The Complainant is The Coca-Cola Company of Atlanta, Georgia, United States of America (“US”), represented by Valea AB, Sweden.
The Respondent is Omer Faruk Bozdogan of Gaziantep, Turkey. 2. The Domain Name and Registrar
The disputed domain names and are registered with FBS Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2012. On July 25, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 26, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 27, 2012, the Center transmitted the language of the proceedings document to the parties in both English and Turkish. On July 31, 2012, the Respondent requested Turkish to be the language of the proceedings. On July 31, 2012, the Complainant requested English to be the language of the proceedings.
Given the provided submissions and circumstances of this case, the Center informed the Parties on August 8, 2012, that it would proceed as follows:
1) Accept the Complaint as filed in English;
2) Accept a response filed in either Turkish or English;
3) Appoint a panel familiar with both languages mentioned above, if available.”
The Center also notified the Parties that the power to decide the language of the proceedings lay with the Panel to be appointed.
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 August 8, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 28, 2012. The Respondent sent an informal email communication to the Center on July 31, 2012. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the panel appointment process on August 30, 2012.
The Center appointed Selma Ünlü as the sole panelist in this matter on September 10, 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 facts stated in the Complaint are as follows:
(1) The Complainant is a corporation organized and existing under the laws of the state of Delaware, US with a principal place of business in Atlanta Georgia, US;
(2) The Coca-Cola Company is a corporation which owns the COCA-COLA trademark throughout the world and licenses this trademark to Coca-Cola bottlers throughout the world;
(3) The COCA-COLA trademark and its variations are registered as a trademark and service mark in numerous jurisdictions. In particular and for the purposes of this administrative proceeding, the Complainant relies upon US trademark registration No. 0022406, dated January 31, 1893, European Union Community trademark registration No. 2091569 and Turkish trademark No. 6941 registered in 1926.
(4) The disputed domain names were registered on June 15, 2009.
Panel’s observation of the case file reveals the following:
(1) The disputed domain names are inactive and there was no content provided, when the Panel visited the Respondent’s websites on September 17, 2012. 5. Parties’ Contentions A. Complainant
The Complainant requests the Panel to issue a decision transferring the disputed domain names to the Complainant on the following grounds:
i. The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
ii. The Respondent has no rights or legitimate interests in respect of the disputed domain names;
iii. The disputed domain names were registered and are being used in bad faith. (i) Identity or Confusingly Similarity
The Complainant alleges that the disputed domain names are confusingly similar to the Complainant’s trademark COCA-COLA. The Complainant states that the disputed domain names wholly incorporate its COCA-COLA trademark and since the COCA-COLA trademark is worldwide famous, a reasonable Internet user would assume that the disputed domain names are associated with the Complainant. The Complainant refers to the Oki Data Americas, Inc. v. ASD Inc.,WIPO Case No. D2001-0903 which states that incorporation of a third party’s trademark in a domain name may be sufficient to establish identity or confusingly similarity for the purpose of the Policy.
Also, the Complainant refers to the Belo Corp v. George Latimer,WIPO Case No. D2002-0329 where the panel held that “it is well established that the generic top-level domain, in this case ‘.com’ must be excluded from consideration as being generic or functional component of the Domain Name”. Therefore, the Complainant states that for domain names incorporating trademarks and generic words as the mere addition of a generic term to a famous mark does not sufficiently distinguish the domain name from the complainant’s trademark in the minds of consumers.
Moreover, the Complainant alleges that, its trademark COCA-COLA is quite famous all around the world,and the well-known status of which was confirmed by previous UDRP panels. At this point, the Complainant refers to more than five UDRP decisions such as The Coca-Cola Company v. Gamlebyen Invest AS,WIPO Case No. D2000-1677, The Coca-Cola Company v. Neftali Gonzalez, WIPO Case No. D2001-0336, The Coca-Cola Company v. Raphael Taieb, WIPO Case No. D2001-0754 and etc.
