Complainant is The Coca-Cola Company of Atlanta, Georgia, United States of America, represented by Simmons & Simmons, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).
Respondent is Telex Departments of Harker Heights, Texas, United States of America / PrivacyP of Nobby Beach, Queensland, Australia. 2. The Domain Name And Registrar
The disputed domain name is which is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 31, 2013. On November 1, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 4, 2013, the Registrar transmitted by email to the Center its verification response disclosing the 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 November 5, 2013, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 8, 2013.
The Center verified that the amended 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 November 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 1, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 2, 2013.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on December 9, 2013. This Panel finds that it was properly constituted. This 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 has rights over the COKE trademark for which it holds several trademark registrations, such as: registration No. 0620845 with the Intellectual Property Office of the United Kingdom, registered on November 4, 1942 in class 32; registration No. 0415755 with the United States Patent and Trademark Office, registered on August 14, 1945 in class 32; registration No. 1436191 with the United States Patent and Trademark Office, registered on April 14, 1987 in classes 6, 8, 9, 11, 14, 16, 18, 20, 21, 24, 25, 26, 27, 28 and 34; and registration No. 002091940 with the European Office of Harmonization in the Internal Market, registered on December 12, 2005 in classes 5, 8, 11, 14, 16, 18, 20, 24, 25, 26, 27, 29, 30, 32, 33, 34, 38 and 42.
The disputed domain name was created on August 27, 2013. 5. Parties’ Contentions A. Complainant
Complainant’s assertions may be summarized as follows:
The beverage Coca-Cola was invented in 1886 in Atlanta, Georgia, United States of America. Coca-Cola beverages have also been known as Coke for many years. Many of Complainant’s cola beverages have contained the word Coke, including Coke, Diet Coke, Coke Light, Cherry Coke, Coke Zero, Coke Blak and Vanilla Coke. The COKE mark was first used in commerce on December 10, 1941, in the United States of America and that use expanded around the world. Complainant first registered the word Coke in the United Kingdom in 1942. Since that time, Complainant has become the owner of a large number of registrations around the world that consist of or contain the word Coke for a broad range of goods and services.
Complainant’s reputation has been independently assessed and demonstrated by numerous consumer surveys and market reports. For example, the respected independent brand valuation consultancy Interbrand has ranked COCA-COLA and its associated brands such as COKE and DIET COKE as the world’s most valuable global brand every year between 2001 and 2012. Other independent brand valuers apart from Interbrand, such as Superbrands, have also ranked COCA-COLA and its associated brands such as COKE and DIET COKE as one of the world’s most valuable brands.
Respondent is conducting a false promotion called the “Coca Cola Live International Post code Draw” (the “Promotion”). The Promotion makes false claims that the recipient of a letter has won £950,000, in a draw that has been organised by Complainant (copy of the letter as Annex 6 to the Complaint). The Promotion states that the recipient will not be able to receive the winnings until personal details have been sent to an email address [...]@ (the “Account”). The Account appears to be being used for the purposes of collecting personal details from unsuspecting members of the public who have been deceived into believing that they have won large sums of money. Respondent is therefore using the disputed domain name for unlawful conduct.
The disputed domain name wholly contains the word Coke. It is therefore highly similar to, and wholly incorporates, Complainant’s mark. The phrase “UK” refers to a geographic location; it is not particularly distinctive for any goods or services and therefore does nothing to distinguish the disputed domain name and the COKE mark. A number of previous UDRP panel decisions have found that the combination of the word Coke with another generic term in a domain name results in confusing similarity to Complainant’s COKE mark.
Complainant submits that Respondent has no legitimate interests or rights in the disputed domain name.
The disputed domain name does not resolve to a website or other online presence. There is therefore no evidence that Respondent has: (i) used, or made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services; (ii) been commonly known by the disputed domain name; or (iii) made a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain or to misleadingly divert consumers or to tarnish Complainant’s COKE mark.
There is no legal or business relationship between Complainant and Respondent which would give rise to any (i) license, permission or authorisation for Respondent to use the disputed domain name, or (ii) legitimate use of the word Coke by Respondent or explicable reason as to why Respondent chose the disputed domain name.
