The Complainant is The Coca-Cola Company of Atlanta, Georgia, United States of America, represented by Arnall Golden Gregory LLP, United States of America.
The Respondent is Thi Thanh Nguyen of Tay Ho, Hanoi, Viet Nam. 2. The Domain Name and Registrar
The disputed domain name (“the Domain Name”) is registered with Moniker Online Services, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2011. On July 11, 2011, the Center transmitted by email to Moniker Online Services, LLC. a request for registrar verification in connection with the Domain Name. On July 13, 2011, 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 July 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 4, 2011.
The Center appointed David Taylor as the sole panelist in this matter on August 17, 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 factual background is taken from the submissions contained in the Complaint and the exhibits annexed thereto given that no Response was filed.
The Complainant is The Coca-Cola Company, a Delaware corporation.
The Complainant is a multinational beverage company incorporated in 1892. Since at least 1893 and 1945, respectively, it has registered and used the COCA-COLA and COKE trade marks in commerce to identify its beverages.
The Coca-Cola beverage, also referred to as Coke, is one of the most popular soft drinks in the world and sold in more than 200 countries, including Viet Nam.
The Complainant has produced evidence of its extensive trade mark portfolio in the term COKE in the United States as well as in Viet Nam (the Respondent's country of residence).
The Complainant also owns the following United States trade mark registrations (referred to, collectively, as the MY COKE REWARDS trade mark):
- MYCOKEREWARDS.COM registered on March 4, 2008 with the USPTO under number 3,391,009;
- MY COKE REWARDS registered on October 30, 2007 with the USPTO under number 3,326,653;
- MYCOKEREWARDS registered on April 10, 2007 with the USPTO under number 3,227,557.
The applications for the registration of these trade marks were filed, respectively, on March 2, 2007, September 16, 2005 and May 17, 2006.
The Complainant also owns the domain name since May 13, 2005, which it uses in connection with its My Coke Rewards program.
My Coke Rewards is a customer loyalty incentive program created in 2006. Participants enter codes found on specially marked packages of the Complainant’s products on a website, these codes being then converted into points redeemable for merchandise, discounts, or cash prizes.
The Domain Name was registered on January 24, 2006 via the registrar Moniker Online Services, LLC.
The Domain Name resolves to a parking page containing a variety of links, including targeted links to the Complainant's "www." website and to third party websites. 5. Parties’ Contentions A. Complainant
(i) The Complainant contends that the Domain Name is identical or confusingly similar to the Complainant's MY COKE REWARDS, COKE and COCA-COLA trade marks.
The Complainant asserts that the Domain Name is almost identical to its MY COKE REWARDS trade mark, and that the absence of the letter "s" after the word "reward" is not sufficient to differentiate the Domain Name from the MY COKE REWARDS trade mark.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant considers that its MY COKE REWARDS and COKE trade marks, which are uniquely associated with the Complainant, its products and services and its customer incentive program, have wrongfully been incorporated by the Respondent into the Domain Name in order to intentionally attract Internet users seeking information on the Complainant's products and services, including the "www." website, thereby diverting customers from the Complainant.
The Complainant further asserts that using the Domain Name in order to present the intentionally diverted Internet users with links to the Complainant's "www." website and to third parties' websites which provide services related to those provided on the Complainant's website can by no means constitute a legitimate noncommercial or fair use of the Domain Name.
Furthermore, the Complainant contends that the Respondent is not a licensee of the Complainant nor is he authorized by the Complainant to use its COKE, COCA-COLA and MY COKE REWARDS trade marks or to apply for or use any domain name incorporating such marks. Besides, according to the Complainant, the Respondent is not known or identified by the terms "coke", "coca-cola" or "my coke rewards", nor is he affiliated or connected in any way with the Complainant's business. According to the Complainant, the Respondent does not operate a business or organization commonly known as "coke", "coca-cola" or "my coke rewards", nor has he acquired any trade marks in those terms.
(iii) The Complainant contends that the Domain Name was registered and is being used in bad faith.
The Complainant asserts that the Respondent does not conduct any legitimate commercial or noncommercial activity under the COKE, COCA-COLA and MY COKE REWARDS trade marks and that the Respondent has registered the Domain Name in order to prevent the Complainant from using such marks in the corresponding Domain Name with full knowledge of the Complainant's trade mark rights.
