The Complainant is The Coca-Cola Company, Atlanta, Georgia, United States of America ("United States"), represented by Parks IP Law LLC, United States.
The Respondent is Ariel Fuggini, A.F., Capital Federal, Argentina / Domains By Proxy, LLC, Scottsdale, Arizona, United States, self-represented. 2. The Domain Names and Registrar
The disputed domain names and ("the Domain Names") are registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 25, 2014. On September 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 27, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 1, 2014 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 3, 2014.
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 the Respondent of the Complaint, and the proceedings commenced on October 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 28, 2014. On October 25, 2014, the Respondent requested an extension to the due date of Response. In light of the Respondent's request, the Complainant was requested to comment. The Complainant agreed to a "one-week" extension to the due date for submitting the Response. On October 28, 2014 the Center notified the parties that the due date for Response had been extended to November 4, 2014. The Response was filed on November 4, 2014.
The Center appointed Dawn Osborne as the sole panelist in this matter on November 10, 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 was founded in the 1880s and has been using the COCA-COLA mark for the purpose of advertising and selling its products for more than 125 years. As such the Complainant has acquired considerable goodwill and reputation throughout the world in its COCA-COLA brand, which is one of the most recognised marks in the world today. It is a famous trade mark for, inter alia, beverages. The Complainant is also the owner of trade mark registrations or applications for COCA-COLA including registrations in United States and Argentina. The Complainant is the owner of numerous registrations and applications consisting of or incorporating COCA-COLA LIFE in 47 countries, including the United States and Argentina.
The Domain Names were registered on July 4, 2013. They have featured copyright imagery from the Complainant's website with an indication that the Domain Names are for sale. More recently they have featured a holding page indicating "Design Studio-Coming soon!" 5. Parties' Contentions A. Complainant
The Complainant's contentions can be summarised as follows:
The Domain Names are owned by the same entity and are being used in the same manner. The websites attached to both Domain Names both prominently feature copyrighted images taken from the Complainant's website at . Both Domain Names were registered through the same registrar on July 4, 2013. The Respondent is based in Argentina.
The Complainant was founded in the 1880s and has been using the COCA-COLA mark for the purpose of advertising and selling its products for more than 125 years. As such the Complainant has acquired considerable goodwill and reputation throughout the world in its COCA-COLA brand, which is one of the most recognised marks in the world today. It is a famous trade mark for, inter alia, beverages. The Complainant is also the owner of registrations or applications for COCA-COLA in every country of the world that accepts trade mark registrations, including the United States and Argentina. The Complainant is the owner of numerous registrations and applications consisting of or incorporating COCA-COLA LIFE in 47 countries, including the United States and Argentina.
The Complainant has registered and in some instances uses 25 domain names containing COCA-COLA LIFE including , , , , , , and .
Although the domain name the subject of these proceedings does not include the hyphen from the trade mark COCA-COLA that is always used by the Complainant, this domain name is no less confusingly similar to the brand than one which correctly included such a hyphen.
The Domain Names are identical or nearly identical to the Complainant's trade mark, are confusingly similar thereto and could not and are not intended to refer to anyone other than the Complainant or its products. This creates a strong likelihood of confusion as to the affiliation of the Domain Names with the Complainant.
The Respondent has no rights or legitimate interests in the mark COCA-COLA LIFE. The Domain Names are not being used in connection with a bona fide offering of goods and services. The Domain Names were not registered until July 2013, a month after the Complainant had established rights in the COCA-COLA LIFE mark in Argentina. The Respondent simply copied images from the Complainant's Argentinian website promoting the COCA-COLA LIFE in that country. Other than the Complainant's copyright imagery, the content of the Domain Names consists of three Google AdSense advertisements and a link for more information about the sale of the Domain Names.
