WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The Coca-Cola Company v. LIMCABOOKOFRECORDS.COM c/o Whois IDentity Shield / Administrator, Domain; “The Coca-Cola Company” Case No. D2009-1120 1. The Parties
The Complainant is The Coca-Cola Company, Atlanta, Georgia, United States of America, represented by Valea AB, Sweden.
The Respondent is LIMCABOOKOFRECORDS.COM c/o Whois IDentity Shield / Administrator, Domain of Vancouver, British Columbia, Canada; “The Coca-Cola Company”, Georgia, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Nameview Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 20, 2009. On August 21, 2009, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the disputed domain name. On August 24, 2009, Nameview Inc. 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 and contact information in the Complaint. On the same day, August 24, 2009, the Center transmitted an email to Nameview noting that the disputed domain name would expire during the proceeding on August 26, 2009 and requested confirmation in accordance with paragraph 3.7.5.7. of the ICANN Expired Domain Deletion Policy. Nameview did not reply to this email request. The Center sent an email communication to the Complainant on August 25, 2009 providing the registrant and contact information disclosed by the Registrar and the Panel is satisfied that that information is now included in the Complaint. The details provided by Nameview mirrored nearly exactly those of the Complainant. The Center sent an email communication to the Complainant on August 25, 2009 concerning the registrant and the contact information provided by Nameview, and requested Complainant to confirm whether it in fact controlled the disputed domain name. The Complainant replied on August 26, 2009, stating that it is not in control of the disputed domain name. The Complainant further stated that the disputed domain name no longer resolved to a website as indicated and evidenced in its Complaint and that this was an attempt from the Respondent to have the Complaint withdrawn on false assumptions. The Complainant therefore requested the Center to proceed with notification of the Complaint. The Center verified that the 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 September 1, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2009. On the same day, September 1, 2009, the Center transmitted an email communication to Nameview copied to the Parties and ICANN regarding the expiration of the disputed domain name. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 25, 2009.
The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on October 7, 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.
The Panel notes the WhoIs currently displays an expiry date of August 26, 2010 in relation to the disputed domain name. 4. Factual Background
The Complainant is the prominent manufacturer of soft drinks and amongst other products makes Limca which is a lemon and lime carbonated soft drink.
The Complainant is the registered owner of the trademark LIMCA which is used, among others, for beverage products.
The trademark was first used in India in 1971 and is Trade Mark No.266840B registered in the Trade Marks Registry of the Government of India on October 13, 1971 in India and subsequently in several other countries.
The LIMCA trademark is also used to produce a book of records for Indian achievements known as the Limca Book of Records which is published and produced online with the patronage of Coca Cola India, a subsidiary of the Complainant.
The Complainant has also registered and is using the domain name , and other domain names for websites to promote the Limca Book of Records. As result, the Limca Book of Records operates not only as a printed publication, but as an online service.
The Respondent registered the disputed domain name on August 26, 2005. 5. Parties' Contentions A. Complainant
The Complainant alleges that the domain name should no longer be registered with Respondent but that it should be transferred to Complainant.
It contends that this should be done because, within the meaning of paragraph 4(a)(i) of the Policy, the disputed domain name is confusingly similar to Complainant's registered trademark LIMCA and identical to its unregistered trademark LIMCA BOOK OF RECORDS, Respondent has no rights or legitimate interests in the domain name and it has been registered and subsequently used in bad faith. Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to Complainant.
In support of its case on the first of these three elements, Complainant relies on the registered LIMCA trademark to which reference has already been made (“the LIMCA mark”) and says that the domain name is confusingly similar to the trademark. That is so, it contends, because the domain name incorporates the whole of the LIMCA mark and has had added to it the generic expression “bookofrecords” which does not negate the confusing similarity with the trademark, for it is well known in India and several other countries that the Limca Book of Records is published under the patronage of the Complainant being also the company that produces the Limca drink.