The Complainant further argues that the Respondent's bad faith is evidenced by his attempt to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant's COKE, COCA-COLA and MY COKE REWARDS trade marks and the "www." website as to the source, sponsorship, affiliation, or endorsement of the Respondent's "www." website.
The Complainant contends that the Respondent's bad faith is further evidenced by the fact that he has registered or acquired multiple domain names which are identical or confusingly similar to the trade marks of others. A copy of the Respondent's domain name registrations on May 17, 2011 as obtained from CSC Corporation has been produced to the Panel.
The Complainant finally argues that the Respondent's use of the Domain Name amounts to infringement of United States federal law.
For all the foregoing reasons, the Complainant seeks the transfer of the Domain Name from the Respondent in accordance with paragraph 4(i) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant produced evidence that it owns extensive trade mark registrations in the term COKE. In addition, the Complainant owns MY COKE REWARDS trade mark registrations in the United States.
The Respondent registered the Domain Name before the Complainant's MY COKE REWARDS trade mark was registered, but after the Complainant had applied for USPTO trade mark number 3,326,653. In any event, it is well established under the Policy that registration of a domain name before a complainant acquires trade mark rights in a name does not prevent a finding that a domain name is identical or confusingly similar to that trade mark.
The Domain Name reproduces the MY COKE REWARDS registered trade mark almost identically, with the omission of the letter "s" at the end of the Domain Name. As previous WIPO UDRP panels have found under the UDRP, the mere change from plural to singular in a domain name does not attribute a distinctive character to the domain name in relation to a complainant’s trade mark capable of avoiding confusion.
Besides, the combination of the COKE trade mark with the terms “my” and "reward" is confusingly similar to the COKE trade mark. A number of previous WIPO UDRP panels have found under the UDRP that the combination of the term “coke” with another generic term in a domain name results in confusing similarity to the Complainant’s COKE trade mark, given its significant renown. See, e.g., The Coca-Cola Company v. Ben Johnson,WIPO Case No. D2009-1718, where the panel held that the combination of the COKE mark with “rewards2009” was confusingly similar to the COKE trade mark, "since the COKE mark is such a famous mark that pairing non-distinctive matter with the mark in a domain name in cases such as this is likely to be perceived as signaling an association with the Complainant".
Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trade marks and therefore that the Complainant fulfills paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Although the Policy states that a complainant must prove each of the elements in paragraph 4(a), it is often observed that it is difficult for a complainant to prove a negative, i.e. that a respondent has no rights or legitimate interests in respect of a domain name. It has therefore become generally accepted under the Policy that, once a complainant has presented a clear prima facie showing of a respondent’s lack of rights or legitimate interests in a domain name, the panel should find for the complainant unless the respondent demonstrates a plausible case of rights or legitimate interests.
The Panel is satisfied that the website to which the Domain Name resolves is being used in connection with a revenue-generating scheme such as “pay-per-click” services. Although it is possible in certain circumstances for a registrant to use a domain name for “pay-per-click” services providing financial gain within the meaning of paragraph 4(a)(ii) of the Policy, it is well established under the Policy that if the owner of the domain name in question uses such “pay-per-click” services in order to take unfair advantage of a similarity with another’s trade mark, then such use cannot constitute a right or legitimate interest in the domain name. In this case, the Domain Name registered by the Respondent is an almost identical reproduction of the Complainant’s MY COKE REWARDS trade mark and was registered four months after the said trade mark application was filed. Besides, the exact Complainant's MY COKE REWARDS trade mark is referred to on the "www." website, and this website contains an unauthorized "MyCokeR" link to the Complainant's "www." website. The Panel has therefore reached the conclusion that the Domain Name has been registered and used in order to take unfair advantage of the goodwill of the Complainant‘s trade mark, which does not provide the Respondent with a right or legitimate interest in the Domain Name.
