WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The Coca-Cola Company v. PrivacyP / Acosta Jose Julian Case No. D2010-0335 1. The Parties
The Complainant is The Coca-Cola Company of Atlanta, Georgia, United States of America, represented by Simmons & Simmons, United Kingdom of Great Britain and Northern Ireland.
The Respondent is PrivacyP / Acosta Jose Julian of Ceiba, Puerto Rico, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2010. On March 4 and 9, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On March 10, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR 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. The Center sent an email communication to the Complainant on March 10, 2010, providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. In the same email, the Center also notified that the Complaint was administrative deficient with regard to the Mutual Jurisdiction clause. The Complainant filed an amendment to the Complaint on March 11, 2010. The Center verified that the Complaint together with the amendment to 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 proceeding commenced on March 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 1, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 6, 2010.
The Center appointed Staniforth Ricketson as the sole panelist in this matter on April 13, 2010. 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 the famous beverages company which makes and markets the beverage COCA-COLA which was invented in 1886 in Atlanta, Georgia, and has become a world famous drink over the succeeding century and a quarter. Some evidence of the fame and value of the COCA-COLA brand is provided in Annex 3 of the Complaint which contains a chart of rankings compiled in 2009 which shows that it is the world's most famous brand with an estimated brand value of $68,734,000, and that it has held this rank in the Top 20 world brands in the last 10 years. Further information on the history and value of the COCA-COLA brand is contained in Annex 4 of the Complaint (extracts from Superbrands: An Insight into Britain's Strongest Brands 2004).
There is also evidence of extensive Community Trade Mark registrations for the words COCA-COLA, with respect both to the words themselves as well as the words represented in the familiar flowing script: see Annex 6 of the Complaint. These registrations cover a wide range of classes of goods and services, in addition to beverages. It is stated (and there is no reason to disbelieve this) that there are corresponding registrations “around the world”. All of the cited registrations predate the disputed domain name.
In addition, the Complainant has a philanthropic arm called the Coca-Cola Foundation, founded in 1984. Details of its charitable activities are shown in Annex 5 of the Complaint.
The disputed domain name in the present proceeding was registered on February 26, 2007. Its use consists of one “parked page” (see Annex 7 of the Complaint, viewed by the Panel on 25 April 2010) which contains links to related searches, sponsored listings and web search results, including airline tickets, credit reports and insurance services, links to “scholarships” and “college grants”, and a search engine. According to the Complaint (paragraph 26(C)), there is also a link through to one of the Complainant's websites and a screenshot of this website is exhibited at Annex 8 of the Complaint. However, this link was not apparent when the website was viewed by the Panel on April 25, 2010, although the other links and matters referred to in the Complaint were present at that date. 5. Parties' Contentions A. Complainant
In relation to paragraph 4(a)(i) of the Policy, the Complainant contends that the disputed domain name is confusingly similar to its registered marks, in that it incorporates the whole of the mark COCA-COLA and that this is not affected by the addition of a generic or descriptive term to the domain name. In particular, it draws attention to certain UDRP decisions in which it has been found that the combination of the mark COCA-COLA with another generic term in a domain name resulted in confusing similarity: see, for example, The Coca-Cola Company v. Garry Skaggs Company and Garry Skaggs,WIPO Case No. D2000-1806 () and The Coca Cola Company v. Bernard Peters,WIPO Case No. D2007-0478 ().
The Complainant contends further that the Respondent has no rights or legitimate interests in the disputed domain name (as required under paragraph 4(a)(ii) of the Policy), arguing that the use of a website consisting of a “parked” page does not constitute a bona fide offering of goods or services or legitimate noncommercial fair use of the domain name. In support, it cites various UDRP decisions, including J. Choo Limited v. Sinclare Vabalon, BHG,WIPO Case No. D2008-1091, noting further that the domain name was registered many years after the Complainant had established its rights in its trade marks through registration and use as well as being 23 years after the Coca-Cola Foundation was established. The Complainant submits further that there is no business or legal relationship between the parties, and no basis for arguing that the Respondent has a licence or approval from the Complainant to use the domain name.
