cnDRP on caterpillar. 中国 and 卡特彼勒. 中国: the risks of recklessness

Managing trademarks and domain names is demanding, and even more when the trademark is made up of a generic word (eg: Apple, Caterpillar, Orange). Among the many rules that apply to the management of portfolios of brands and domain names, experts advise registering the domain names in the ccTLDs corresponding to the countries in which the trademark owner operates. For some countries, including China, the registration of certain domain names must be systematic. Otherwise, several nightmarish scenarios can arise. Let us take two examples. First, the domain name can be used by a third party capable of asserting a genuine legitimate interest or constructing a sufficiently convincing speech to suggest that the legitimate interest is real and serious. Second, counterfeiters can use the domain name.

The American company Caterpillar was confronted with a similar situation concerning two domain names: first, caterpillar.中国, identical to the brand “Caterpillar” and, second, 卡特彼勒.中国, identical to the transliteration of the trademark. Caterpillar owns a registered trademark in China as well as the caterpillar.cn domain name. However, the company omitted to register caterpillar.中国 and 卡特彼勒.中国 domain names. The omission is all the more surprising and deplorable as the trademark “Caterpillar” is formed by reference to a generic word, “卡特彼勒” being the mere traduction of “caterpillar”. Therefore, in such a case, with regard to the ccTLDs .CN and. 中国, one can say that the registration of these domain names, in particular, was necessary. Fortunately, Caterpillar obtained the transfer of the domain names following a cnDRP procedure (HKIAC, DCN-2100992, 卡特彼勒 公司 (Caterpillar Inc.) v. 赢 禾 (上海) 重工 机械 有限公司(卡特彼勒. 中国 与 caterpillar. 中国), 2021 年 5 月 18 日). The bad faith of the defendant was patent. Indeed, for example, the defendant indicated that he was ready to transfer the domain names in exchange for a distribution contract. It was certainly not a good way to start a business relationship!

The troubles of the Caterpillar company highlight the need to carry out, on a regular basis, audits of domain name portfolios and, more systematically, monitoring aimed at detecting the occurrence of cybersquatting cases.



1. Domain Names Management IP Twins is an accredited domain name registrar. — We help develop an appropriate domain name strategy and manage portfolios centrally and proactively. Thanks to our proprietary software, we identify cybersquatting cases in all TLDs. Our IP/IT lawyers deliver personalized reports. We may also advise or represent our clients in UDRP or other tldDRP proceedings.

2. Online Brand Protection Counterfeiting is everywhere online. — Nowadays, SMEs are also concerned. Our internal "Detective"​ software identifies the online use of your trademark by unauthorized third parties. We monitor on social networks and online market platforms, worldwide and in all languages. We submit reports on a periodic basis determined in agreement with the client and, where appropriate, we provide enforcement services.

OUR PHILOSOPHY — At IP Twins, we value the relationship with our partners. We nurture a human vision of our profession. Since the creation of IP Twins in 2002, our lawyers and developers have been working hand-in-hand to develop technologies, methods, and processes to ensure the reliability and accuracy of our services. That's why we have developed a variety of specific tools and this is also why our account managers are specialized IP/IT lawyers. Our tools, in constant improvement, are acclaimed by our clients, IP lawyers, and international partners. The reports and analysis we send considerably help them in their mission of domain name management and online brand protection both in the judicial and extrajudicial fields.

OUR CLIENTS — Our clients are law firms or industrial property consultants, companies of all sizes, local authorities, and organizations for the defense of geographical indications, in France and abroad.