The Complainant is The Coca-Cola Company of Georgia, United States of America, represented by Parks IP Law LLC, United States of America.
The Respondent is Private Whois , c/o of Nassau, Bahamas. 2. The Domain Name and Registrar
The disputed domain name (the Domain Name) is registered with I Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2012. On March 12, 2012, the Center transmitted by email to I Corp a request for registrar verification in connection with the Domain Name. On March 16, 2012, I Corp 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 March 19, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 8, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 10, 2012.
The Center appointed Jon Lang as the sole panelist in this matter on April 24, 2012. 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 world’s largest beverage company and owns a large number of sparkling and still brands, amongst them being Coca-Cola, commonly referred to as Coke. Since at least as early as 1941, the Complainant has offered its beverages and related products and services in the United States and internationally under the brand Coke. The Complainant has spent billions of dollars advertising and promoting its products and services identified by the Coke brand in the United States and elsewhere and owns several trademark and service mark applications and registrations (for COKE) around the world, including the Bahamas where the Respondent is based. An early example is US trademark registration 415,755 with a registration date of August 14, 1945. Another is the Bahamian registration, number 1163, dated February 6, 1943.
In 2006, the Complainant launched “My Coke Rewards”, a customer loyalty incentive program in which participants enter codes, found on packages of the Complainant’s products, on a website. The codes are converted into points redeemable for merchandise, discounts, or cash prizes. In connection with the “My Coke Rewards” program, the Complainant created and registered the domain name in May 2005. The Complainant also owns trademark and service mark applications and registrations that consist of or contain MY COKE REWARDS which it uses in the United States in connection with its beverages, related products and services, and customer loyalty incentive program. An example is US Registration number 3,326,653 for MY COKE REWARDS, (registration date of October 30, 2007) which the Complainant applied for on (and has priority from) September 16, 2005.
The Domain Name was registered on October 19, 2006 5. Parties’ Contentions A. Complainant The Domain Name is identical or confusingly similar to the Complainant’s marks
The Domain Name is virtually identical to the MY COKE REWARDS marks and the Complainant’s domain name registration, except for the removal of the “e” in “rewards” which does not serve to distance the Domain Name from the COKE and MY COKE REWARDS marks. The Domain Name could not refer to, or be meant to refer to, anyone other than the Complainant. The Respondent’s inclusion of the MY COKE REWARDS mark in the Domain Name creates a strong likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the Domain Name and associated website, by the Complainant. The Respondent has no rights or legitimate interests in the Domain Name
The Respondent has no affiliation with the Complainant or its business, or with the Complainant’s products or services and is not known or identified by the name “Coke” or “My Coke Rewards”.
The Respondent does not operate a legitimate business or other organisation commonly known as “Coke” or “My Coke Rewards.”
The Respondent has no rights or legitimate interests in the marks COKE or MY COKE REWARDS.
The Respondent is using the Domain Name to attract Internet users seeking information regarding the Complainant’s products and services, and the website located at , thereby diverting customers from the Complainant.
The Respondent has used the Domain Name as a ‘phishing’ site to mislead consumers into providing personal information, and for the Respondent’s commercial gain. The website associated with the Domain Name ‘redirects to , where a consumer receives a notification advising, “Congratulations! You are the Georgia winner for [date]. Please select a prize and enter your email on the next page to claim”.
…..Upon clicking “ok,” the consumer is taken to another web page, wherein the consumer clicks on one of several alleged prizes and provides his/her email address and shipping information……To win a prize, however, the consumer must complete the program requirements, which include “completing two reward offers from each of the Silver and Gold reward offer page options and nine reward offers from the Platinum reward offer page options and refer 3 friends to do the same.” ….This page also advises that, “Completion of reward offers most often requires a purchase or filing a credit application and being accepted for a financial product such as a credit card or consumer loan.’ (paragraph 30 of the Complaint).
The Respondent’s program is designed to extract personal information from Internet users that could be used to defraud them. Additionally, at least one website has commented on the Respondent’s activities, calling the Respondent a “scammer.”
The Respondent is not making a legitimate non-commercial or fair use of the Domain Name but is using it to deceive and confuse Internet users for the sole purpose of commercial gain.
The Domain Name has never been used for any bona fide offering of goods or services.
The Domain Name was not registered until October 19, 2006, well after the Complainant had established rights in the COKE and MY COKE REWARDS marks.