Finally, as to paragraph 4(a)(iii) of the Policy (registration and use in bad faith), the Complainant refers to paragraph 4(b)(iv) (attracting Internet users to its site by creating a likelihood of confusion with the Complainant's mark), and cites here evidence of a complaint from a consumer on February 18, 2010 in relation to a false email communication it had received purporting to be from the Coca-Cola Foundation. This informed the recipient that he was entitled to receive a cash grant from the Foundation but requested to provide various personal emails. The email, in fact, was not sent by the Complainant but from the email address [________@] and the Complaint contends that this is an instance of unlawful “phishing” of personal details.
The Complainant also relies more generally upon the operation of the “parked” page at the website at the disputed domain name as evidence of acting in bad faith on the part of the Respondent, referring here to other prior Administrative Panel decisions, such as Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,WIPO Case No. D2007-0267. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 5(e) of the Rules provides that, where no response is submitted, in the absence of exceptional circumstances, the Panel is to decide the dispute based upon the Complaint. Such default on the part of the Respondent does not relieve the Complainant from being required to establish that each of the requirements of the Policy, in particular those under paragraph 4(a), is established. At the same time, it should be noted that paragraph 14(b) of the Rules provides that:
“If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”
Accordingly, the Panel proceeds to deal with each of the matters required to be satisfied under paragraph 4(a) of the Policy, noting that it is necessary for the Complainant to satisfy each one if it is to succeed in its Complaint. A. Identical or Confusingly Similar
It will be noted that the Complainant has not sought to claim identity between the disputed domain name and the name of its charitable foundation, The Coca-Cola Foundation, on the basis that it has rights in the latter as an unregistered trade mark that would be capable of protection at general law. Rather, it has referred to its various registrations for the words Coca-Cola and has then sought to argue that the domain name is confusingly similar to these.
There can be no doubt that the Complainant has successfully shown that it has rights in a trade mark, or rather a series of marks. It is also clear that the disputed domain name is confusingly similar to these marks. The addition of a generic or descriptive word such as “foundation” as part of the domain name does not remove the strong possibility of confusion: see here the UDRP cases cited by the Complainant. Furthermore, the word “foundation” is used here as a suffix, meaning that the overwhelming significance of the domain name resides in its opening words “Coca” and “Cola” which are the same as the registered trade marks. In this regard, the “.org” suffix at the end of the domain name is to be disregarded, as this is simply part of the Internet address and does not add “source-identifying significance”: see further Bang & Olufsen a/s v. Unasi Inc.,WIPO Case No. D2005-0728 (September 7, 2005) and Deutsche Welle v. DiamondWare Limited,WIPO Case No. D2000-1202 (January 2, 2001).
Accordingly, the Panel finds that the requirements of paragraph 4(a)(i) are satisfied. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant is also required to show that the Respondent has “no rights or legitimate interests in respect of the domain name”. Further assistance as to the meaning of this requirement is given in paragraph 4(c) which provides that:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your [the Respondent's] rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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.”
Essentially, these are matters for a respondent to put forward for the panel's consideration. In the present case, no response has been filed and all that the Complainant can do is to point to evidence that indicates that none of these circumstances exist.
Thus, while the disputed domain name resolves to a “parked” page” at the website (Complaint, Annex 7), the services listed here are of a diverse kind, some being apparently commercial, e.g., airline tickets, credit reports and insurance services, while others relate to educational purposes, promoting scholarships and grants. It is difficult to conclude from this material that the Respondent is using the domain name in connection with a bona fide offering of its own goods or services, other than possibly acting as a conduit for other traders or suppliers. The remarks of the UDRP panel in J. Choo Limited, supra quoted at paragraph 28 of the Complaint therefore appear apposite here, and the circumstance referred to in paragraph 4(c)(i) does not arise.