The Complainant also contends that the disputed domain name is identical to the Complainant's unregistered trademark, LIMCA BOOK OF RECORDS.
The Complainant then contends, to establish the second element, that the Respondent has no rights or legitimate interests in the domain name because it is not being used for a bona fide offering of goods or services, the Respondent has not made any demonstrable preparations to use the domain name for that purpose, the Respondent is not commonly known by the domain name and it is not making a legitimate non-commercial or fair use of the domain name.
Finally, Complainant contends that the domain name was registered and is being used in bad faith. It contends that the domain name was registered in bad faith because the LIMCA and LIMCA BOOK OF RECORDS marks are well known, as is the fact of the publication of the Limca Book of Records under the patronage of the Complainant. The Respondent must therefore be taken to have been aware of those facts when it registered the domain name, especially as the website to which it resolves has been set up with references to record books other than the Limca Book of Records. It also contends that the domain name has been used in bad faith because it has been openly promoted as being for sale which, together with all the circumstances, shows use of the domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past WIPO UDRP panels have found many times that despite the absence of a submission from a respondent, a complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence. Indeed, paragraph 14 of the Rules incorporates both of those notions into the procedures of the Panel.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the Complainant to succeed it must prove, within the meaning of paragraph 4(a) of the Policy, that:
(i) The 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith.
It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn. A. Identical or Confusingly Similar
The Complainant relies on its registered LIMCA mark and also on an unregistered trademark for LIMCA BOOK OF RECORDS. As it is clear that the Complainant can make out the first of the three elements that it must establish by relying on its registered trademark, it is not necessary to consider whether there is also an unregistered trademark.
The Panel finds that the Complainant has established rights in the registered LIMCA mark pursuant to Paragraph 4(a)(i) of the Policy through the registration of the mark in India, together with numerous other trademarks registered for LIMCA in other countries, documentary evidence of which has been provided and which is accepted by the Panel.
The Complainant argues in the Complaint that the domain name is confusingly similar to its LIMCA mark. The Panel accepts that submission as the domain name contains the Complainant's LIMCA mark and adds the generic expression “bookofrecords” and the top-level domain “.com.”
However, the Complainant is the prominent manufacturer of soft drinks, one of which, Limca, is very well known in India and other countries. The Complainant lends its patronage to the publication of a popular book of Indian records known as the Limca Book of Records which is also produced online and the evidence is that the public know and understand that the book is so published under the Complainant's auspices.
That being so, the disputed domain name would be taken by Internet users in India and the other countries where the Limca drink is produced and where the Limca Book of Records is known, to be referring to the Complainant, its LIMCA trademark and the printed book and online publication themselves.
Accordingly the Panel finds that the disputed domain name is confisuingly similar to the registered LIMCA trademark. That view is consistent with many UDRP decisions where it has been held that a disputed domain name which contains a mark, together with a generic term with a relationship to Complainant's business, generally creates a confusing similarity between the disputed domain name and the registered mark. See, for example, Rada Mfg Co v. J.Mark Cutlery,WIPO Case No. D2004-1060.
Moreover, the addition of the gTLD suffix “.com” is irrelevant in distinguishing a disputed domain name from an established mark.
The Complainant has therefore made out the first of the three elements that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Thus, if the respondent proves any of these elements or indeed anything else that shows it has a right or interest in the domain name, the complainant will have failed to discharge its onus and the complaint will fail.
The Panel's task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when the registrant is in default and does not file a response or any other form of submission. The Respondent in the present case was given notice that it had until September 21, 2009 to send in its Response, that it would be in default if it did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.
It is also well established that, as it is put in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions:
“…a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a) (ii) of the UDRP.”
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name.
