The Complainant is The Coca-Cola Company, United States of America (“United States”), represented by Baker Williams Matthiesen LLP, United States.
The Respondent is Alberto S. Somohano a/k/a Alberto Soler, Alberto Soler-Somohano, WHO, Roberto Soler, United States, self-represented. 2. The Domain Names and Registrars
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 11, 2020. On January 13, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On January 14, 2020, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant in the forms detailed below 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 5, 2020. On February 6, 2020, the Respondent emailed the Center requesting a 14-day extension to the Response filing period. On the same day, pursuant to paragraph 5(e) of the Rules, the Center requested that the Complainant provide its comments regarding the Respondent’s 14-day extension request. On February 7, 2020, the Complainant consented to the Respondent’s extension request. On February 10, 2020, the Response due date was extended until February 24, 2020, pursuant to paragraph 5(e) of the Rules. The Response was filed with the Center on February 26, 2020. The Center appointed W. Scott Blackmer as the sole panelist in this matter on February 27, 2020. 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. The Respondent sent three additional emails to the Center on February 27, 2020, labelled “Amended Appendix” and comprised of screenshots of the websites associated with the Domain Names from 2014 through 2019. The Complainant submitted an email reply to an argument in the Response on March 1, 2020, and the Respondent replied on the same day. On March 2, 2020, the Respondent again emailed the Center, attaching a website video that he prepared in 2012 about coca leaf water. On March 3, 2020, the Respondent sent yet another email, with a new argument about the Complainant’s rights to the COCA-COLA trademark. 4. Factual Background The Complainant is a business corporation headquartered in Atlanta, Georgia, United States, organized under the laws of the state of Delaware, United States. The Complainant was founded in the 1880s (initially as the Coca-Cola Corporation) and has been using the COCA-COLA mark to advertise and sell beverages and other products and services for 130 years. It also has been using the COKE mark since about 1941. Both marks are trademarked and widely recognized throughout the world, as noted in numerous court and UDRP decisions cited in the Complaint. The Complainant’s relevant United States registered marks include the following: MARK REGISTRATION NUMBER REGISTRATION DATE COCA-COLA (stylized letters) 238146 January 31, 1928 COCA-COLA (stylized letters) 1338789 June 4, 1985 ALWAYS COCA-COLA (words and design) 1867757 December 13, 1994 COKE (standard characters) 3347889 December 4, 2007 The Complainant also has a pending United States trademark application for the mark COCA-COLA ENERGY, Serial Number 88385628, filed April 15, 2019. The Respondent has opposed this application, as discussed further below. The Complainant has registered more than 700 domain names incorporating its COCA-COLA or COKE marks, including the domain names According to the Registrars, the Domain Names were registered as follows: DOMAIN NAME CREATION DATE REGISTRANT ADDRESS December 18, 2016 Alberto Soler Miami, Florida, United States September 8, 2017 Alberto Soler Miami, Florida, United States December 27, 2016 Alberto Soler Miami, Florida, United States May 18, 2019 Alberto Soler, WHO Miami, Florida, United States May 18, 2019 Alberto Soler, WHO Miami, Florida, United States May 18, 2019 Alberto Soler, WHO Miami, Florida, United States May 18, 2019 Roberto Soler, WHO Miami, Florida, United States The Domain Name At the time of this Decision, the website displays the words “Coming to the People” and “Cola de coca”, followed by an animation that the Respondent also emailed to the Center after submitted the Response in this proceeding, as well as a video of a lizard. The animation is artistically rendered but clearly a draft; it includes notes for inserting sound effects and “product description”. The website does not identify the operator. It is not fully developed as an ecommerce site, and there is no advertising. It also is not an informational or criticism site; there is no mention of either the Complainant or the Respondent. The WhoIs record for this domain name is annotated, “Redacted for Privacy”. The Respondent identifies himself as Alberto Soler-Somohano, the “owner” of each of the Domain Names, despite some variation in the registration details. In his United States Patent and Trademark Office (“USPTO”) and court filings he has used a variety of aliases but regularly lists a postal address in Florida, as in the Domain Name registration data furnished by the Registrars in this proceeding. In the body of the Response, the Respondent also refers to himself variously as “Mr. Coca”, “Mr. Cola”, “Always”, and “Energy”, but there is no evidence in the record that he has taken steps to adopt any of these as a formal alias or trade name. The organization “WHO” listed in the registration details for the four Domain Names registered on May 18, 2019, is not further identified, and the Panel notes that it does not appear to represent an active legal entity listed in the online database of the Florida Division of Corporations. Accordingly, Mr. Soler-Somohano will be referred to hereafter in this Decision as the “Respondent”. The Respondent states that he started “legally importing coca leaf extract for water and soda and juices production” in 2010. He refers to a business he has been involved in since 2012 called “The Coca-Leaf Company”, although the Panel notes that no company by that name, active or inactive, is listed in the online database of the Florida Division of Corporations. It appears that the Respondent has, since 2011, registered many domain names relating to coca, including The Complainant contends that the Domain Names, which