WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Coca-Cola Company v. Neftali Gonzalez

Case No. D2001Ė0336

 

1. The Parties

(a) Complainant is The Coca-Cola Company, a Delaware Corporation with its principal place of business at Atlanta, Georgia, U.S.A. ("Coca-Cola").

(b) The Complainantís principal contact at Coca-Cola with respect to this dispute is Caroline S. Katz, Esq., Trademark Counsel, The Coca-Cola Company, One Coca-Cola Plaza N.W., Atlanta, Georgia 30313, U.S.A.

(c) The Complainantís authorized representative in this administrative proceeding is Bradley A. Slutsky, Esq., King & Spalding, 191 Peachtree Street, Atlanta, Georgia 30303-1763, U.S.A.

(d) Respondent, according to Network Solutions, Inc. is Neftali Gonzalez, 2473 Field Street #2811, Dallas, Texas 75201, U.S.A. ("Respondent").

 

2. Domain Name and Registrar

(a) The domain name at issue is as follows:

<SiempreCocaCola.com> (The "Infringing Domain Name").

(b) The registrar for the domain name at issue is Network Solutions, Inc. ("NSI").

 

3. Procedural History

(a) On March 7, 2001, the Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by e-mail for decision in accordance with the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy") and in hard copy on March 9, 2001.

(b) The Center verified that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy approved by ICANN on October 24, 1999 (the "Rules") and WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

(c) Payment in the required amount has been made by the Complainant to the Center.

(d) A copy of the Complaint, together with the cover sheet as prescribed by the Supplemental Rules, was sent or transmitted to both the Respondent and to NSI in compliance with the Rules on March 16, 2001.

(e) The Center transmitted to NSI a request for registrar verification in connection with this case.

(f) On March 14, 2001, the Center received NSIís Verification Response, (1) confirming that NSI had received a copy of the Complaint sent by the Complainant in accordance with the Supplemental Rules, (2) confirming that the Infringing Domain Name is registered with NSI, (3) confirming that NSI Service Agreement Version 5 is in effect, (4) confirming that the Respondent is the current registrant of the Infringing Domain Name (5) providing the full contact details that are available in NSIís WHOIS database for the registrant, the technical contact and the administrative contact for the Infringing Domain Name, and (6) stating that the Infringing Domain Name is in "Active" status.

(g) On March 16, 2001, the Center transmitted via post/courier, facsimile and e-mail Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, to the Respondent and to the Complainant. The Center advised that (1) the response was due by April 4, 2001, (2) in the event of default the Center would appoint a Panel to review the facts and to decide the case, (3) the Panel would be entitled to draw such inferences from Respondentís default as it considers appropriate, (4) Coca-Cola had elected for the matter to be decided by a single panelist who would be appointed within five days of the date the response was due, (5) the fees for the administrative proceeding would be paid in their entirety by Coca-Cola, (6) the Panel would decide the case within 14 days of its appointment, and (7) the Center could be contacted at stated postal and e-mail addresses, a stated telephone number, and a stated fax number.

(h) On April 11, 2001, the Center transmitted via e-mail a Notification of Respondent Default to the Respondent and via e-mail to the Complainant advising that Respondent had failed to comply with the deadline indicated in the Notification of Complaint and Commencement of Administrative Proceeding for submission of its Response and advising that the Center would proceed to appoint an Administrative Panel based on the number of panelists designated by the complainant.

(i) On April 24, 2001, the Center transmitted to the Complainant via e-mail and to the Respondent via e-mail, Notification of Appointment of Administrative Panel and Projected Decision Date. The notification advised that Mr. Gaynell C. Methvin had been appointed as the single panelist, and that the decision would be due on May 8, 2001.

(j) On April 24, 2001, the Center transmitted the file in this case via post/courier and e-mail to the appointed panelist, Mr. Methvin.

 

4. Factual Background; Partiesí Contentions

a. The Trademarks

The Complaint (∂∂ 12(a) - 12(l)) is based on various trademarks Coca-Cola registered in the U.S. Patent and Trademark Office ("USPTO") and elsewhere around the world.

Coca-Colaís trademarks, products and services include:

Mark

Reg. No.