The prima facie case is based on the facts that:
(i) the LIMCA trademark is well known internationally in those countries where the Limca soft drink is known and consumed;
(ii) it indicates not only the name of the popular drink but also the Limca Book of Records which is known to be published under the patronage of the Complainant;
(iii) the Respondent chose this prominent name for its domain name and added only a description of one of the activities of the Complainant, namely its association with the publication of the Limca Book of Records;
(iv) the Respondent was not authorized by the Complainant to use the LIMCA name or mark in a domain name or anywhere else; and
(v) the domain name is not being used for a bona fide offering of goods or services; and the Respondent has not made any demonstrable preparations to use the domain name for that purpose.
(vi) the Respondent is not commonly known by the domain name; and
(vii) the Respondent is not making a legitimate non-commercial or fair use of the domain name.
The Respondent has not made any attempt to rebut this prima facie case and the Panel therefore concludes that the Respondent has no rights or legitimate interests in the domain name.
The Panel finds that the Complainant has therefore made out the second of the three elements that it must establish. C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited. v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive.
The four specified circumstances are:
“(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent's website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the site or location.”
The totality of the evidence is that the disputed domain name was most likely registered in bad faith because
the LIMCA mark is well known, as is the fact of the publication of the Limca Book of Records under the patronage of the Complainant; the Respondent must therefore be taken to have been aware of those facts when it registered the domain name, including as it did the trademark LIMCA and a reference to a prominent activity of the Complainant, namely the publication of the Limca Book of Records. As it has been shown that the registration of the domain name took place without any authority granted by the Complainant, it may be inferred that there was no legitimate reason for doing so and that the registration took place for an improper purpose and solely to benefit the Respondent. This is especially so as the website to which the domain name at the time the Complaint was filed resolved to links and references to record books other than the Limca Book of Records and in competition with it. It may also be inferred that this was done to confer some financial advantage on the Respondent. All of those factors lead to the conclusion that the domain name was registered in bad faith. That conclusion is consistent with previous UDRP decisions such as the decision cited by the Complainant, namely Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi, Ltd) v. Click Consulting, Ltd,WIPO Case No. D2007-0809.
The Complainant also contends that the domain name was registered and used in bad faith because it has been openly promoted as being for sale. The Panel agrees with this submission, for a screenshot of the website to which the domain name resolves and which is annexed to the Complaint, shows that the domain name is for sale and carries
the invitation “To purchase this domain name, click here”. In those circumstances, the present case is virtually identical to the situation that was present in the recent decision in Pac Fill, Incorporated v. Choi Sungyeon,WIPO Case No. D2009-0245, cited by the Complainant, where the panel observed:
“It is well established that registering a domain name for the primary purpose of offering to sell, rent, or otherwise transfer the domain name for an amount in excess of the registration costs is evidence that the domain name was registered and is being used in bad faith (paragraph 4(b)(i) of the Policy). In the present case, the disputed domain name resolves to a website that prominently displays the statement “This domain is for Sale!”. The Respondent's offer to sell the disputed domain name is made to the public. There is no direct evidence that the Respondent offered to sell the domain name specifically to the Complainant or its competitors, or that the sale price would exceed the registration costs. Nevertheless, those requisite elements may be inferred from the circumstances, including the fact that the domain name is identical to the Complainant's highly distinctive mark and the manner in which the domain name has been advertised for sale (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787). Further, it may be inferred from the mere offering for sale that the price to be negotiated would exceed the registration costs (Bayerische Motoren Werke AG v. JMXTRADE.com Selling Premium Domain,WIPO Case No. D2000-1693). This conclusion is supported by an adverse inference drawn from the Respondent's failure to reply to the Complaint or dispute the Complainant's assertion regarding the primary purpose of the Respondent's registration and use of the disputed domain name.”
These matters and all of the circumstances lead the Panel to the conclusion that the Respondent registered and has used the domain name in bad faith.
The Complainant has accordingly made out the third of the three elements that it must establish. 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 domain name be transferred to the Complainant.
The Honourable Neil Anthony Brown QC
Sole Panelist
Dated: October 21, 2009
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