all include one or both of the terms “coca” or “cola” or the name “coke”, are confusingly similar to its well-known and long-established COCA-COLA or COKE trademarks, respectively. The Complainant states that the Respondent lacks permission to use the Complainant’s marks or other grounds for asserting rights or legitimate interests in the Domain Names, as the Respondent is not known by a corresponding name and has not used the Domain Names for a bona fide commercial offering or for a legitimate noncommercial or fair use. Finally, the Complainant infers bad faith on the part of the Respondent. The Respondent was clearly very much aware of the Complainant and its “world-famous” trademarks at the time of the Domain Name registrations. He was frequently engaged in trademark disputes with the Complainant. The Respondent incorporated several of the Complainant’s marks in their entirety in the Domain Names and registered multiple Domain Names targeting the Complainant’s marks. The Respondent registered four of the Domain Names in 2019 based on the Complainant’s new trademark application for COCA-COLA ENERGY. The Respondent also registered a Domain Name, The Respondent, who is not represented by counsel, argues that the Center has no jurisdiction over what is essentially a trademark dispute between two United States parties. The Respondent contends that “coca” and “cola” are generic terms that the Complainant should not be able to trademark, and that the Respondent legitimately uses those terms, and variations of them, to refer to coca derivatives and soft drinks, not the Complainant’s products. The Response suggests that the Respondent has been using such terms legitimately online and in social media since 2011 to advertise products containing coca extracts, unlike the Complainant’s products. The Respondent argues that by not including in this proceeding other domain names owned by the Respondent that also incorporate the disputed terms, the Complainant has waived its right to seek transfer of the Domain Names and is estopped from bringing this Complaint. The Respondent requests a finding of Reverse Domain Name Hijacking. The Respondent also implies that the Complainant is either engaged in unlawful trafficking in cocaine or should not be allowed to demand the transfer of “coca” Domain Names because it claims that its products no longer contain cocaine. These arguments are not material to elements of the UDRP Complaint and are not addressed in this Decision. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following: (i) the domain name is 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 domain name; and, (iii) the domain name has been registered and is being used in bad faith. Under paragraph 15(a) of the Rules, “[a] Panel shall 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”. 6.1 Preliminary Matter: Consolidation The Complainant recommends consolidating the proceeding with respect to all seven Domain Names, because they involve the same parties (although the registrant’s name is given with a slight variation in one instance) and Domain Names relating to COCA COLA or COKE trademarks. The Respondent has not objected. The Panel agrees that consolidation is in the best interest of equity and efficiency and proceeds on that basis. See Rules, paragraph 3(c); WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1. 6.2 Preliminary Matter: Late-Filed Response After being granted a 14-day extension, the Respondent (who is not represented by counsel) submitted the Response two days after the extended filing date, without explanation. The Complainant has not objected, and the Panel does not find material prejudice in accepting the Response in this instance; indeed, the Panel suggests that it is in both parties’ interests to allow the late Response to draw this proceeding to a close. 6.3 Preliminary Matter: Supplemental Filings The Respondent’s three emails with “Amended Appendix” submissions came a day after its late-filed Response. These emails attached screenshots from the Respondent’s account on “Wix.com” showing partly developed websites for use with the Domain Names, depicting fruit and bottles of colorful beverages and images of the Andes, along with words such as “happy me”, “Coki”, “Cocaw”, “Coka liscus”, and “always Coca Raw”. Although the emails characterize the attachments as “web history”, it is not clear that these pages were ever completed and published. (Similar pages do not appear for any of the Domain Names in the screenshots archived by the Internet Archive’s Wayback Machine.) The screenshots include text blocks with titles such as “4 Days 4 Ways”, but these are followed by stock language such as “I’m a paragraph. Click here to add your own text and edit me.” The Complainant submitted a three-paragraph email response to the jurisdictional challenge in the Response (see section 6.4 below). The Complainant observed, as it did in the Complaint, that the USPTO has repeatedly rejected the Respondent’s trademark applications and appeals, as well as the Respondent’s objections to the Complainant’s application to register the mark COCA-COLA ENERGY. The Respondent then submitted a 40-page Reply to the Complainant’s submission, alleging corruption and bribery and telling the “true story” of “Mr. Cocaine” (his term for the Complainant). The Respondent subsequently submitted additional historical material concerning his website development and the Complainant’s trademarks. Neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the panel to conduct the proceeding “with due expedition”. Therefore, UDRP panels are typically reluctant to countenance delay through additional rounds of pleading and normally accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to arguments that could not reasonably have been anticipated. See WIPO Overview 3.0, section 4.6. The evidence proposed here is not new to the parties, and the Respondent was given additional time to prepare the Response. There is sufficient information in the pleadings and in the publicly available USPTO databases to weigh the parties’ arguments. Moreover, much of what the Respondent has submitted is repetitive and immaterial to the elements of the UDRP Complaint. The Panel declines, therefore, to accept the supplemental filings as part of the record in this proceeding. 