Date

Country

Description of Goods/International Class of Goods

Coca-Cola

238145

01/31/28

USA

All goods in Class 32 (light beverages)

Coca-Cola

1508297

10 /11/88

USA

Bath robes, belts (clothing), bibs not of paper, blouses, bodices, body suits, bow ties, clothing, coats, diaper covey, dress bodices, dress shields, exercise pants, gloves (clothing), hats, jackets (clothing), jeans, jogging pants, jumpers (shirt fronts), leggings, leotards, linen (body), neckties, night gown, pants, pyjamas, scarfs, scarves, shirts, shorts, shoulder wraps, skirts, sleep shirt, sleepers, socks, suspenders, sweaters, swimsuits, t-shirts, tops, underclothing, underwear, vests

Coca-Cola

1741955

12/22/92

USA

Retail variety store services

Coca-Cola

1752201

02/16/93

USA

Signs, non-luminous and non-mechanical (of metal), musical diorama, wastebaskets, dish cloths, kitchen linens (made of textiles), napkins, placemats and table runners, toy banks.

Siempre Coca-Cola

1511939

03/31/94

Argentina

32

Siempre Coca-Cola

57942/C

0/03/95

Bolivia

32

Siempre Coca-Cola

418400

12/16/93

Chile

32

Siempre Coca-Cola

156216

02/28/94

Columbia

32

Siempre Coca-Cola

85863

02/09/94

Costa-Rica

32

Siempre Coca-Cola

3002/94MIC

09/02/94

Ecuador

32

Siempre Coca-Cola

79119

08/11/96

Guatemala

32

Siempre Coca-Cola

61248

03/28/95

Honduras

32

Siempre Coca-Cola

441774

09/09/93

Mexico

32

Siempre Coca-Cola

26601CC

09/06/94

Nicaragua

32

Siempre Coca-Cola

70316, 70315

08/23/95

Panama

32, 35

Siempre Coca-Cola

166983

12/16/93

Paraguay

32

Siempre Coca-Cola

2166

10/29/93

Peru

32

Siempre Coca-Cola

33237

08/04/93

Puerto Rico

32

Siempre Coca-Cola

158

05/20/97

El Salvador

32

Siempre Coca-Cola

1752906

12/05/95

Spain

32

Siempre Coca-Cola

262720

03/24/95

Uruguay

32, 35, 38

Always Coca-Cola

1867757

12/13/94

USA

32, 35, 38

 

b. The Complaint

Coca-Cola in support of its position asserts the following:

"12 (a) Since long prior to Respondentís registration of the domain name, Complainant has continuously owned and used the name and mark "Coca-Cola" in connection with its products and services. Large numbers of Complainantís "Coca-Cola" marks are registered with government authorities in the United States and around the world. . .

(b) Since long prior to Respondentís registration of the domain name, Complainant has continuously owned and used the name and mark "Siempre Coca-Cola" in connection with its products and services. "Siempre" is Spanish for "always" and the "Siempre Coca-Cola" mark is used by The Coca-Cola Company in lieu of its "Always Coca-Cola" mark in Spanish-speaking countries. Large numbers of Complainantís "Siempre Coca-Cola" marks are registered with government authorities in numerous countries including Argentina, Bolivia, Chile, Columbia, Costa-Rica, Ecuador, Guatemala, Honduras, Mexico, Nicaragua, Panama, Paraguay, Peru, Puerto Rico, El Salvador, Spain, and Uruguay.

(c) Since long prior to Respondentís registration of the domain name, Complainant has continuously owned and used the name and mark "Always Coca-Cola" in connection with its products and services...It has also been registered and is in use in numerous countries around the world, including, Australia, Benelux, Brazil, China, France, Germany, Spain and other countries throughout Europe, Latin America and Asia.

(d) The Coca-Cola Companyís right to use the "Coca-Cola" and "Always Coca-Cola" marks registered with the USPTO as alleged above have become incontestable under 15 U.S.C. ß 1065 and 1115, and the certificates of registration thereof constitute "conclusive evidence" of "the validity of the registered mark[s] and of the registration of the mark[s], of the registrantís ownership of the mark[s], and of the registrantís exclusive right to use the registered mark[s] in commerce on or in connection with the goods or services specified in the registration." 15 U.S.C. ß 1115.

