The Complainant is The Coca-Cola Company of Atlanta, Georgia, United States of America (“US”), represented by Simmons & Simmons, United Kingdom of Great Britain and Northern Ireland (“UK”).
The Respondent is Frank Rasile of Fremont, California, US 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2014. On March 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 27, 2014, 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.
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 April 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 23, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 24, 2014.
The Center appointed Nicholas Smith as the sole panelist in this matter on May 13, 2014. 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 owner of an extensive reputation and goodwill in the COKE mark and associated marks for beverages. The beverage Coca-Cola was invented in 1886 in Atlanta, Georgia, US. The Coca-Cola beverages have also been known as Coke for many years. The Complainant has gained a global reputation in the COKE mark which is of considerable depth and breadth. The independent brand valuation consultancy Interbrand has ranked COCA-COLA and its associated brands such as COKE and DIET COKE as the third most valuable global brand in 2013, with an estimated value of USD 79.21 million.
The Complainant is the owner of a number of trademarks consisting of the word “Coke” (the “COKE Mark”), in jurisdictions across the world. In particular the Complainant is the owner of US registration no. 415755 for COKE in Class 32 filed on March 27, 1944 and UK registration no. 620845 for COKE in Class 32 filed on November 4, 1942.
The Domain Name was registered on January 25, 2014. The Domain Name is currently inactive but prior to the commencement of the proceeding resolved to a website (the “Respondent’s Website”), which featured photos of a Coca-Cola bottle and images of the COKE Mark as part of a broader website titled “Coca-Cola Promo” which appeared to be part of the administration of a Coca-Cola related promotion. The Complainant has no connection to the promotion and the Respondent’s Website has been listed on third-party websites as a fraudulent website. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s COKE Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the COKE Mark. It owns trade mark registrations for the COKE Mark in various jurisdictions around the world.
The Domain Name consists of the COKE Mark and the words “my” and “reward” which does nothing to detract from the identity of the central element being the Complainant’s COKE Mark. The Domain Name is confusingly similar to the COKE Mark as the dominant part of the Domain Name is the Complainant’s COKE Mark.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent is not affiliated with the Complainant in any way. The Complainant has not authorized the Respondent to use and register the COKE Mark or to seek the registration of any domain name incorporating the COKE Mark. The Respondent is using the Domain Name to operate a site through which the Respondent purports to run a promotion related to Coca-Cola, however such a promotion is unauthorized by the Complainant and most likely a scam. The use of the Domain Name in order to perpetrate a fraud does not and never could confer a right or legitimate interest on the Respondent.
The Domain Name was registered and is being used in bad faith. The Domain Name was registered with full knowledge of the COKE Mark. The Domain Name is being used for a promotion that is deceiving the unsuspecting public into believing that they have won large sums of money from the Complainant, and is using the Complainant’s trade mark to lend legitimacy to the promotion. Such use is prima facie evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy or otherwise. The Respondent’s use of the Domain Name is calculated to create confusion with the COKE Mark and to take advantage of that confusion for financial gain by defrauding members who think they are dealing with the Complainant or one of its related companies or subsidiaries. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element, the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the COKE Mark, having registrations for the COKE Mark as a trade mark around the world and in particular the US.
The Domain Name consists of the COKE Mark and the words “my” and “reward”. The addition of those particular words to a Domain Name that otherwise incorporates a mark in its entirety typically does not prevent a finding of confusing similarity. As such the addition of the “my” and “reward” does not distinguish the Domain Name from the COKE Mark in any significant way as a person viewing the mark may be confused into thinking the Domain Name referred to reward or promotion run by the Complainant. The Panel finds that the Domain Name is confusingly similar to the Complainant’s COKE Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 are making 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. (Policy, paragraph 4(c)).”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the COKE Mark or a mark similar to the COKE Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate non commercial use.
Rather the Respondent is using the Domain Name to operate a website that, without the permission of the Complainant, makes reference to the Complainant (via the use of Complainant’s name and photos of the Complainant’s produce) and appears to offer some sort of reward or prize on while masquerading as the Complainant or as a means of committing fraud upon customers who think that they are dealing with the Complainant. Such use is not a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, 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 the respondent’s website or location.
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the COKE Mark at the time the Respondent registered of the Domain Name. The COKE Mark is a well-known mark worldwide. The Respondent’s Website makes reference to the Complainant (via the use of Complainant’s name and products) on the website. The registration of the Domain Name in awareness of the COKE Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Respondent was using the Domain Name to intentionally attempt to attract, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the COKE Mark as to the source, sponsorship, affiliation or endorsement of its website. The Respondent’s Website consisted of a website appears to offer some sort of reward or promotion, by making reference to the Complainant’s COKE Mark. The only apparent purpose behind the conduct of the Respondent is to commit fraud upon customers who think that they are dealing with the Complainant. It appears both from the Domain Name itself and from the Respondent’s Website that it highly likely that the Respondent has intentionally attempted to attract Internet users to the Respondent’s Website by means of confusion with the COKE Mark, and received or intended to receive revenue for that activity. The Panel finds that such use amounts to use in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith 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 Name be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: May 16, 2014
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