Furthermore, in view of the above, the Panel is convinced that the Respondent's use of the Domain Name gives a false impression of affiliation with the Complainant, which is detrimental to the goodwill of the Complainant's trade mark and business. Such use cannot constitute a right or legitimate interest in the domain name. See, for instance Deutsche Telekom AG v. Heihachi Ltd WHOIS-PROTECTION,WIPO Case No. D2010-1225 and Huoneistokeskus Oy v. Osmo Anttalainen,WIPO Case No. D2008-1473.
In addition, there is no evidence suggesting that the Respondent is affiliated with the Complainant, is commonly known by the Domain Name, or has obtained any licence or authorization to use the Complainant's trade mark.
The Panel has considered the evidence put forward by the Complainant and considers that the Complainant has succeeded in presenting a clear prima facie showing of the Respondent’s lack of rights or legitimate interests in the Domain Name which the Respondent has not rebutted.
Accordingly, the Panel finds that the Respondent lacks rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
The Complainant has provided substantial and convincing evidence to establish that it has rights in the COKE trade mark, which it has used for nearly seventy years, and that the COKE trade mark has achieved significant reputation and fame worldwide. Given the Complainant’s numerous COKE trade mark registrations, and its unquestionable worldwide reputation, as demonstrated by the facts evidenced by the Complainant and by numerous previous UDRP panel decisions (see, e.g., The Coca-Cola Company v. Whois Privacy Service,WIPO Case No. D2010-0088), in the present case, it is difficult to conceive of a plausible circumstance in which the Respondent could legitimately use the Domain Name. It is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of the COKE trade mark at the time of registration. See, e.g., Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320.
The Complainant has also provided evidence that it has rights in the MY COKE REWARDS trade mark. As previously noted, the Domain Name registered by the Respondent reproduces almost identically the Complainant’s MY COKE REWARDS trade mark, and was registered four months after the Complainant filed its application for USPTO trade mark number 3,326,653. The Panel finds therefore unconceivable that the Respondent did not have the MY COKE REWARDS trade mark in mind when registering the Domain Name.
Furthermore, the Panel believes that the Respondent registered and uses the Domain Name in order to take advantage of existing or prospective rights, respectively, in the COKE and MY COKE REWARDS trade marks, by posting on the website to which the Domain Name resolves pay-per-click and sponsored links to third-party websites. As previously noted, the Complainant's COKE trade mark benefited, at the time the Domain Name was registered, from significant renown and goodwill. Besides, the Domain Name registered by the Respondent is an almost identical reproduction of the Complainant’s MY COKE REWARDS trade mark, was registered four months after the Complainant's trade mark application filing date, and the Respondent's website to which the Domain Name resolves makes a reference to the Complainant's MY COKE REWARDS trade mark as well as an unauthorized "MyCokeR" link to the Complainant's "www." website. The Panel is therefore convinced that the Respondent has registered and is using the Domain Name in order to mislead customers to believe that the Complainant is in some way associated with the Respondent’s website. Such registration and use has been considered as constituting bad faith registration and use under paragraph 4(b)(iv) of the Policy. See, e.g., The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC, WIPO Case No. D2009-0057 and AMPO, S. COOP v. C, Taeho Kim, Philippine,WIPO Case No. D2009-0177.
Besides, the copy of the Respondent's domain name registrations provided by the Complainant shows that the Respondent has been engaging in a pattern of registering domain names containing trade marks, or being confusingly similar to trade marks, some of them being famous. Such domain names include, for instance, , , , , , , , , , , and . This clearly shows bad faith on the Respondent's part.
Moreover, a previous WIPO panel found under the PARL ("les Procédures Alternatives de reésolution de Litiges") for the ccTLD ".fr" that one domain name registered by the Respondent was identical or confusingly similar to another entity's trade mark (Directv, Inc. v Thi Thanh Nguyen,WIPO Case No. DFR2007-0035 (transfer of ). This is yet a further indication of bad faith on the part of the Respondent.
With regard to the Complainant's contention that the law of the United States should apply, in this Panel’s view the general rule is that where both parties and the registrar are not from one and the same jurisdiction, then only the Policy and Rules should apply. In any event, such contention would not have altered the Panel's assessment of registration and use in bad faith.
Under these circumstances, the Panel finds that the Domain Name was registered and is used in bad faith. 7. Decision
For 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.
David Taylor
Sole Panelist
Dated: August 31, 2011
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