Complainant is The Coca-Cola Company of Atlanta, Georgia, United States of America, represented by Parks IP Law LLC, United States.
Respondents are PrivacyP of Nobby Beach, Queensland, Australia and N/A, Stephen Chukwumaobim of Owerri, Imo, Nigeria (hereinafter referred to as “Respondent”). 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2012. On May 24, 2012, the Center transmitted by email the Registrar a request for registrar verification in connection with the disputed domain name. On May 24, 2012, the Registrar 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 Complainant on May 29, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on June 5, 2012.
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 Respondent of the Complaint, and the proceedings commenced on June 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 26, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 27, 2012.
The Center appointed Halvor Manshaus as the sole panelist in this matter on June 28, 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
Complainant, an American company, is the world’s largest provider of beverages and soft drinks, with an estimated 1.8 billion servings of its products consumed daily in more than 200 countries.
Complainant is the owner of a large number of trademark registrations worldwide, including the marks COCA COLA and COKE. The “Coca Cola” beverage, popularly referred to as “Coke”, is amongst the world’s most famous products and brands. Complainant has used the mark COCA COLA since 1887, and the mark COKE since 1941. Additionally, Complainant owns and uses the domain name , which redirects web users to its main website at “”.
Respondents are PrivacyP of Nobby Beach, Queensland, Australia and N/A, Stephen Chukwumaobim of Owerri, Imo, Nigeria. 5. Parties’ Contentions A. Complainant
Complainant holds that the disputed domain name is identical or confusingly similar to Complainant’s mark COKE.
Further, Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name. The mark COKE is uniquely associated with Complainant and its products. No other individual or entity has the right to use the mark. Respondent is not known as, and does not trade under the name COKE, nor is Respondent in any way affiliated with or connected to Complainant. Complainant has never given Respondent any license or right to use the mark COKE. Additionally, Respondent is not making a legitimate fair use of the mark COKE.
Moreover, Complainant holds that the disputed domain name was registered and is being used in bad faith. Respondent has registered the disputed domain name 70 years after Complainant first started using its mark COKE in commerce, in full knowledge of Complainant’s rights to the mark COKE. Although the website corresponding to the disputed domain name is not currently active, it has been used in connection with fraudulent phishing activities, where Complainant’s customers have been contacted via text message and told that they have won prizes. By registering and using the disputed domain name, Respondent is diverting customers away from Complainant’s official websites, by attracting, for commercial gain, Internet users to its website by creating a likelihood of confusion between the mark COKE, the website , and Respondent’s website. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant has demonstrated its rights to the mark COKE through both the registration and long lasting use of the mark. The disputed domain name incorporates in full the mark COKE.
Previous UDRP decisions state that the mere addition of generic or common terms such as “redemption” to a registered trademark may be insufficient to avoid confusing similarity between a domain name and the trademark of a complainant. See F. Hoffmann-La Roche AG v. Private Whois ,WIPO Case No. D2012-0089; Siemens AG v. Private Registration Aktien Gesellschaft,WIPO Case No. D2011-1163; Swarovski Aktiengesellschaft v. Kimi DeLuca,WIPO Case No. D2007-0252; PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696; PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services,WIPO Case No. D2001-0174; and Parfums Christian Dior v. 1 Netpower, Inc.,WIPO Case No. D2000-0022. The Panel finds such to be the case in the present circumstances.
Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant's trademark. B. Rights or Legitimate Interests
Complainant has demonstrated its exclusive rights to the mark COKE. Complainant has never granted Respondent any permission, license, authorization or consent to use COKE in the disputed domain name. The Panel is satisfied on the evidence that Respondent does not trade under, nor is Respondent commonly known as, any name in which the mark COKE is incorporated. It follows from previous UDRP decisions that it is sufficient for a complainant to make a prima facie showing of its assertion under paragraph 4(a)(ii) of the Policy, see the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1. The presented evidence and circumstances referred to by Complainant is, in the Panel’s view, sufficient to establish a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel therefore, on the basis of the available record, concludes that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel notes that the website corresponding to the disputed domain name does not, at the time of writing, have any active content of any kind. However, a passive holding of a domain name does not prevent a finding of bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and Novo Nordisk A/S v. CDMS Invest,WIPO Case No. D2012-0676, in which the Panel found that such passive holding, under the totality of circumstances of the case, can indeed constitute a bad faith use under the Policy.
It is not doubtful that Respondent was aware of Complainant’s famous name and mark COKE at the time of the registration, as the mark COKE is one of the world’s most famous marks. In addition, the Panel notes Complainant’s unrebutted assertion that Respondent contacted Complainant’s customers in a phishing scam, claiming that the customers had won prizes through a competition sponsored by Complainant, thus tarnishing the name of Complainant. The Panel finds that the disputed domain name was registered as to attempt to attract Internet users to Respondent’s site or on-line location for commercial gain by creating a likelihood of confusion with Complainant’s mark.
The Panel concludes that the passive holding of the disputed domain name, under the circumstances, constitutes a bad faith use, putting emphasis on the following:
- Complainant’s trademark has a strong reputation and is well known globally;
- Respondent has failed to present any evidence of any good faith use with regard to the disputed domain name;
- the disputed domain name is identical with Complainant’s name and trademark, and is thus suited to divert or mislead potential web users from the website they are actually trying to visit (Complainant’s site);
- the site was originally set up in order to achieve commercial gain through an illicit phishing scam.
The Panel also notes that PrivacyP has been named as Respondent in over 250 UDRP proceedings before WIPO, and has had several rulings against it. See Dolce & Gabbana S.r.l. v. PrivacyP / Chen Jianglei,WIPO Case No. D2011-1765.
Thus, the Panel finds that the disputed domain name has been registered and is being 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 disputed domain name be transferred to Complainant.
Halvor Manshaus
Sole Panelist
Dated: July 9, 2012
Full & Egal Universal Law Academy