WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Coca-Cola Company v. Tantamount Property Trust
Case No. D2001-0327
1. The Parties
The Complainant is: The Coca-Cola Company, a corporation incorporated under the laws of the State of Delaware with its principal place of business at One Coca-Cola Plaza N.W., Atlanta, Georgia 30313, U.S.A. The Complainant is represented by Bradley A. Slutsky Esq., of King & Spalding, 191 Peachtree Street, Atlanta, Georgia 30303-1763, U.S.A.
The Respondent is the Tantamount Property Trust, P.O. Box 169, Centerville, MA 02632-0169, U.S.A.
2. The Domain Name and the Registrar
The domain name in dispute is "CokeUSA.com".
The registrar for the disputed domain name is: Network Solutions, Inc. (NSI), 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Complaint was filed on March 6, 2001. On March 15, 2001 the Center informed the Complainant of a deficiency regarding mutual jurisdiction ( Rules, Para.3(b)(xiii). The Complainant submitted a satisfactorily amended Complaint on March 15, 2001.
Meanwhile, on March 14, 2001, the Center requested that the Registrar NSI check and report back on the registrant for the domain name "CokeUSA.com". On March 14, 2001, NSI reported to the Center that the registrant was the Respondent in this proceeding, Tantamount Property Trust.
On March 16, 2001, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail and this proceeding officially began. Respondent's Response was received by the Center on April 4, 2001.
The Administrative Panel submitted a Declaration of Impartiality and Independence on April 6, 2001, and the Center appointed the Panel on April 9, 2001.
On April 16, 2001 the Complainant requested permission to file a sur-Response, but on the same day the Panel denied this request based on the Rules (Para.12), which give a panel the discretion to request supplementary filings from the parties when a panel finds this necessary.
The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
This Decision is due by April 23, 2001.
4. Factual Background
The Complainant manufactures the famous soft drink Coca-Cola, which often is referred to as "Coke". The Respondent has a varied Internet business that includes leasing domain names and selling advertising on Websites. On April 29, 1999, the Respondent registered the disputed domain name, "CokeUSA.com". It appears from the record that the Complainant tried but never succeeded in directly contacting the Respondent to complain about alleged trademark infringement. As a result, the Complainant has initiated this proceeding seeking transfer of the disputed domain name.
5. The Parties' Contentions
The Complainant's Contentions:
- Since long prior to Respondent's registration of the domain name, Complainant has continuously owned and used the mark "Coke" in connection with its products and services.
- The Coca-Cola Company's right to use the Coke mark registered with the United States Patent and Trademark Office (USPTO) has become incontestable under 15 U.S.C. Sect. 1065 and 1115, and the certificates of registration constitute "conclusive evidence" of "the validity of the registered mark, of the registrant's ownership of the mark, and of the registrant's exclusive right to use the registered mark in commerce on or in connection with the goods or services specified in the registration."
- By virtue of the Coca-Cola Company's long use, widespread advertising and sales, the "Coke" trademark has come to symbolize the goodwill and reputation built by the Coca-Cola Company over many years. Coke is widely recognized as being among the most famous trademarks in the world, and represents goodwill of extraordinary value.
- The Complainant owns, has registered, and uses a domain name that includes the "Coke" trademark at the website "coke.com" (Complaint Exhibit E).
- The Respondent is using the disputed domain name "CokeUSA.com" for a website that offered this disputed domain name for lease.
- Respondent has registered and owns many other domain names that include famous marks.
- The domain name at issue, "CokeUSA.com", consists of the entire Coke trademark with the addition of the geographic indicator USA. Thus, Respondent's registration and use of the domain name create a strong likelihood of confusion as to source, sponsorship, application, or endorsement of Respondent's website.
- Respondent has no intellectual property rights in the disputed domain name and no bona fide commercial or noncommercial basis for using the domain name.
- The Respondent is in bad faith because the address and contact information provided by Respondent to NSI in connection with the registration of the domain name are false.
- Respondent's true purpose in registering the domain name is to capitalize on the Coca-Cola Company's reputation and goodwill associated with the Coke trademark and to profit from leasing the domain name to third parties.
- The disputed domain name should be transferred to the Complainant.
The Respondent's Contentions
- The Respondent agrees that the Complainant owns the trademark "Coke", but denies that the Complainant now owns or has ever owned or had a commercial interest in the hybrid term CokeUSA as a mark where each component of the disputed domain name is a common generic word, i.e., "coke" and the common and well known acronym "USA".
- The bi-syllabic term "cokeusa" is not known to be registered as a U.S. Trademark.
- The Respondent is using the word coke as a slang derived from the narcotic drug cocaine. Also, there are other generic meanings for "coke": a fuel derived from coal, and the core of a fruit.
- The domain name "CokeUSA.com" is an unexceptional generic combination of two generic root terms. The usage for this domain name is not solely indicative of Coca-Cola related products and nothing else as alleged by the Claimants. The domain name is applicable with equal force to the narcotic drug cocaine, in the sense that it may be used as a website delivering cocaine related information for addicts, promote addiction control, or advise cocaine addicts of support groups or anti-addiction health centers. The disputed domain name "CokeUSA.com" may also find usage by any one or more dozens if not hundreds of makers and purveyors of the coal distillate coke.