(e) During the fiscal year ending in September 2000, The Coca-Cola Company spent almost 200 million U.S. dollars to advertise and promote the "Coca-Cola" and "Always Coca-Cola" trademarks in connection with its products and services for the United States, and in excess of $2 million U.S. dollars to advertise and promote the "Siempre Coca-Cola" trademark in connection with its products and services in the above listed countries.

(f) During the fiscal year ending in September 2000, The Coca-Cola Company sold hundred of millions of cases of its products under and in connection with the "Coca-Cola" and "Always Coca-Cola" trademarks throughout the United States, and almost ten million cases of its products under and in connection with the "Coca-Cola" and "Always Coca-Cola" trademarks throughout the United States, and almost ten million cases of its products under and in connection with the "Siempre Coca-Cola" trademarks in the above listed countries.

(g) By virtue of The Coca-Cola Companyís long use, widespread advertising and enormous sales," "Always Coca-Cola" and "Siempre Coca-Cola" trademarks have come to symbolize the goodwill and reputation built by the Coca-Cola Company over many years, are widely recognized as being among the most famous trademarks in the world, and represent goodwill of extraordinary value.

(h) The Complainant also owns, has registered, and uses a domain name that includes the "Coca-Cola" trademark at "www.CocaCola.com". A true and correct copy of the printout of the WHOIS database search conducted on March 6, 2001, showing Complainantís registration of this domain name is attached as Annex D. A true and correct copy of the printout of the home page of Complainantís site is attached as Annex E.

(i) Respondent owns, has registered, and is using the domain name at <www.SiempreCocaCola.com> for a website that mirrors the home page of "Dr. Pepper," a competitor of Complainant. The sole content on Respondentís website is a "Dr. Pepper" beverage can. When the user clicks on the can it places the entire "Dr. Pepper" website into a frame so that the URL continues to reflect <SiempreCocaCola.com>, even when the user browses to internal "Dr. Pepper" pages. None of Respondentís websiteís content is original to the Respondent nor is it affiliated with or authorized by The Coca-Cola Company. A true and correct copy of the printout of the <www.SiempreCocaCola.com> site as it appeared on or about March 6, 2001 is provided as Annex F (it is appended electronically as a Powerpoint file). A true and correct copy of the printout of the "www.DrPepper.com" website as it appeared on March 6, 2001 is provided as Annex G (it is appended electronically as a Powerpoint file). We note that Respondent operates an additional mirror site of the "Dr. Pepper" website at "www.texasarcade.com/com/drpepper.html".

(j) Until several months ago, Respondentís website mirrored the website of "Pepsi," another of Complainantís competitors. A true and correct copy of the printout of the <www.SiempreCocaCola.com> website as it appeared on or about August 2000 is provided as Annex H (it is appended electronically as a Powerpoint file).

(k) The domain name at issue, <SiempreCocaCola.com>, consists of the entire "Coca-Cola" trademark and trade name of Complainant, with the addition of the word "Siempre" prior thereto. As stated above, "Siempre" is Spanish for "always", and "Always Coca-Cola" is one of the most famous trademarks of The Coca-Cola Company and is in widespread use all over the world. The Coca-Cola Company uses the "Siempre Coca-Cola" trademark in Spanish-speaking countries, primarily in Latin America, as detailed above. In light of this extreme similarity between Respondentís <SiempreCocaCola.com> domain name and The Coca-Cola Companyís "Coca-Cola," "Always Coca-Cola" and "Siempre Coca-Cola" trademarks, as well as The Coca-Cola Companyís domain name <CocaCola.com>, Respondentís registration and use of the domain name creates a strong likelihood of confusion as to source, sponsorship, application, or endorsement of the Respondentís website and of the "Dr. Pepper" product by The Coca-Cola Company.