The Respondent is not a licensee of the Complainant, nor is the Respondent otherwise authorized by the Complainant to use the COKE or MY COKE REWARDS marks or to apply for or use any domain name incorporating such marks. The Domain Name has been registered and is being used in bad faith
The Respondent does not conduct any legitimate commercial or non-commercial business under the COKE or MY COKE REWARDS marks.
The Respondent has registered the Domain Name to prevent the Complainant from using its marks in the corresponding domain name.
The Respondent has registered and used the Domain Name with full knowledge of the rights of the Complainant in and to the COKE and MY COKE REWARDS marks.
By registering the Domain Name, the Respondent is diverting consumers away from the Complainant’s websites and is disrupting the Complainant’s business. Substantial confusion could arise among Internet users trying to either reach the Complainant’s business or obtain information about the Complainant’s products and services.
By using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the COKE and MY COKE REWARDS marks (and the Complainant’s website) as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website appearing at , and of products and services advertised on that website.
The Respondent has been unjustly enriched by misappropriating the Complainant’s goodwill and creating a likelihood of confusion with the COKE and MY COKE REWARDS marks, at the expense of the Complainant.
The Respondent’s bad faith is further shown by the fact that it has registered or acquired multiple domain names, many of which have been the subject of UDRP proceedings. Most of these domain names are identical or confusingly similar to the marks of others, or dilutive of famous marks, including , , , , , , , , , The Respondent’s bad faith is also demonstrated by the fact that UDRP Panels have ruled against it many times concerning infringing domain names. The Respondent’s use of the Domain Name also amounts to infringement of the COKE and MY COKE REWARDS marks under the United States Lanham Act by creating a likelihood of confusion, or mistake, as to the affiliation, connection, or association of the Respondent with the Complainant and the COKE and MY COKE REWARDS marks, or as to the origin, sponsorship, or approval of the Respondent’s products or services by the Complainant. The Respondent’s use of the Domain Name is also diluting and weakening the unique and distinctive significance of the COKE and MY COKE REWARDS marks. The Respondent’s use of the Domain Name has caused and will continue to cause serious and irreparable injury and damage to the Complainant and to the goodwill associated with Complainant and its COKE and MY COKE REWARDS marks. Moreover, the Respondent’s conduct violates US federal law relating to cyberpiracy, trademark infringement, trademark dilution and unfair competition. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that a respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements. A. Identical or Confusingly Similar Clearly, the Complainant has ‘rights’ in its own trademarks for the purposes of the Policy. The Domain Name incorporates the Complainant’s mark COKE in its entirety, and also the MY COKE REWARDS mark except for the ‘e’ in the word, ‘rewards’. As the mark and Domain Name are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity involves a comparison between the trademark and the domain name to determine likelihood of Internet user confusion. To satisfy the test, the trademark to which the domain name is said to be confusingly similar would generally need to be recognisable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent Internet user confusion. Application of the confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the domain name. Clearly the mark COKE is readily recognisable within the domain name and very much its dominant element and the Panel is satisfied that is confusingly similar to the Complainant’s trademark, COKE. As to the Complainant’s mark, MY COKE REWARDS, the Domain Name is virtually identical, the Respondent having registered a misspelling, perhaps a common one, of the Complainant’s mark. In any event, the Domain Name is clearly a derivation of the Complainant’s MY COKE REWARDS mark and seems to be a clear example of “typosquatting”, being designed to “capture” Internet users looking for the online location of the Complainant. As Section 1.10 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") makes clear, a domain name ‘which contains a common or obvious misspelling of a trademark normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name’. This is clearly the case here and the Panel holds that the Domain Name and the MY COKE REWARDS mark (and the COKE mark) are confusingly similar and that accordingly this element of paragraph 4 of the Policy has been established. B. Rights or Legitimate Interests By its allegations in the Complaint, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with appropriate arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent lacks rights or legitimate interests in the Domain Name. Nevertheless, it is perhaps appropriate to deal with rights and legitimate interests (or the absence thereof) in a little more detail. A respondent can show it has rights to or legitimate interests in a domain name in various ways even where, as is the case here, it is not licensed by or affiliated with the complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers. A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. Here, however, the Respondent is not known by the Domain Name. Moreover, it would appear that the Respondent is using the Domian