- The large number of coke related domain names and attendant websites which may be found on the Internet demonstrates the widespread usage of the word coke for a variety of purposes. Thus it is clear that the Complainant has chosen to harass only the Respondent.
- The Respondent did at one time-- up until 1999 -- have as a business plan the registering and selling of domain names that included famous names and trademarks, but the Respondent has since changed that plan and now sells and leases only generic domain names.
- The disputed domain name should not be transferred to the Complainant.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain name "CokeUSA.com" transferred to it, the Complainant must prove the following (the Policy, paragraph 4(a)(i-iii):
- the domain name is identical or confusingly similar to a trademark 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 was registered and is being used in bad faith
Identical or Confusingly Similar
The Complainant has furnished the Panel a listing of its Coke trademark registrations on the principal register of the USPTO, including no. 415755 registered on August 14, 1945 for non-alcoholic beverages and syrup and no. 1436191 registered on April 14, 1987 for a variety of merchandise including cushions, jewelry and key rings (the Complaint p. 5).
The Respondent has registered the disputed domain name "CokeUSA.com", which consists of the Complainant's famous trademark plus the abbreviation for the United States of America, USA. There is a broad consensus in these proceedings that the addition of a geographic qualifier to a domain name does little to alter the significance of any underlying trademark identicality or similarity. (Inter-IKEA v. Polanski, WIPO Case No. D2000-1614, January 22, 2001; and NIKE, Inc. v. Jaeik Jung, WIPO Case No. D2000-1471, December 30, 2000).
The Respondent argues that the disputed domain name is not confusingly similar to the Complainant's mark because the Respondent is using the domain name in the sense of a common term for cocaine. The Panel does not believe the Respondent's contention and notes that it is unsupported by any corroborating evidence that the domain name is being used on the subject matter of cocaine. On the contrary, the Respondent's first website contained a disclaimer regarding the beverage Coca-Cola and no mention at all about any other use for the word coke (the Complaint, Exhibit G). This strongly indicates to the Panel that the Respondent knew the public would associate the domain name with Complainant's famous beverage and mark. Quite frankly, it appears to the Panel that the Respondent manufactured the cocaine argument for the purposes of this proceeding.
The Panel finds the disputed domain name "CokeUSA.com" is confusingly similar to the Complainant's famous trademark COKE, and that the Complainant has satisfied the first of the three Policy requirements for transfer.
Rights or Legitimate Interests
The Complainant asserts the Respondent has no bona fide commercial rights or intellectual property rights in the disputed domain name. The Respondent has countered that this is not true and has outlined its general business plan and its plan for the disputed domain name in particular.
The Respondent's business is the rental of domain names while placing advertising on the websites to be rented. According to Respondent's own Response, until 1999 the Respondent registered any number of domain names that included the names of famous trademarks or people (Response, p. 4). But, again according to the Respondent's assertions, as of 1999 the Respondent decided that the way to be commercially successful was to register generic domain names. The Panel is highly skeptical of Respondent's assertions in this regard since the Complainant has shown that even in June, 1999 the Respondent registered domain names including the names Bush and Gore (the Complaint, Exhibit J).
The Respondent also asserts that its potential lessee of the disputed domain name would be some type of organization interested in helping curb narcotics use in general, and cocaine use in particular. Again, there is not the slightest bit of evidence to support the Respondent's assertions. And once more, the Panel finds that the Complainant's version of the Respondent's business history and interests is much more believable. This leads the Panel to the conclusion that the Respondent is intentionally marketing the Complainant's trademark good will in the disputed domain name, which is not a legitimate right or interest under the Policy.
The Panel finds the Respondent has no legitimate rights or interests in the disputed domain name.
Registration and Use in Bad Faith
The Complainant and the Respondent agree that the Respondent has been trying to rent out the disputed domain name, "CokeUSA.com". The Respondent advertises the disputed domain name website as a "premium website to enhance your business".
Also, in renting out this and other domain names, the Respondent reserves the right to "place banner advertisements within the site area of your browser window". The Respondent claims not to have control over the advertising, but the Panel dismisses this contention out of hand (Complaint, Exhibit G).
The Panel believes it eminently reasonable to infer that the Respondent would be renting the domain name for far more than the Respondent paid for it. While waiting to rent the disputed domain name, the Respondent also would derive income from placing advertising at the for-rent website to be viewed by the traffic the Respondent calculates the Complainant's famous mark would generate. Respondent's actions violate the Policy at 4b(i) and 4b(iv).
The Panel thus finds the Respondent registered and was using the disputed domain name "CokeUSA.com" in bad faith.
The Panel has found that the Respondent registered a domain name confusingly similar to a trademark in which the Complainant has demonstrated rights while the Respondent has no rights or legitimate interests in the domain name. The Complainant also has demonstrated that the Respondent registered and was using the domain name in bad faith. Therefore, in accord with the Policy paragraph 4 (i) and Rule 15, the Panel orders that the disputed domain name "CokeUSA.com" be transferred from the Respondent, Tantamount Property Trust, to the Complainant, the Coca-Cola Company.
Dennis A. Foster
Date: April 23, 2001