In the same way, there is no evidence of any facts that would support the circumstances referred to in paragraph 4(c)(ii) or (iii). In particular, it is clear that the activities of the Respondent have not been licensed or approved by the Complainant. The absence of any Response from the Respondent addressing the matters referred to in paragraph 4(c) entitles the Panel to infer that none of these circumstances exist in the present case. Accordingly, the Panel is satisfied that the requirement of no rights or legitimate interests under paragraph 4(a)(ii) has been made out. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must show that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) then provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you [the Respondent] have registered or have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you [the Respondent] have 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 you have engaged in a pattern of such conduct; or
(iii) you [the Respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
It will be noted that, under paragraph 4(a)(iii) of the Policy, both registration and use of the disputed domain name in bad faith are required. Of the factors listed in paragraph 4(b) above, (i)-(iii) relate specifically to registration of the domain name, while (iv) relates to use following registration. However, in view of the fact that these factors are stated to be inclusive, it follows that there can be other factors that can be relied upon to point to bad faith, both in registration and in use. In this regard, it is worth noting an early decision of a UDRP panel to the effect that registration in bad faith, followed by a passive holding of a domain name when there is no way in which it could be used legitimately, can amount to use in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. In addition, it would be both mistaken and artificial to confine paragraphs (i)-(iii) solely to the time of registration: presumably, it would also be a use of a disputed domain name in bad faith to do so, after registration, with one of the purposes outlined in those paragraphs. Support for this view is to be found in several UDRP panel decisions: see, for example, Estée Lauder Inc. v. , and Jeff Hanna,WIPO Case No. D2000-0869 and E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615.
In the present proceeding, the situation is complicated by the fact that the Respondent has not filed any Response or provided any evidence as to its intentions in registering and maintaining the disputed domain name. As noted above, under paragraph 14(b) of the Rules, where a party defaults in complying with any requirement of the Rules, the Panel is entitled to draw from such default such inferences, as it considers appropriate.
On the evidence before it, the Panel is not satisfied that the circumstances referred to in paragraph 4(b)(i) or (ii) arise. It is also impossible to ascertain whether the intention referred to in paragraph 4(b)(iii) exists. However, the circumstances outlined in paragraph 4(b)(iv) appear to arise, in that the disputed domain name is clearly confusingly similar to the Complainant's marks and there is an offering of various services on the website and/or links to other sites. Accordingly, it seems reasonable to infer that, in linking the domain name to the “parked” page in this way, the Respondent has attempted to attract, for commercial gain, Internet users to its website or other on-line location, through the creation of a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website and/or the services offered on the website.
As noted above, evidence of bad faith use is not limited to the various circumstances listed in paragraph 4(b). In the present case, a further instance of bad faith use is to be found in the “phishing” email exhibited in Annex 9 of the Complaint. On its face, this appears to be an egregious attempt to acquire personal information from the Complainant's customers on the basis of a false representation that it emanates from the real Coca-Cola Foundation. The strength of this evidence, however, is weakened somewhat by the fact that the email address of the emailed letter in Annex 9 does not appear on that document, and the only evidence of its provenance with the Respondent is to be found in the assertion that this was the case in the Complaint. In the absence of a Response from the Respondent, the Panel is prepared to assume that this did in fact emanate from the Respondent.
Finally, the Panel is satisfied that the registration of the disputed domain name can only have been made in bad faith, having regard to the world-wide notoriety of the Complainant and its beverage. It is hard to imagine any circumstance in which anyone anywhere in the world could in good faith register a domain name comprising the words “Coca-Cola” in ignorance of the Complainant's rights: see here the material exhibited in Annexes 3 and 4 of the Complaint. 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.
Staniforth Ricketson
Sole Panelist
Dated: April 26, 2010
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