Name to engage in phishing activities which cannot constitute rights or legitimate interests in the Domain Name to which such activities are connected. In Saudi Arabian Oil Company v. PrivacyP / James Deavers,WIPO Case No. D2012-0137, it was said “Respondents proposed a service through which one can become a member of the website and proceed to a deposit, It is likely that through this online form Respondents obtained confidential information like credit card numbers and personal identification numbers thanks to which they derived some economical profits. It goes without saying that this behavior is not a bona fide offering of goods or services. In providing such a service, Respondents have committed what is referred to as phishing. Phishing cannot be deemed as being a bona fide offering of goods and services (see Australia and New Zealand Banking Group Limited v. Bashar Ltd.,WIPO Case No. D2007-0031, portraying phishing as aiming at “stealing valuable information from visitors to the website and has become a serious problem”). In the age of the Internet, phishing has become a real plague. The Panel finds that Respondents’ attempt to pass itself off as Complainant shows that Respondents are making neither a bona fide offering of goods or services under the Policy nor a legitimate noncommercial or fair use of the disputed domain name under paragraph 4(c) the Policy.” It would be difficult to conclude that the Respondent does not derive a commercial benefit from the use to which the Domain Name has been put. It could not be said therefore that the use made of the Domain Name was non-commercial, or that it was ‘fair’, or without intent to mislead, particularly given that it is likely (in the absence of any alternative explanation) that the very purpose in the Respondent choosing the Domain Name it did was to deliberately create a false impression of association with the Complainant. In Drexel University v. David Brouda,WIPO Case No. D2001-0067, the panel stated that “rights or legitimate interests cannot be created where the user of the domain name at issue would not choose such a name unless he was seeking to create an impression of association with the Complainant”. That seems to be the case here. Moreover, the Domain Name, which on the face of it appears to be used for, or connected with phishing activities, (an allegation that has not been challenged), and which so obviously takes advantage of the fame of the mark to which it is confusingly similar, is unlikely ever to amount to use in connection with a bona fide offering of goods or services. There is no evidence before this Panel that the Respondent has rights or legitimate interests in the Domain Name. The Respondent has not come forward with a Response or taken any other action to address the Complaint. The contentions of the Complainant by which it has made out a prima facie case that the Respondent has no rights or legitimate interests have not been contradicted or challenged, or cast into doubt by the brief analysis set out above. In fact it appears likely that there is little the Respondent could say that could justify its use. Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith It seems very likely that the Respondent was aware of the Complainant’s trade marks at the time of registration of the Domain Name. The Complainant had registered the domain name and applied for the trade mark, MY COKE REWARDS by the time the Respondent registered the Domain Name. In any event, it would be extremely unlikely that the Respondent was unaware of the Complainant’s COKE mark at the time of registration of the Domain Name. One way a complainant may demonstrate bad faith registration and use, is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. It matters not that once the Internet user arrives at the website, it is immediately clear, for whatever reason, that it is unconnected with the trademark owner. The Internet user will have been confused, at least initially, as to the relationship between the website and trademark owner and that is enough to establish bad faith. This is the case in this instance. Additionally, it has been held by past UDRP panels that where a Domain Name has been used, or connected with phishing activities, a finding of bad faith will follow. For instance in Confédération Nationale du Crédit Mutuel v. Daniel Delcore, WIPO Case No. DLC2009-0001, it was said that “Phishing” is a form of Internet fraud that aims to steal valuable information such as credit cards, social security numbers, user ids, passwords, etc Additionally the Panel believes that “phishing” in this current instance would amount to bad faith as affecting or tarnishing the image of the organization whose name, website design and layout has wrongly been used. (See also National Association of Software and Service Companies v. Ajay Sood (2005) F.S.R. 38, quoted under Banca Intesa S.p.A. v. Moshe Tal, WIPO Case No. D2006-0228).” Whatever the precise use made of data ultimately collected as a result of Internet users landing on the website to which the Domain Name resolves, the use made of the Domain Name is not one that the Complainant would wish to be associated with. However, because of the confusing similarity between the Complainant’s marks and the Domain Name, the Complainant may well be so associated. For this reason too, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith. Given the Panel’s findings, there is little need to consider what if any further grounds there might be to support a finding of bad faith registration and use. 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. Jon Lang
Sole Panelist
Dated: May 2, 2012
Full & Egal Universal Law Academy