by, authorized by, or affiliated with the Complainant; (b) the Respondent sells non-Bobcat
submits that the Respondent is not commonly known by the disputed domain name, nor has the

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branded goods at the website hosted at the disputed domain name; and (c) the Respondent does not
provide any disclaimer informing consumers that it is not affiliated with the Complainant. Therefore, the
Respondent’s use of the BOBCAT mark in the disputed domain name does not constitute a legitimate
interest in the name and the Respondent fails two of the elements of the “Oki Data Test” (see Oki Data

Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).

(iii) The disputed domain name was registered and is being used in bad faith. The Complainant argues that
the Respondent registered the disputed domain name with knowledge of the Complainant’s longstanding
and well-known BOBCAT trademark, given its global reputation and the Respondent’s use of the disputed
domain name in a related industry. The Complainant maintains that the Respondent’s use of the disputed
domain name to direct users to a website that advertises services and parts for Bobcat and Kubota
machinery demonstrates an intent to create a false affiliation with the Complainant. The Complainant
concludes that the Respondent is seeking to create consumer confusion about which domain names and
websites are authorized by the Complainant. This, the Complainant contends, constitutes bad faith

registration and use under paragraph 4(b)(iv) of the Policy.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the
complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

Annex L to the Complaint shows registrations of BOBCAT trademarks obtained by the Complainant since at least 1958. Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The trademark BOBCAT is wholly encompassed within the disputed domain name, together with the prefix
“ku”, as well as with the generic Top-Level Domain (“gTLD”) extension “.com”.

Although the addition of other terms (here, “ku”) may bear on assessment of the second and third elements, the Panel finds the addition of such two letters does not prevent a finding of confusing similarity between the disputed domain name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

It is also well established that the addition of a gTLD, such as “.com”, is typically disregarded when determining whether a domain name is confusingly similar to a complainant’s trademark as such is viewed as a standard registration requirement. WIPO Overview 3.0, section 1.11.1.

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The Panel finds that disputed domain name is confusingly similar to the Complainant’s BOBCAT trademark, and that the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

The Complainant has not licensed nor authorized the use of its well-known trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name.

Furthermore, the Complainant has shown that the disputed domain name is linked to a website offering the Complainant’s Bobcat equipment for sale, reproducing the Complainant’s trademark and logo. However, according to the Complainant, the Respondent is not an authorized reseller, nor has it obtained any permission for such reproductions of trademarks, logos and copyrighted materials.

Additionally, although encompassing the Complainant’s trademark BOBCAT at the disputed domain name, such website also offers for sale competing machinery and does not accurately and prominently disclose the registrant’s relationship with the trademark holder. Therefore, the Respondent does not pass the “Oki Data test” to characterize a legitimate interest on the disputed domain name (see Oki Data Americas, Inc. v. ASD, Inc., supra).

Based on the available record, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

The Panel concludes that it is not feasible that the Respondent was not aware of the Complainant’s trademark and that the registration of the disputed domain name was a mere coincidence.

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When the disputed domain name was registered (in 2010) the BOBCAT trademark was already connected with the Complainant’s machinery.

Also, the Panel considers that the addition of the prefix “ku” to the disputed domain name is not sufficient to eliminate the potential for confusion, and may even be interpreted as an allusion to competing “Kubota” equipment, advertised on the same website at the disputed domain name.

Actually, the content at the website linked to the disputed domain name - including reproductions of the Complainant’s trademark and descriptions of its products, which are being offered for sale - makes clear that the Respondent intentionally attempted to attract the Complainant’s customers, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website.

The situation is aggravated by the said offer of competing products through a domain name that reproduces the Complainant trademark.

Finally, the absence of a formal reply from the Respondent to the Complainant’s contentions and of any justification for the use of such well-known machinery trademark are further evidence of bad faith in the present case.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <kubobcat.com> be transferred to the Complainant.

/Rodrigo Azevedo/
Rodrigo Azevedo
Sole Panelist
Date: August 22, 2025