Finally, the Complainant argues that the disputed domain names are visually, phonetically and conceptually confusingly similar to the Complainant’s trademark. (ii) Rights or Legitimate Interests
The Complainant asserts that the Respondent has no relationship with or authorization from the Complainant to use the COCA-COLA trademark in any domain name; that the Respondent had no prior rights or legitimate interests in the disputed domain names; and that the Respondent has not been commonly known by the disputed domain names.
The Complainant states that it has not licensed or otherwise permitted the Respondent to use its trademark. There is no relationship between the parties which would justify the registration of the disputed domain names by the Respondent. Also, no record, including the WhoIs information, suggests that the Respondent is commonly known by the disputed domain names.
Moreover, the Complainant states that, the Respondent cannot have been ignorant of the rights of the Complainant in the COCA-COLA trademark since even a simple search in Google clearly indicates the rights of the Complainant. At this point, the Complainant refers to The Coca-Cola Company v. Gamlebyen Invest AS,WIPO Case No. D2000-1677 and The Coca-Cola Company v. Raphael Taieb, WIPO Case No. D2001-0754. (iii) Registered and Used in Bad Faith
The Complainant indicates that the disputed domain names have been registered in bad faith. The Complainant mentions Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi, Ltd.) v. Click Consulting, Ltd.,WIPO Case No. D2007-0809 where the panel found that it “concurs with previous WIPO UDRP decisions holding that incorporating a widely-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements. As decided before, ‘knowledge of corresponding mark at the time of registration of the domain name suggests bad faith’ ”.
The Complainant notes that “[e]ven the absence of use of the disputed domain name amounts to passive holding, i.e. acting in bad faith”, referring to Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
Notwithstanding, the Complainant argues that, with reference to Exhibit O to the Complaint, the Respondent wanted to generate revenue by parking the disputed domain names. At this point the Complainant refers to a prior UDRP case Blue Cross and Blue Shield Association, Empire HealthChoice Assurance Inc. dba Empire Blue Cross Blue Shield and also dba Empire Blue Cross v. Private Whois Service/Search and Find LLC./Michigan Insurance Associates/4 Letter Domains Inc./New York Health Ins.,WIPO Case No. D2010-1699 which stated that domain name parking “is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant is using the domain name in this manner because of its similarity to a mark or name of another person in the hope and expectation that that similarity would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page. The confusion that is usually relevant here is the confusion that draws the Internet user to the respondent’s website in the first place ...”.
Furthermore, the Complainant asserts that the Respondent is in bad faith since it requested a compensation regarding the transfer of the disputed domain names which exceeded the Respondent’s out-of-pocket expenses. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceedings
The disputed domain names’ Registration Agreement is in Turkish and pursuant to the Rules, paragraph 11, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceedings shall be the language of the Registration Agreement. However, the Complainant submitted arguments along with the Complaint as to why the proceedings should proceed in English. The purpose of paragraph 11 of the Rules is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required and other relevant factors.
Given the provided submissions and circumstances of this case, the Center has notified the Parties that it would proceed as follows:
1) Accept the Complaint as filed in English;
2) Accept a response filed in either Turkish or English;
3) Appoint a panel familiar with both languages mentioned above, if available.
The Center also notified the parties that the power to decide the language of the proceedings lay with the panel to be appointed. The Center thereafter proceeded to issue its case-related communications to the parties both in English and Turkish.
It is understood from the available record that the Respondent and Complainant communicated regarding the sale of the disputed domain names to the Complainant. The reply email of the Respondent was written in English. Therefore, the Panel is of the opinion that the Respondent has enough knowledge of English as it was able to correspond with the Complainant in English.
Moreover, although the Center informed the parties regarding its decision on the language of the proceedings, the Respondent did not state that it cannot answer the allegations since it does not understand English. However, the Respondent stated before the notification of the present Complaint, that it does not have to know English and that therefore proceedings should be in Turkish.
The Complainant has submitted its Complaint and supporting evidence in English and, therefore, if the Complainant were required to submit all documents in Turkish, the administrative proceeding would be unduly delayed and the Complainant would have to incur substantial expenses for translation. Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel hereby decides, under paragraph 11 of the Rules, that English shall be the language of administrative proceedings in this case.
