WIPO Domain Name Decision DME2008-0005 for sprite.me

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The Coca-Cola Company v. Metro Media Case No. DME2008-0005 1. The Parties

The Complainant is The Coca-Cola Company, of Atlanta, Georgia, United States of America, represented by Valea AB, of Sweden.

The Respondent is Metro Media, of Beverley Hills, California, United States of America. 2. The Domain Name and Registrar

The disputed domain name is registered with GoD, Inc. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2008. On November 18, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On November 18, 2008, GoD, Inc. 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, approved by the doMEn d.o.o. (“doMEn”) (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy approved by the doMEn d.o.o. (“doMEn”) (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 November 24, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 14, 2008. On December 11, 2008 the Respondent filed a response consisting of a copy of a letter to the Complainant's attorney indicating that its intent was to transfer the domain name to the Complainant and asking for the “case to be dropped”. The administrative proceeding was suspended on December 12, 2008 at the request of the parties, to allow time for the Respondent to transfer the disputed domain name to the Complainant. That transfer did not take place and on January 8, 2009 the Complainant requested that the suspension be lifted and the Center proceeded to panel appointment.

The Center appointed Angela Fox as the sole panelist in this matter on January 20 2009. 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.

On January 27, 2009 the Respondent copied to the Center and the Complainant's attorney an email asking the Registrar to transfer the disputed domain name to the Complainant. On the same date, the Registrar replied, also with a copy to the Center and the Complainant's attorney, stating that it could only effect the transfer if the proceedings were suspended to allow for this. On January 29, 2009 the Center replied by email to the Respondent, advising that the further emails were supplemental filings, and that in accordance with Paragraphs 10 and 12 of the Rules they would be brought to the attention of the Panel, who had sole discretion over whether to take them into account in the proceedings. 4. Factual Background

The Complainant is an internationally famous soft drink manufacturer. One of its best known brands is SPRITE, which has been used since at least 1955 in respect of a lemon-lime flavoured carbonated soft drink. The SPRITE brand is the market leader in the lemon-lime soda category in the United States (“U.S.”)., with more than US$700 million spent on marketing in the past three years alone. According to the Complainant, the SPRITE brand is the fourth best-selling soft drink worldwide.

The Complainant owns trademark registrations for SPRITE in more than 150 countries, including U.S. federal registration no.704043 and Community Trade Mark registration no.2091288 dating from 1955 and 2001 respectively, copies of which were attached to the Complaint.

The disputed domain name was registered on July 10, 2008. It has been in use to host a landing page with pay-per-click links to other sites, including some relating to the Complainant's products and some relating to products of the Complainant's competitors, including Pepsi-Cola. 5. Parties' Contentions A. Complainant

The Complainant alleges that the disputed domain name is identical to its registered and internationally famous SPRITE trademark. It further contends that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent's use of it to host pay-per-click links to websites promoting products that compete with the Complainant's SPRITE brand is not use in connection with a bona fide offering of goods or services. The Complainant further avers that the disputed domain name was registered and is being used in bad faith. In particular, the Complainant claims that the Respondent was aware of the Complainant's well-known SPRITE brand before the Respondent registered the disputed domain name, and that it has used the disputed domain name to attract, for commercial gain, Internet users to its linked site by creating a likelihood of confusion with the SPRITE trademark. The Complainant further notes that the Respondent appears to own numerous other domain names incorporating other well-known names or third party trademarks, which are also in use to host similar pay-per-click landing sites. B. Respondent

In its Response, the Respondent did not reply to any of the Complainant's allegations, but simply stated that it intended to transfer the disputed domain name to the Complainant. 6. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:

(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 the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy. A. Preliminary Issue: Respondent's Supplemental Communications

Although paragraph 12 of the Rules allows a panel in its discretion to request supplemental filings from either party, the Rules do not provide expressly for unsolicited submissions. However, under paragraph 10(a) the panel enjoys a broad power to conduct the administrative proceeding in the manner it considers appropriate under the Policy and Rules, provided the parties are treated fairly and the proceeding is conducted expeditiously. Other panelists have accepted unsolicited supplemental submissions under this rule (see, inter alia, AutoNation Holding Corp. v. Rabea Alawneh,WIPO Case No. D2002-0058).

In this case, the Respondent's supplemental filing consists of a copy email to the Registrar instructing the transfer of the disputed domain name to the Complainant. The Registrar's reply that the transfer could not be made unless the proceedings were suspended is not a communication from the Respondent. Nonetheless, the Panel has the power to take this email into account under its general power to conduct the proceedings in an appropriate manner under paragraph 10(a) of the Rules. Neither communication adds anything substantive to the Response filed within the original term, but the Respondent's email of January 27, 2009 to the Registrar adds emphasis to the Respondent's expression of intent, in its original Response, to transfer the disputed domain name to the Complainant. Therefore, although the Complaint and the original Response are sufficient to enable the case to be fairly decided, the supplemental communications are relevant to whether the Respondent has consented unequivocally to the relief sought against it. The Panel will therefore take them into account. B. Has the Respondent Consented to Transfer?