There is no evidence to suggest that a website or other on-line presence is in the process of being established which will use the disputed domain name.
The COKE mark is inextricably linked in the minds of consumers to Complainant. The disputed domain name was registered many years after Complainant established its rights in the COKE mark through use and registration, and in full knowledge of these rights. The disputed domain name was merely registered for the purpose of trading off Complainant’s well known COKE mark.
Respondent is not a licensee of Complainant, and the latter has never consented to the registration or use of the disputed domain name by Respondent.
Complainant submits that, at the time the disputed domain name was registered, it was, and remains, without doubt that Respondent (i) knew of Complainant’s business and its COKE marks and (ii) registered and is using the disputed domain name in bad faith.
The disputed domain name was registered by Respondent on August 27, 2013. At this time, Complainant had been the owner of the registered mark COKE for almost seventy years and had an extensive reputation through its worldwide use of COKE and other COKE related marks.
The disputed domain name does not resolve to a website or other online presence. Previous UDRP panel decisions have found that passive holding of a domain name has amounted to the respondent acting in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Although the disputed domain name does not resolve to a website or other online presence, Respondent does use the Account, as a result of having registered the disputed domain name, to conduct fraudulent activities designed to deceive persons for Respondent’s commercial gain by misleadingly associating Respondent with Complainant. Such activity goes further than the type of online inactivity that the panel inWIPO Case No. D2000-0003, supra, considered could constitute bad faith.
The disputed domain name is registered to PrivacyP, a domain privacy service. Whilst there may be legitimate reasons for a domain name registrant to employ a domain privacy service, registrants remain responsible for the lawful use of their domain names.
In the present case, Respondent is deceiving the unsuspecting public into believing that they have won large sums of money from Complainant, and is using Complainant’s trademark to lend legitimacy to the scam promotion. Respondent is therefore in breach of paragraph 2 of the Policy, as (i) the registration of the disputed domain name has infringed upon and violated the rights of Complainant, (ii) the disputed domain name is being used in connection with an unlawful purpose, and (iii) Respondent is knowingly using the disputed domain name in violation of the law.
Given that the disputed domain name website is not accessible and has not been used for a legitimate commercial purpose since the date of registration, and that Complainant has a vast reputation in the COKE mark, the only reasonable inference that can be drawn is that the disputed domain name was registered and is being used in bad faith with a view to attracting Internet users for commercial gain by engaging them in the scam, and by creating a likelihood of confusion with Complainant’s COKE mark as to the source, sponsorship, affiliation, or endorsement of the Promotion in breach of paragraph 4(b)(iv) of the Policy.
Further, given Complainant’s reputation in the COKE mark in relation to its sparkling non-alcoholic drinks, use of COKE in the disputed domain name would be unfairly detrimental to Complainant: (i) people or businesses would be confused into believing that it is registered to, operated or authorised by, or otherwise connected with, Complainant, (ii) the exclusive association of COKE in relation to carbonated non-alcoholic drinks with Complainant would be damaged, and (iii) the use would take unfair advantage of, and capitalise on, Complainant’s rights in COKE.
Complainant requests that the disputed domain name be transferred to Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion And Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
As regards who is the proper Respondent in this case, pursuant to paragraph 1 of the Rules “Respondent means the holder of a domain-name registration against which a complaint is initiated”. The Complaint filed with the Center on October 31, 2013, named PrivacyP as respondent. A printout of the corresponding WhoIs attached to the Complaint showed PrivacyP as the registrant of the disputed domain name. At the Center’s request, the Registrar sent its registrar verification on November 4, 2013, disclosing Telex Departments as the sole registrant of the disputed domain name, and thus on November 8, 2013, Complainant filed an amended Complaint adding Telex Departments as respondent. Due to the above, this Panel decides to have Telex Departments as the proper respondent and thus further references to Respondent herein shall be understood to Telex Departments1.
The lack of response from Respondent does not automatically result in a favorable decision for Complainant2. The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that 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
It is undisputed that Complainant has rights over the COKE trademark.