At this point, the Panel refers to Groupe Industriel Marcel Dassault, Dassault Aviation v. Mr. Minwoo Park, WIPO Case No. D2003-0989, Deutsche Messe AG v. Kim Hyungho,WIPO Case No. D2003-0679, Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191, and is of the opinion that both parties have been given a fair opportunity to present their case and there can be no unfairness to the Respondent given its competence in English. The Panel finds that in the circumstances of this case, paragraph 11 of the Rules is best served by allowing the proceedings to be conducted in English. 6.2 Substantive Elements of the Policy
According to paragraph 15(a) of the Rules, the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:
(i) The disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) The disputed domain names have been registered and are being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant has the burden of proving that all of these requirements are fulfilled. A. Identical or Confusingly Similar
The test for identity or confusing similarity under the Policy, paragraph 4(a)(i) is typically limited in scope to a direct comparison between a trademark and the textual string which comprises a domain name. In this case, the Complainant has demonstrated registered trademark rights in the mark COCA-COLA. The disputed domain names are combinations of two separate terms “cocacola” and “dünyası”. “Dünyası” means “the world of” in Turkish and “cocacola” is the most distinctive part of the disputed domain names to the Panel.
Since the Complainant and its trademark is widely well-known, the “dunyası” phrase, which means “world of” in Turkish is rather fitted to strengthen the impression that the disputed domain names belong to or are affiliated with the Complainant.
Based on the evidence submitted by the Complainant, the Panel finds that the Complainant has successfully proven its rights in the COCA-COLA trademark. The Complainant has had a trademark registration for the “cocacola” term since 1893, well before the registration date of the disputed domain names.
One of the disputed domain names contains the COCA-COLA trademark of the Complainant’s (with a hyphen) and the word “dunyası”, while the other disputed domain name is the same except for the hyphen. This Panel agrees with the approach taken in similar cases Sanofi-Aventis v. Gideon Kimbrell,WIPO Case No. D2010-1559; Turkcell Iletisim Hizmetleri A.S. v. Vural Kavak,WIPO Case No. D2010-0010; Greenbrier IA, Inc. v. Moniker Privacy Services/Jim Lyons;WIPO Case No. D2010-0017 and Zodiac Marine & Pool, Avon Inflatables Ltd and Zodiac of North America Inc. v. Mr. Tim Green,WIPO Case No. D2010-0024 where the respective UDRP panels found that adding descriptive words does not remove the likelihood of confusion between a trademark and a domain name incorporating said trademark.
In similar cases, previous UDRP panels have found that neither the beginning of the URL (i.e. “http://”), nor the generic top-level domain (gTLD) have any distinguishing significance under the Policy and do not typically remove the likelihood of confusion between a trademark and a domain name incorporating said trademark. See, Orbis Holdings Limited v. Lu A Feng (First Respondent) and Orbis Search (Second Respondent),WIPO Case No. D2007-0515 and The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. 95491. Therefore, the Panel is of the opinion that the suffix “.com” has no significance under this element.
The Panel accepts that the disputed domain names incorporate the trademark COCA-COLA in its entirety. Addition of the word “dunyası” does not create distinctiveness, but on the contrary further creates confusing similarity between the disputed domain names and the Complainant’s mark. Also in this context the Panel notes that the suffix “.com” has no significance as well.
Hence, the Panel is of the opinion that the requirement of paragraph 4(a)(i) of the Policy is met by the Complainant. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy states that a respondent may establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [the Respondent] 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 [the Respondent] (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 [the Respondent] 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.
The burden of proof is on the Complainant to demonstrate a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain names. Once the Complainant has made out a prima facie case, then the Respondent may, by, inter alia, showing one of the above circumstances, demonstrative rights or legitimate interests in the disputed domain names.
In the light of the evidence submitted, e.g., trademark registration certificates, domain name registrations, etc., it is clear to the Panel that the Complainant has earlier rights in the COCA-COLA trademark. Therefore, the Panel finds on the current record that the Complainant has proved rights in the COCA-COLA trademark and also established a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name for the purposes of the Policy. The Complainant has not granted the Respondent any right or license to use the COCA-COLA trademark and the Respondent is not an authorized service provider for COCA-COLA products.