(l) The Respondentís lack of rights in the domain name and its bad faith in registering and using it are demonstrated by numerous facts. Specifically, Complainant submits the following evidence:"

c. Remedies Requested

As for relief, Coca-Cola requests at Paragraph 13:

In accordance with Paragraph 4(b)(i) of the Policy, for the reasons described in Section V above, the Complainant requests the Administrative Panel appointed in this administrative proceeding issue a decision that the contested domain name <SiempreCocaCola.com> be transferred to Complainant.

d. Respondentís Answer

Respondent has filed no answer, or any other document, with the Center.

 

5. Discussion and Findings

Paragraph 4 of the Policy directs that Coca-Cola must prove, with respect to the domain name in issue, each of the following:

(i) The domain names in issue are identical or confusingly similar to the Coca-Cola trademark, and

(ii) Respondent has no rights or legitimate interests in respect of the domain names, and

(iii) The domain names have been registered and are being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for purposes of Paragraph 4(a)(iii) above, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances which, if proved by respondent, shall demonstrate respondentís rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) above.

a. Identity or Confusing Similarity

Coca-Cola urges, and has the burden of proving, that the domain name in dispute is either identical to, or confusingly similar to, the Coca-Cola trademarks. Respondentís failure to respond does not relieve Coca-Cola of its burden of proof on this element or on either of the other two elements of Paragraph 4(a) of the Policy. However, Respondentís failure to deny any of Coca-Colaís averments permits this panel to take Coca-Colaís averments as true and to draw appropriate inferences.

On its face, the domain name in issue incorporates the term "Coca-Cola" and/or "Siempre Coca-Cola". Identity to Coca-Colaís trademarks is clear. In light of the truth and controlling nature of the facts set forth in the Complaint, paragraph 12(a) - (l), the Panel finds that the domain name in issue is confusingly similar to the Coca-Cola trademarks.

b. Rights or Legitimate Interests

On this record, no challenge has been leveled with respect to (1) the validity of any Coca-Cola trademarks or service marks, (2) Coca-Colaís rights in those marks with respect to Coca-Cola services and goods, (3) the global fame and goodwill associated with those marks, or (4) any fact averred by Coca-Cola as to promotion of the marks, use of the marks, and total sales of services and goods under the marks. Accordingly, such facts are found to be true.

No challenge has been leveled with respect to Coca-Colaís averments as to registrantís conduct.

In light of the foregoing, it is found that this record demonstrates that Respondent has no rights or legitimate interests vis-a-vis <SiempreCocaCola.com>.

c. Registration and Use in Bad Faith

Registration of the domain name in issue in bad faith is a matter of the appropriate inferences to draw from circumstantial evidence. Each is to be proved by Coca-Cola.

The facts asserted by Coca-Cola in support of its position that Respondentís registration was in bad faith are found in the Complaint in paragraph 12(l). These facts are incorporated herein by reference and are found to be true. As such, these uncontroverted facts demonstrate that Respondent has registered the domain name <SiempreCocaCola.com> in bad faith.

d. Paragraph 4.c Factors

With respect to the domain name in issue, by failing to respond to the Complaint, Respondent has failed to prove any of the three circumstances set out in Paragraph 4(c) of the Policy, viz.:

(i) before any notice to Respondent of the dispute, Respondentís use of or preparations to use the domain name were in connection with a bona fide offering of goods or services,

(ii) Respondent or a related entity has been commonly known by the domain name, and

(iii) Respondent is making legitimate noncommercial or fair use of the domain name in issue, "without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

As averred by Coca-Cola and properly inferred from the undisputed facts as to Respondentís conduct, each of these three factors must be resolved in favor of Coca-Cola.

 

6. Decision

The panel has jurisdiction of this dispute. Respondent has received notice of the commencement of this proceeding, the Policy, the Complaint, and the consequences of Respondentís default. Respondent has been afforded due process.

With respect to the request for transfer of the domain name at issue, the Panel decides that Coca-Cola has carried its burden of proving (a) the domain name in issue here is identical to or confusingly similar to the Coca-Cola mark, (b) Respondent has no rights and no legitimate interests in respect of the domain name in issue, and (c) the domain name in issue has been registered and used in bad faith by Respondent. Accordingly, the Panel requires that the registration of the domain name <siempreCocaCola.com> be transferred to Coca-Cola.

 


 

Gaynell C. Methvin
Sole Panelist

Dated: May 18, 2001