WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The Coca-Cola Company v. ICU Agency Case No. D2008-1851 1. The Parties
The Complainant is The Coca-Cola Company, of the United States of America, represented by Valea AB, of Sweden.
The Respondent is ICU Agency, of Bagdad, Iraq. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2008. On December 2, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On December 2, 2008, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent ICU Agency is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 4, 2008. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 5, 2009.
The Center appointed Jonathan Agmon as the sole panelist in this matter on January 16, 2009. 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 owns the rights to the COCA-COLA trademark throughout the world. The COCA-COLA mark is regarded as one of the most recognized brands in the world and is a famous trademark. The products under the COCA-COLA trademark are sold in over 200 countries and exceed 1.4 billion servings per day.
The COCA-COLA mark is registered as a trademark extensively throughout the world with a first registration obtained as early as 1893 in the United States. In Israel the COCA-COLA mark in Hebrew – קוקה-קולה was registered as a trademark in February 1969.
The mark COCA-COLA and its equivalent in Hebrew קוקה-קולה has been associated with the Complainant in Israel for many years.1 The COCA-COLA mark and its equivalent in Hebrew קוקה-קולה are without doubt famous in Israel. These marks are widely recognized as originating from the Complainant.
The Respondent registered the disputed domain name on October 17, 2007.
The disputed domain name is an internationalized domain name (“IDN”) with the Punycode text of . An IDN is a domain name that includes non-traditional characters, such as for example, non-Latin characters. Thus, the Punycode domain name resolves to the disputed Unicode domain name .
The Respondent, ICU Agency, provides an address in Bagdad, Iraq and has no apparent presence on the Internet. The Complainant could not verify the existence of the Respondent's address or business. The Respondent provided an email address, which the Complainant's investigations have revealed it appears on many other domain name registrations belonging to a Mr. Laster from Jerusalem, Israel.
The disputed domain name is not active. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is equivalent to the disputed Unicode domain name it resolves to .
The Complainant further argues that the disputed domain name is identical to the Complainant's registered trademark for COCA-COLA in Hebrew קוקה-קולה because it contains the entire Hebrew portion of the mark.
The Complainant further argues that the disputed domain name is identical to Complainant's registered trademark for COCA-COLA in Hebrewקוקה-קולה because it contains the entire Hebrew portion of the mark, and that the disputed domain name is identical with the Complainant's trademark קוקה-קולה, a reasonable Internet user in Israel would assume that the domain name is associated with the Complainant's mark.
The Complainant further provided that the word “קוקה-קולה” in the disputed domain name is confusingly similar to the Complainant's trademark COCA-COLA because of the phonetic equivalent of the Complainant's trademark COCA-COLA and the transliteration of קוקה-קולה into Latin script.
The Complainant further argues that the Respondent has no rights or legitimate interest in the disputed domain name based on the Complainant's continuous and long prior use of its marks COCA-COLA and קוקה-קולה.
The Complainant further argues that it has not licensed or otherwise permitted the Respondent to use its trademarks. There is no relationship between the parties which would justify the registration of the disputed domain name by the Respondent and there is nothing in the records that suggests that the Respondent is commonly known by the domain name.
The Complainant further argues that the Respondent has registered and is using the domain name in bad faith. The Complainant argues that by registering the disputed domain name the Respondent is preventing the Complainant from reflecting their famous mark קוקה-קולה in a corresponding domain name under the gTLD “.net”.
The Complainant also argued that the Respondent is engaging in domain name warehousing and domain name cybersquatting activities. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant argued that the disputed domain name is one and the same to the domain name resolves to - , which is identical to the Complainant's registered trademark. The disputed domain name only differs from the registered trademark due to the lack of hyphenation. The lack of hyphenation can be disregarded since it does not change the reading or the shape of the mark and consumers would not likely observe the lack of hyphenation.
Previous panels have found that the Punycode domain names and the translated Unicode domain names are equivalent. See FUJITSU Limited v. tete and Lianqiu Li,WIPO Case No. D2006-0885, where the Panel found the domain name to be an exact reproduction of Complainant's Chinese trademark in a domain name. See also Monografí S.A., Fernando Julián Negro v. Nick Lozikov / Moniker Privacy Services,WIPO Case No. D2008-0140.