There has been considerable publicity surrounding the launch of the Complainant's beverage product around the world and the COCA-COLA LIFE trade mark is uniquely associated with the Complainant and its product. Thus, there is no legitimate use for these Domain Names. Rather the Respondent is seeking a free ride on the considerable goodwill associated with the Complainant's marks and is seeking to make a profit from the acquisition of the Domain Names whether by sale of the Domain Names or advertisement revenue based solely on the value of the COCA-COLA and COCA-COLA LIFE trade marks. The Respondent registered the Domain Names shortly after the launch of the Complainant's COCA-COLA LIFE product in Argentina where the Respondent is apparently based.
There is no doubt due to the use of trade marks and imagery from the Complainant's website that the Respondent is aware of the Complainant's COCA-COLA and COCA-COLA LIFE trade marks. If the Domain Names were used they would cause considerable confusion. B. Respondent
The Contentions of the Respondent can be summarised as follows:
The words "coca", "cola" and "life" predate the Complainant. The Complainant merely joined three descriptive words together. The fact that the Complainant's mark is old and famous does not change history or the reality of the mark's origin.
The Domain Names are being used in connection with a bona fide offering of design and consultancy services with no relation to the COCA-COLA mark. Almost all of the Complainant's COCA-COLA LIFE domain names were registered after the Domain Names.
Respondent has never contacted the Complainant to attempt a sale or demonstrate any intention to profit from the Domain Names. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the complainant must prove that:
- The domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
- The respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Domain Names and consist of the Complainant's mark COCA-COLA LIFE (registered, inter alia, in Argentina where the Respondent is based) save that the hyphen between "coca" and "cola" has been omitted in . As such, is identical for the purposes of the Policy to the Complainant's trade mark, the use of ".com" having historically been considered a generic indication under the Policy. The omission of the hyphen between the words "coca" and "cola" does not serve to distinguish from the Complainant's COCA-COLA LIFE trade mark and as such this domain name is confusingly similar to the Complainant COCA-COLA LIFE registered mark for the purposes of the Policy. As such the Complainant has satisfied the first limb of the Policy with respect to both Domain Names. B. Rights or Legitimate Interests
The Respondent does not appear to have any trade marks associated with the name COCA-COLA LIFE. There is no evidence that it is commonly known by this name and it does not have any consent from the Complainant to use this name. It does not appear to have used the Domain Names for any bona fide offering of services of its own. Currently, there is a holding page attached to the Domain Names saying Design Studio-Coming Soon!" However, there is no other evidence of demonstrable preparations to use the Domain Names for this kind of business.
Originally the website associated with the Domain Names contained imagery copied from the Complainant's website in Argentina showing that the Domain Names were registered by reference to the Complainant and its products and indicating that the Domain Names were for sale.
COCA-COLA is an extremely famous trade mark and given the evidence that the Domain Names were registered after the Complainant had established rights in the COCA-COLA LIFE trade mark and that the Domain Names were offered for sale, there is no credible evidence that the intention of the Respondent was, in fact, to use the Domain Names for a design studio or why, given the significance attached to COCA-COLA LIFE indicating the Complainant and its products, such names as the Domain Names would be appropriate for such use. Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Names. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including
"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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [its] documented out-of-pocket costs directly related to the domain name;" (4 (b)(i)) of the Policy.
The original material attached to the Domain Names contained copyright imagery taken from the website of the Complainant in Argentina where the Respondent is based and indicated that the Domain Names were for sale. The Respondent has given no satisfactory reason why it registered domain names comprising the famous trade mark COCA-COLA belonging to the Complainant coupled with the name of one of its products "Life" or why, if the real intention was to use the name for a design studio, why the Domain Names were offered for sale. Accordingly, the Panel finds on the balance of probabilities that the Respondent has registered or acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring them to the Complainant who is the owner of the trademark COCA-COLA LIFE or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names. The Panel, therefore, finds that bad faith has been demonstrated under paragraph 4(b)(i) 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 disputed domain names, and be transferred to the Complainant.
Dawn Osborne
Sole Panelist
Date: November 25, 2014
Full & Egal Universal Law Academy