The disputed domain name entirely incorporates the COKE trademark, adding the suffix “-uk”. Such suffix might well be understood as a geographic descriptor since it corresponds to the widely-used acronym of “United Kingdom”. The addition of such suffix is not enough to avoid similarity nor does it add anything to avoid confusion with Complainant’s trademark. Prior UDRP panel decisions support this Panel’s view (Cfr. America Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713; The Coca-Cola Company v. Tantamount Property Trust,WIPO Case No. D2001-0327; Revlon Consumer Products Corporation v. Jose Gilson de Almeida,WIPO Case No. D2010-1189).
Therefore, this Panel finds that the disputed domain name is confusingly similar to Complainant’s COKE trademark. B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant asserts that there is no business relationship between Complainant and Respondent, that it has not authorized Respondent to make any use of Complainant’s COKE trademark and that Respondent is not commonly known by the disputed domain name.
Complainant contends that there is no active website to which the disputed domain name resolves, and that Respondent is using the disputed domain name as an email address in fraudulent correspondence.
The evidence in the file (annex 6 to the Complaint) consists of a letter whose letterhead shows Complainant’s name and a street address at London, United Kingdom, which is substantially similar to the street address provided by Complainant in the contact details section of the Complaint. Such letter requests personal information of the addressee to be sent to the Account in order to receive a prize. It seems to this Panel that the disputed domain name is being used (through the Account) to impersonate Complainant in order to deceive third parties. Such use demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.
This Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name3. In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to a possible right or legitimate interest in the disputed domain name by Respondent, but rather the opposite may be validly inferred.
Thus, this Panel finds that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith, which Respondent chose not to rebut.
Taking into consideration that Complainant’s use and registration of the COKE trademark preceded the creation of the disputed domain name by a number of years, Complainant’s worldwide presence, the international recognition of Complainant’s COKE trademark and the content of the letter referred to above, this Panel is of the view that Respondent must have been fully aware of the existence of Complainant and its trademark at the time Respondent registered the disputed domain name.
The concept of a domain name “being used in bad faith” is not limited to a domain name with an active website on the Internet4. This Panel considers that use of the disputed domain name as an email address showed in correspondence, which correspondence seems intended to deceive third parties and through which Complainant is impersonated, constitutes enough evidence of bad faith5.
In addition to the above, there are other factors in this case that, in the aggregate, lead to no other conclusion: (i) Complainant’s trademark is well known worldwide, as evidenced by its prolonged and international use, (ii) Complainant’s trademark has been registered since at least 1942, that is, 70+ years before the registration of the disputed domain name, (iii) the disputed domain name wholly incorporates Complainant’s trademark, with just the addition of an irrelevant suffix, (iv) Respondent is using Complainant’s trademark in the disputed domain name without Complainant’s authorization, and (v) Respondent’s failure to participate in this proceeding.
In light of all the above, this Panel finds that Complainant has satisfied 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, this Panel orders that the disputed domain name be transferred to Complainant.
Gerardo Saavedra
Sole Panelist
Date: December 23, 2013
1 The use of privacy service providers, the disclosure of underlying registrants and the determination of the proper respondent have been dealt with in several UDRP panel decisions. For instance, see The iFranchise Group v Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658],WIPO Case No. D2007-1438; and Costco Wholesale Corporation and Costco Wholesale Membership, Inc., v Yezican Industries and Domains By Proxy, Inc.,WIPO Case No. D2007-0638.
2 See Berlitz Investment Corp. v. Stefan Tinculescu,WIPO Case No. D2003-0465, where it is established: “the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
3 See Intocast AG v. Lee Daeyoon,WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given [...] Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”.
4 See Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055.
5 See BinckBank N.V. v. Helo Holdings LTD,WIPO Case No. DNL2010-0014: “Respondent in the present case apparently targeted Dutch students by pretending to be the Complainant and sending them an offer from an e-mail address associated with the Domain Name, with the objective of acquiring personal data. Phishing activities pose a severe threat to customers, trademark holders and third parties”. Also Desarrollo Marina Vallarta, S.A. de C.V. / Daniel Jesus Chavez Moran v. Karla Vallejo,WIPO Case No. D2013-0962.
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