Panelists diverge on the approach to take where a respondent has expressed an unequivocal agreement to transfer.

Some panelists take the view that such an agreement should result in a transfer being ordered without analysis of whether the requirements of paragraph 4(a) of the Policy have been met (see, inter alia, Williams-Sonoma, Inc. v. EZ-Port,WIPO Case No. D2000-0207).

Others have regarded a respondent's consent to the relief sought as enabling the panel to deem that the paragraph 4 (a) tests have been met (DESOTEC N.V. v. JACOBI CARBONS AB,WIPO Case No. D2000-1398; Deutsche Bank v. Carl Seigler,WIPO Case No. D2000-0984; Juventus F.C. S.p.a. v. Sergio Brangança,WIPO Case No. D2000-1466; and Qosina Corporation v. Qosmedix Group,WIPO Case No. D2003-0620).

Still other panels have regarded respondents who consent to relief without admitting the paragraph 4(a) elements as effectively in default, and have examined the merits before making a decision.

In this case, the Panel considers that the facts make it appropriate to examine the merits. The Respondent has expressed intent to transfer the disputed domain name to the Complainant. However, an expressed intent is not the same as an unequivocal agreement to a transfer. The Respondent's email of January 27, 2009 to the Registrar, copied to the Center, actually instructed the transfer to be made. Yet, although the Registrar has informed the parties that a suspension would be required in order to enable it to effect the transfer, neither party has applied for a suspension of these proceedings to enable a transfer to be made. However unlikely, this silence makes it possible that the Respondent has thought again and decided against completing the transfer. The Panel will therefore examine this case on the merits. C. Identical or Confusingly Similar

The Complainant has proved that it owns trademark registrations, including U.S. and Community trademark registrations, for SPRITE.

The disputed domain name contains the whole of the Complainant's trademark. The non-distinctive top level domain suffix “.me” does nothing to distinguish it from the Complainant's mark.

The disputed domain name is therefore identical to a trademark in which the Complainant has rights. D. Rights or Legitimate Interests

The Complainant has not authorized the Respondent to use the disputed domain name and has made out a prima facie case that the Respondent has no rights or legitimate interests in it. The Respondent has done nothing to rebut this case or to advance an alternative one.

Indeed, on the contrary, the Respondent indicated in its email of January 27, 2009 to the Registrar, copied to the Center and the Complainant's attorney, that the Complainant was “the rightful and legal holders [sic] of the trademark” and “the rightful owner” of the disputed domain name.

This admission on its own suffices to allow the Panel to find that the Respondent has no right or legitimate interest in the disputed domain name.

However, for the record the Panel also takes note of the fact that the Respondent has been using the disputed domain name to offer sponsored links to third parties, including to websites promoting products that compete with the Complainant's SPRITE brand. Such use does not constitute a bona fide offering of goods or services that would confer a right or legitimate interest under paragraph 4(c)(i) of the Policy. The mere provision of click-through Internet advertisements of the type offered is not, on its own, an offering of goods or services (see, inter alia, Deutsche Telekom AG v. Gary Seto,WIPO Case No. D2006-0690). Even if it were, using the Complainant's trademark to entice Internet users to a website promoting products of the Complainant's competitors would not constitute a bona fide offering in any event since it is inherently misleading (see e.g., F. Hoffmann-La Roche AG v. Web Marketing Limited., WIPO Case No. D2006-0005; Robert Bosch GmbH v. Asia Ventures, Inc.,WIPO Case No. D2005-0946, and F. Hoffmann-La Roche AG v. Andrey Radashkevich / Domain Admin, PrivacyP, WIPO Case No. D2008-0149).

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. E. Registered and Used in Bad Faith

Under paragraph 4(b)(iv) of the Policy, the Panel may find that a domain name was registered and used in bad faith where the Respondent has used it in an intentional attempt to attract Internet users for commercial gain 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 it.

In this case, the Panel finds that the disputed domain name has been so used. It is identical to the Complainant's registered trademark, and is inherently likely to attract Internet users seeking the Complainant's own SPRITE-related website. Given the immense worldwide renown of the SPRITE brand, the Respondent cannot fail to have appreciated the likely impression that such a domain name would create at the time the domain name was registered. Indeed, on this point, the content of the linked website speaks for itself. Visitors to it are confronted with links to websites promoting the Complainant's own SPRITE product as well as to websites promoting competing products. The Respondent has not denied the Complainant's assertion that the Respondent has been profiting from click-through revenue.

Use of a domain name that is identical to a complainant's trademark to offer sponsored links to third parties has been regarded by other panelists as registration, and use in bad faith under paragraph 4(b)(iv) of the Policy (see, inter alia, McDonald's Corporation v. ZusCom,WIPO Case No. D2007-1353). The fact that some of the commercial websites linked to the Respondent's website in this case relate to the Complainant's competitors is a further indication of bad faith on the Respondent's part (see DORMEUIL FRERES and DORMEUIL UK v. Keyword Marketing, Inc.,WIPO Case No. D2007-1424).

The Panel finds that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy. 7. Decision

For all 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.

Angela Fox
Sole Panelist

Dated: January 31, 2009

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