6.4 Preliminary Matter: Jurisdiction and Pending Legal Proceedings The Respondent contends that the Center “lacks subject matter jurisdiction in [i]interstate and foreign commerce” and suggests that it is improper or inefficient to continue with this UDRP proceeding while the parties are involved in disputed trademark applications before the USPTO Trademark Trial and Appeal Board (“TTAB”) or United States federal court litigation concerning the Complainant’s similar trademark claims. The Respondent attaches documents from various USPTO proceedings. These appear to have been abandoned or dismissed, however, with the exception of the Respondent’s pending appeal to the United States Court of Appeals on January 17, 2020, after the TTAB dismissed with prejudice the Respondent’s opposition to the Complainant’s application to register the mark COCA-COLA ENERGY (Serial Number 88385628). As mentioned above, four of the Domain Names were registered a month after the Complainant filed that application and are closely modeled on that mark. The appellate proceeding may confirm or undermine the Complainant’s rights to COCA-COLA ENERGY, strengthening or weakening its UDRP claims with regard to those Domain Names, but the Complainant nevertheless would have grounds for a UDRP complaint based on its COCA-COLA and COKE marks even as to those Domain Names. In any event, the fact that there is another proceeding addressing the trademark rights of the parties does not mean that the Center lacks authority or that this proceeding necessarily should be suspended or terminated. The Center is an ICANN-appointed dispute resolution service provider conducting UDRP mandatory administrative proceedings as contemplated in the registration agreements for each of the Domain Names, and these agreements are contractually binding on the Respondent. The Policy provides a mandatory but non-exclusive form of relief for complainant trademark holders, which does not prevent complainants or respondents from “submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded” (Policy, paragraph 4(k)). “All other disputes between you and any party other than us regarding your domain name registration that are not brought pursuant to the mandatory administrative proceeding provisions of Paragraph 4 shall be resolved between you and such other party through any court, arbitration or other proceeding that may be available.” (Policy, paragraph 5) The Panel has broad discretion where there are parallel proceedings: “In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.” (Rules, paragraph 18(a)) As noted in the WIPO Overview, sections 4.14.1 and 4.14.2, UDRP proceedings are expeditious and limited in scope. They do not entail all the procedures available and all the issues that can be addressed in civil litigation or proceedings before national trademark offices, such as the TTAB. UDRP panels are cognizant of the fact that their decisions are not binding on the courts or other decision-making bodies with jurisdiction but give the parties prompt resolution of one important operational issue – who controls the disputed domain name, at least until other pertinent legal challenges are finally resolved. Hence, UDRP panels are typically reluctant to suspend or terminate proceedings in deference to other ongoing proceedings of indeterminate duration. This Panel is of the same view and declines, therefore, to suspend or terminate the present proceeding. 6.5 Preliminary Matter: Waiver and Estoppel The Respondent asserts the equitable defense of waiver and estoppel, arguing that the Complainant has effectively waived the right to contest the Domain Names because it does not challenge similar domain names held by the Respondent, such as Of course, this does not mean, as the Respondent implies, that the Complainant has conceded that it has no right to seek the UDRP remedies of transfer or cancellation. The Policy and Rules do not set a time limit for bringing a complaint after discovering a domain name registration that potentially violates the Policy, nor do the Rules require the consolidation of complaints regarding multiple domain names (see the discussion above regarding consolidation in the current proceeding). The UDRP proceeding is mandatory, but only if and whena rights holder chooses to assert a violation of the Policy (see Policy, paragraph 4(a)). UDRP panels have generally rejected the equitable defense of “laches” arising from delays in bringing a complaint as such (see WIPO Overview 3.0, section 4.17). While it may be possible to conceive of circumstances where a registrant relies on and is sufficiently prejudiced by the complainant’s conduct in such cases to warrant a different conclusion, the Respondent does not articulate such prejudice here or furnish evidence of abusive conduct on the part of the Complainant in choosing to prosecute a UDRP complaint concerning these particular Domain Names and not others. The Panel denies the Respondent’s claim of waiver and estoppel. 6.6 Substantive Issues A. Identical or Confusingly Similar The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview 3.0, section 1.7. The Domain Name The Domain Name The Domain Name The Domain Names The gTLD “is viewed as a standard registration requirement” and as such is normally disregarded under the first element of the Complaint. Id., section 1.11.2. The Panel does so here with the “.com” gTLDs, but as explained above, in the case of The Panel finds, therefore, that all seven Domain Names are confusingly similar to the Complainant’s marks, as detailed above, satisfying the first element of the Complaint. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following: (i) before any notice to it of the dispute, the Respondent’s 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or (iii) the Respondent is 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. Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. Here, the Complainant has demonstrated trademark rights and a lack of permission to use the Complainant’s marks in the Domain Names. The Respondent has repeatedly challenged the Complainant’s COCA-COLA trademarks on the ground that “coca” and “cola” are generic terms, but the USPTO has long upheld the Complainant’s trademark rights in the marks combining the terms in stylized letters or with other words or figures. The Respondent is not known by a name corresponding to any of the Domain Names. While the Respondent expresses criticism of the Complainant in this proceeding and in the USPTO and court filings, the Respondent has not used the Domain Names for a (legitimate noncommercial) criticism site. Instead, the Respondent suggests that the Domain Names were acquired for legitimate use in connection with the Respondent’s business of importing coca extract and selling products containing coca extract. However, it does not appear that any of the Domain Names have actually been used for an ecommerce website advertising and selling such products. One has been parked for PPC advertising, and the others redirect to the Respondent’s website at “www.coca.life”, which does not advertise or sell any products. Thus, the Respondent is not using the Domain Names for the claimed purpose and has not demonstrated that, over the more than three years since he registered the first of the Domain Names, he has made concrete preparations to do so, such as business formation, due diligence, forming a business plan, obtaining advice, and making a credible investment in website development and advertising (see WIPO Overview 3.0, section 2.2, “demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services”). The Panel finds insufficient evidence of “demonstrable preparations” to establish rights or legitimate interests in the Domain Names. The Respondent (under the name Alberto Soler-Somohano) filed an application with the USPTO (Serial Number 88768262) on January 21, 2020, to register COLA DE COCA as a standard-character mark. The mark corresponds to the Domain Name The Panel concludes that the Complainant prevails on the second element of the Complaint. C. Registered and Used in Bad Faith The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name): “(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or … (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” A “pattern” of filings to deprive a trademark holder of corresponding domain names (as described in the Policy, paragraph 4(b)(ii)) can be established by multiple registrations at the same time. See WIPO Overview 3.0, section 3.1.2. This seems appropriate in this case, where the Respondent, embroiled for years in trademark disputes with the Complainant, promptly registered four Domain Names, The Domain Name As the Complainant observes, the circumstances listed in paragraph 4(b) are not exclusive instances of bad faith under the Policy. The other Domain Names redirect to the Respondent’s incompletely developed website at “www.coca.life”. This may not represent commercial gain yet for the Respondent, but it is misdirection based on confusing similarity, and the Respondent indicates that he plans to use the Domain Names for his coca products business. This is not a legitimate use of Domain Names that are confusingly similar to the Complainant’s well-known trademarks. The Respondent has many domain names, and some of them may be properly descriptive for the business he describes, without exploiting the trademark of another. It is undisputed in this proceeding (and supported by online dictionaries) that “coca” (a South American plant) and “cola” (a soft drink, usually caramel-colored and often flavored with extracts of kola nuts) are dictionary words in English, and “cola” is also a dictionary word in Spanish meaning “tail”. But combining those two terms tends to point consumers to one of the world’s best-known brands, COCA-COLA. That is true as well for the Domain Names that combine “cola” or “coke” with other terms found in the Complainant’s trademarks (even if less well-known than the house marks), “always” and “energy”. In the Respondent’s case, it is hard to credit these similarities to coincidence or an interest in the dictionary sense of the terms. The Respondent’s registration of multiple Domain Names incorporating the Complainant’s trademarks is an indicator of bad faith. The available website drafts seem to show water and fruit beverages; they are not focused on caramel-colored “cola” drinks. The Respondent’s long history of battling the Complainant at the USPTO also suggests an animus against the Complainant, especially given the lurid charges the Respondent levels against the Complainant (bribery, lacing products with cocaine, causing the Respondent’s addiction and incarceration for fifteen years), and the Respondent’s suggestions for extreme remedies, including a broadcast confession and a public firing squad. These lend credence to the notion that the Respondent registered multiple, confusingly similar Domain Names to attack the Complainant’s marks, not to make use of the Domain Names for their dictionary sense. The Panel finds bad faith on this record and concludes that the Complainant has established the third element of the Complaint with respect to all seven Domain Names. 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, Paragraph 15(e) of the Rules provides that, if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. The Respondent has requested such a finding here. The Panel considers the Complaint well-grounded and does not conclude that there is evidence of abuse. Accordingly, the Panel declines to enter a finding of Reverse Domain Name Hijacking. W. Scott Blackmer
Sole Panelist
Date: March 15, 2020
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