Also the well-known reputation of the Complainant’s trademark has been confirmed in previous UDRP decisions, for example: The Coca-Cola Company v. Laura Prusinowski,WIPO Case No. D2007-0480, The Coca-Cola Company v. Tony Williams, WIPO Case No. D2007-0479, The Coca-Cola Company v. Keren, Chen,WIPO Case No. D2008-1852 and etc.
Consequently, in the absence of a response, the Panel accepts the Complainant’s allegations as true that the Respondent has no authorization to use the COCA-COLA trademark in the disputed domain names.
Hence, as the Complainant has made out its prima facie case, and as the Respondent has not demonstrated any rights or legitimate interests as illustrated under paragraph 4(c) of the Policy, nor has the Panel found any other basis for finding any rights or legitimate interests of the Respondent in the disputed domain names, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain names in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain names’ 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 the Respondent’s documented out-of-pocket costs directly related to the disputed domain names; or
(ii) the Respondent has registered the disputed domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain names, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on respondent’s website or location.
By consideration of the foregoing, the Panel is of the opinion that due to the earlier rights of the Complainant in the trademark COCA-COLA, as well as its extensive and intensive usage, the Respondent, who appears to be located in Turkey, was aware of the Complainant and its COCA-COLA trademark. See e.g., Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; General Electric Company v. CPIC NET and Hussain Syed,WIPO Case No. D2001-0087. Referring to Parfums Christian Dior v. Javier Garcia Quintas and C,WIPO Case No. D2000-0226 the Panel believes that the awareness of the Complainant’s trademark at the time of the registration of the disputed domain names is to be considered an inference of bad faith registration.
In light of the evidence submitted, the Panel is convinced that the Respondent has passively held the disputed domain names and is engaging in no activity. “Passive holding” has been accepted as a sufficient bad faith indicator in a number of previous UDRP cases. As it is well-reasoned in the case of Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, “inaction […] can, in certain circumstances, constitute a domain name being used in bad faith.” Also, the panel refers to Compaq Computer Corporation v. Boris Beric,WIPO Case No. D2000-0042 and VEDA GmbH v. Mr. Nicholas Silverstone, WIPO Case No. D2002-1040.
The Respondent failed to show evidence of having rights or legitimate interests in the disputed domain names. Moreover, according to the evidence on record, it is understood that further to the request of the Complainant regarding the transfer of the domain names, the Respondent offered to transfer the disputed domain names in return for payment. The Complainant alleged and offered evidence of the Respondent requesting payment for the disputed domain names (which the Complainant alleges to be in excess of out-of-pocket costs), and the Respondent did not answer this allegation. As it is indicated in Annex D to the Complaint, the email dated June 25, 2012, sent by the Respondent reveals that the Respondent expressed its willingness to transfer the disputed domain names in return of payment but the amount was not stated in that email and the Panel does not have any other information provided by the Complainant regarding the transfer of money.
Consequently, the Panel is of the opinion that:
(i) the Respondent did not offer any response and remained in default;
(ii) the Complainant’s trademark has a strong reputation and is well-known all around the world, including in Turkey;
(iii) the Respondent has not provided any evidence of good faith registration of use of the disputed domain names; instead, the Respondent offered to transfer the disputed domain names in return for payment.
Based on this submission and the facts, the Panel considers that the disputed domain names were registered primarily for the purpose of transferring them to the owner of the trademarks for valuable consideration in excess of the Respondent’s out-of-pocket costs. See e.g., Telefonaktiebolaget L.M Ericsson v. iNuntius Inc.,WIPO Case No. D2005-0732.
Therefore, in light of the above-mentioned conditions of the present case, the Panel is convinced that the disputed domain names have been registered and are being used in bad faith and that the Complainant has established the third element under paragraph 4(a)(iii) of the Policy. 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 names and be transferred to the Complainant.
Selma Ünlü
Sole Panelist
Dated: September 24, 2012
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