The encoding used by the IDN is a system enabling the use of internationalized domain names in various scripts that are supported by Unicode. The burden of translation of the IDN rests with the browsing or resolving application (such as an Internet browser). Using Punycode the browser application will translate the Punycode text into the non-ASCII characters that are then shown and used. Likewise, if the user employs non-ASCII characters the Punycode will translate those into the Punycode text.2 Some Internet browsers include Unicode to Punycode conversion, while others require a plug-in. The translation is invisible to the user. The user can only see the Punycode translation which is shown in the resulting address bar of the requested web site. The result is that when the Punycode text is put into the address window of the browser, it is translated into the Unicode text and vice versa.
In this case a user can enter the Punycode and the browser would translate it into the disputed Unicode domain name . Therefore, the domain name is one and the same with its Punycode translation . It also flows from the above that the disputed domain name is therefore identical to the Complainant's registered trademarks in Israel.
In addition, the word “ קוקהקולה” has no meaning in the Hebrew language and is a transliteration of the English sound of the COCA-COLA trademark. The disputed domain name is phonetically the same and would generate in the eyes of the Israeli consumer an association with the Complainant. In Israel, the word “ קוקהקולה” is equivalent to the word “Coca-Cola”. Most Internet users would recognize both words to be one and the same.
When comparing the disputed domain name with the trademark in which the Complainant has rights, the suffix “.net” is typically excluded from consideration because it is a functional part of the domain name address. See Belo Corp v. George Latimer,WIPO Case No. D2002-0329.
The Panel therefore finds that the disputed domain name is identical to the Complainant's trademark. B. Rights or Legitimate Interests
Once the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the domain name and the Respondent has failed to assert any such rights.
The Panel finds the Complainant has established such prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the COCA-COLA trademark. The Respondent has not submitted a Response and has not provided any evidence to show he has any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Panel agrees that since the disputed domain name is in Hebrew in which the Complainant is extensively using and displaying the Hebrew version of their COCA-COLA mark; קוקה קולה , and given the fame of the COCA-COLA mark, it is inconceivable that the Respondent was not aware of the Complainant's rights to the COCA-COLA trademark or the Hebrew translation in Israel.
By knowingly choosing the disputed domain name which is comprised entirely of the Complainant's famous trademark, the Respondent has registered the disputed domain name in bad faith. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi, Ltd.) v. Click Consulting, Ltd.,WIPO Case No. D2007-0809, stating that:
“This Panel concurs with previous WIPO UDRP decisions holding that incorporating a widely-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements. As decided before, ‘knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith'. Caixa D´Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam,WIPO Case No. D2006-0464; Reuters Limited v. Global Net 2000, Inc.,WIPO Case No. D2000-0441.”
The Respondent is not actively using the disputed domain name. A number of panels have already provided that “passive holding” can qualify as bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The Telstra panel, however, provided that additional circumstances are required to show bad faith use:
“That is to say, the circumstances identified in paragraphs 4(b)(i), (ii) and (iii) can be found in a situation involving a passive holding of the domain name registration. Of course, these three paragraphs require additional facts (an intention to sell, rent or transfer the registration, for paragraph 4(b)(i); a pattern of conduct preventing a trade mark owner's use of the registration, for paragraph 4(b)(ii); the primary purpose of disrupting the business of a competitor, for paragraph 4(b)(iii)). Nevertheless, the point is that paragraph 4(b) recognises that inaction ([e.g.] passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith.”
In the present case, the following circumstances are, in combination, sufficient to show bad faith use of the disputed domain name: that the Complainant's trademark is very famous; that the Respondent failed to submit a Response or any evidence whatsoever of any actual or contemplated good faith use for the disputed domain name; that the Respondent has used an address which appears to be false and thus appears to have taken steps to conceal his identity.
In addition, in a case where the disputed domain name comprises of a famous trademark, it is especially clear that the passive holding is in bad faith since there is no conceivable use that the Respondent can make with the disputed domain name which would be legitimate in view of the rights of the Complainant. See McDonald's Corporation v. Easy Property,WIPO Case No. D2006-1142.
It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain name in bad faith. 7. Decision
For all 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, be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Dated: January 30, 2009
1 The Hebrew characters קוקה-קולה are read from right to left. In some browsers and other applications who do not support the Hebrew language the words would appear such that the word can only be read properly from right to left.
2 Punycode is a computer code that enables the translation of a Unicode string into the more limited character set used on the Internet, as defined in various RFCs.
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