WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nutrexpa S.A. v. Louisiana’s Cola & Cacao Distributions
Case No. D2000-1370
1. The Parties
Complainant is Nutrexpa S.A., Barcelona, Spain ("Complainant"). Respondent (as per the Amended Complaint) is now Louisiana’s Cola & Cacao Distributions, Atlanta, Georgia, United States of America ("Respondent").
2. The Domain Name and Registrar
The domain name at issue in this Complaint is "colacao.com".
The Registrar is OpenSRS c/o Tucows.com Inc. The remedy sought by Complainant is transfer of the domain name "colacao.com" to Complainant.
3. Procedural History
On October 11, 2000 (original Complaint) and November 22, 2000 (amended version), Complainant submitted to the WIPO Center a Complaint under the Uniform Policy and the Uniform Rules. The Panel agrees that payment was properly made, that the Center rightly assessed the Complaint’s compliance with the formal requirements; that Complaint was properly notified in accordance with paragraph 2 (a) of the Rules. No response was filed and Respondent was declared in default. A number of messages sent on behalf of the Respondent to WIPO, ICANN, the registrar and his Panel do not amount to a response under the Rules, and cannot be taken into account. The Panel agrees that it was properly constituted and that Panelist submitted a Statement of Acceptance and Declaration of Impartiality. The Panel also acknowledges that no other proceedings are pending before any Justice Court.
4. Factual Background
Complainant is the owner of the trademark COLA CAO, registered in a number of countries for cocoa-based beverages. That COLA CAO is a fairly well-known trademark in the field of food is beyond dispute.
According to Complainant, the domain name was registered by a company called Vesatec based in Houston, Texas, United States of America. A WHOIS report filed by Complainant shows that on October 10, 2000, Network Solutions’ WHOIS indicated "Vesatec, Houston, TX 77006" as Registrant. The domain name "colacao.com" was registered, without dispute, well after trademark rights from the name COLA CAO were acquired by Complainant, and Vesatec had no known connection with any activity or trade carried out under the trade name or trademark COLA CAO. Subsequently, on or before the month of November, 2000, a WHOIS search filed by Complainant indicated Louisiana’s Cola & Cacao’s Distributions, Atalanta, Georgia, United States of America, as the current owner of the Domain Name. There is no clear evidence of the relationship between Vesatec and Louisiana’s Cola & Cacao Distributions. However, the Administrative Contact , the Technical Contact are the same as in the original complaint, and thus, regardless of the identity of the Registrant, the domain name appears to be owned by the same entity. The present Respondent operates a Web site advertising "Louisiana’s Cola & Cacao Distributions", with a moving banner (active at the time of this Panel’s visit on January 3, 2001) "Colacao’s Website, Welcome".
5. Parties’ Contentions
6. Discussion and Findings
A. General Principles
Under paragraph 4 (a) of the Policy, the Panel should be satisfied that:
B. Confusion with Complainant’s Trademark
The Panel finds that Complainant has established that it is the owner of the trademark COLA CAO for food products. The validity of its trademarks is beyond dispute. Respondent’s domain name is virtually identical to Complainant’s trademark (except that it is written as a single word), and confusion seems inevitable to this Panel. Additionally, the domain name "colacao.com" is now used in order to advertise a business in the food field, the same field in which Complainant operates.
C. Respondent’s Absence of Rights or Legitimate Interests in the Domain Name
Respondent’s trade name includes the words "Cola & Cacao". Considering that these may be used as such (in the form of "cola-cacao.com", or similar), or in a variety of forms other than "colacao.com", without infringing Complainant’s trademark rights, the trade name does not constitute per se any right or legitimate interest in respect of a domain name including the well-known trademark COLA CAO (written either in two words or as a single word).
D. Registration in Bad Faith
a. Vesatec, which was the previous Registrant of this domain name, registered in fact several domain names corresponding to well-known Spanish-based trademarks it did not own. "colacao.com" was one of them. This pattern of action is significant and confirms that Vesatec was well aware that COLA CAO was a well-known trademark, both in Spain and internationally. Even absent the above pattern of conduct and any reference to Vesatec, COLA CAO is such a well-known trademark that it would have been impossible for any Registrant to ignore its existence altogether and register it in good faith. When it may be presumed that "the Respondent (…) knew of the renown of the Complainant’s trademarks", a finding of "opportunistic bad faith" is in order (Banca Sella S.p.A. v. Mr. Paolo Parente, case no. D2000-1157). In Veuve Cliquot Ponsardin v. The Polygenix Group Ltd., case no. D2000-0163, the Panel noted that "‘VEUVECLIQUOT.ORG’ is so obviously connected with such a well-known product [VEUVE CLIQUOT champagne] that its very use by someone with no connection with the product suggests opportunistic bad faith." In Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, case no. D2000-0226, it was also suggested that " the Domain Names are so obviously connected with such a well-known name and products that its very use by someone with no connection with the products suggests opportunistic bad faith [quoting Veuve Cliquot]. In the absence of contrary evidence, the Panel finds that Respondents knew of or should have known of the Complainant’s trademark and services at the time Respondents registered the Domain Names given the widespread use and fame of the Complainant’s CHRISTIAN DIOR mark ." Even in a case where the trademark involved (EXPEDIA for online travel services) was somewhat less famous than VEUVE CLIQUOT or CHRISTIAN DIOR, it was decided that "the Respondent knew of or should have known of the Complainant’s trademark and services at the time it registered the domain name XPEDIATRAVEL.COM, given the widespread use of the Complainant’s EXPEDIA website" (Expedia, Inc. v. European Travel Network, case no. D2000-0137.)
The Panel concludes that the domain name has been registered in bad faith.
E. Use in Bad Faith
Complainant states that the domain name is being used in bad faith, if only through "passive holding" quoting Telstra (D2000-003) and the well-known set of WIPO cases which followed and affirmed Telstra. The question of "passive holding", while theoretically interesting in this context, has now become moot, since – as of January 3, 2001 – the domain name is in fact actively used, for a Web site introduced with a moving banner "Colacao’s Website, Welcome". This message gives the clear impression that this is the Web site of the well-known product and trademark COLA CAO ("Colacao’s Website") and is likely to confuse visitors.
The Panel concludes that the domain name "colacao.com" is in fact used by Respondent, and is used in bad faith.
Pursuant to Paragraph 4 (i) of the Policy and Rule 15 of the Uniform Rules, this Panel orders that the domain name "colacao.com" be transferred to Complainant.
Dated: January 18, 2001