The Complainant is The Coca-Cola Company of Atlanta, Georgia, United States of America, represented by King & Spalding, United States of America.
The Respondent is George Georgioy of Athens, Greece. 2. The Domain Name and Registrar
The disputed domain name is registered with UdomainN LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2010. On December 22, 2010, the Center transmitted by email to UdomainN LLC a request for registrar verification in connection with the disputed domain name. On January 5, 2011, UdomainN LLC / Moniker Online Services LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 January 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 9, 2011.
The Center appointed David Levin Q. C. as the sole panelist in this matter on February 9, 2011. 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 has registered and has been using the trademark COKE around the world for more than 50 years. It is a mark which has acquired a considerable international reputation. The Complainant has produced several examples of the registration of its mark COKE from 1945 onwards.
According to the WhoIs search result produced by the Complainant for the disputed domain name was first registered on January 15, 2008. 5. Parties’ Contentions A. Complainant
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. The Complainant contends that it meets these requirements in that, on the evidence:
(i) the disputed domain name is identical or confusingly similar to trademarks in which the Complainant has rights;
(ii) the Respondent lacks rights or legitimate interests in the disputed domain name; and
(iii) the Respondent registered and uses the domain name in bad faith.
The Complainant maintains that on the evidence produced it has established each of the three elements required. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Respondent has not disputed any of the allegations made against it by the Complainant. Paragraph 14 of the Rules prescribes that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or a requirement under, these Rules, the panel shall draw such inferences therefrom as it considers appropriate. There are no exceptional circumstances here disclosed.
The Panel is satisfied that the Complainant is the registered owner of numerous trademarks in the name COKE. Further it accepts that the mark COKE is one which has a worldwide reputation. Various decisions of UDRP panels have previously found that the mark COKE has an established reputation: see, for example, The Coca-Cola Company v. Masud Osman,WIPO Case No. D2001-0618 (, , and ); The Coca-Cola Company v. NW Spur, Leonard Street and Michelle Street,WIPO Case No. D2001-0406 (); The Coca-Cola Company v. Tantamount Property Trust,WIPO Case No. D2001-0327 (). A. Identical or Confusingly Similar
The Panel is satisfied that the use of the phrase “porn for a” as a prefix to the Complainant’s mark COKE could only be a reference to the Complainant’s drink product. Mindful that it has been held by previous UDRP panels that the relevant test under the first element pertains to a comparison of the disputed domain name itself and the trademark, (a test which the Panel will apply), the Panel notes as an aside that the website at the disputed domain name appears to also reinforce the existent confusing similarity between the disputed domain name (which fully incorporates the Complainant’s trademark) and the Complainant’s trademark. On the first page of the Respondent’s website it states:
“We offer tons of porn for the price of a daily glass of coke!”
The inference drawn by the Panel is that the Respondent has incorporated the Complainant’s mark in an endeavour to thereby divert Internet users to its site.
The Panel would not have been attracted to any argument (had it been made) that where the mark is merely a suffix “the emphasis normally placed on the initial portion of a domain name tends to ‘bury’ the trademark” (see Wal-Mart Stores, Inc. v. xc2,WIPO Case No. D2006-0811). Rather, the COKE element of the domain name is highlighted as the direct object of a prepositional phrase “porn for a coke”. Additionally, the Panel notes (though not strictly dispositive under the first element) that in the present case the website of the Respondent makes an immediate reference to the product of the Complainant on its opening page. Far from endeavouring to “bury” the incorporated trademark, the Respondent is emphasizing it.
In Lockheed Martin Corporation v. Dan Parisi,WIPO Case No. D2000-1015, in relation to the disputed domain names and a majority of a three member panel found that a domain name which was so obviously criticizing the Complainant could not be confusingly similar when it incorporated the Complainant’s name or mark. It concluded that:
“Both common sense and a reading of the plain language of the Policy support the view that a domain name combining a trademark with the word “sucks” or other language clearly indicating that the domain name is not affiliated with the trademark owner cannot be considered confusingly similar to the trademark.”
However in the present case the disputed domain name, albeit prefixed by words unconnected with the mark, is not disparaging of the Complainant or its products, nor does it on its face suggest any criticism of the Complainant’s commercial activities. In the circumstances the Panel is satisfied that the disputed domain name, on its face, is confusingly similar to the Complainant’s mark.
The Panel concludes that the Complainant has established the first element of the Policy. B. Rights or Legitimate Interests
The Respondent has not sought to establish that it was using the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. It does not appear to legitimately market a product “Porn for a Coke”.
Even though the Respondent’s commercial business of selling sexually explicit material on the Internet may be quite legal, the attempt to attract customers or Internet users by the unauthorized incorporation of the Complainant’s well-known mark into its domain name is neither legitimate nor fair use.
The Panel infers that the use of the Complainant’s mark was to entice Internet users into its website and thereby gain commercial advantage for the Respondent in the marketing of its pornographic products. Such use, which allows the Respondent to gain such advantage from the incorporation of the mark COKE into its domain name and website is not legitimate and the Respondent has not made any attempt to suggest that it is.
As discussed above in relation to the question whether the disputed domain name is ‘confusingly similar’ to the Complainant’s mark, in the present case the domain name does not appear to be part of an attempt to conduct any legitimate or other discussion as to the merits of the products of the Complainant. The Respondent is not attempting to parody or criticize the Complainant’s products or activities. The conduct of the Respondent is merely a plain endeavour to exploit consumer confusion by the use of or reference to an extremely well-known trademark to provide a drawcard to its pornographic website. The inference which the Panel draws is that the Respondent is attempting to derive revenue for itself by piggy-backing on the established trademark of the Complainant.
The Panel concludes that at no time has there been a bona fide offering of goods and services by the Respondent nor does the Respondent have any rights to the mark or any entitlement to use it in marketing its pornographic site, and accordingly that the second element of the Policy is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b)(iv) of the Policy offers guidance as to when bad faith can be found.
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
As in Coca-Cola Company v. Masud Osman,WIPO Case No. D2001-0618 the facts show that the Respondent used the COKE mark on various web pages associated with the disputed domain name. The use of the Complainant’s mark on these pages, and in the associated disputed domain name, creates a likelihood of confusion with the Complainant’s mark in violation of paragraph 4(b)(iv).
As determined above, the incorporation of the Complainant’s mark into the disputed domain name creating a concocted word “pornforacoke” is confusingly similar to trademarks in which the Complainant has worldwide rights. Albeit unlikely, it is possible an Internet user coming across the site might well be unsure whether the Complainant was itself marketing or affiliated with the organization marketing the pornographic material available through the website. In contradistinction to (see Wal-Mart Stores, Inc. v. Traffic Yoon,WIPO Case No. D2006-0812) the Panel will not infer here that an Internet user would conclude from the term “pornforacoke” that the Respondent is not connected with the Complainant.
In any event the linking of an incorporated and well-recognised trademark to a pornographic website is per se evidence of bad faith: see Prada S.A. v. Michael Faronston,WIPO Case No. D2006-0585 and the cases referred to therein; Ty, Inc. v. O.Z. Names,WIPO Case No. D2000-0370, concluding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith; Simple Shoes, Inc. v. Creative Multimedia Interactive, NAF Claim No. 95343, which held that “linking a domain name that is identical or confusingly similar to [c]omplainant’s mark to a pornographic site is evidence of registration and use in bad faith”.
This Panel finds bad faith registration and use because the Respondent’s actions meet the criteria listed in paragraph (4)(b)(iv) and thus the third element of the Policy is fulfilled. 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.
David Levin Q. C.
Sole Panelist
Dated: February 13, 2011
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