WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Coca-Cola Company v. Raphael Taieb

Case No. D2001-0754

 

1. The Parties

The Complainant: The Coca-Cola Company, One Coca-Cola Plaza N.W., Atlanta, GA 30313, United States of America.

The Respondent: Raphael Taieb, 89 rue de LíOurq, 75019 Paris, France.

 

2. The Domain Names and Registrar

The domain names in issue are <coca-coladrink.com>, <coca-colaland.com>, and <coca-colaworld.com> (hereafter "the domain names").

The domain names were registered with Gandi, 38 rue Notre-Dame de Nazareth, F-75003, Paris, France.

 

3. Procedural History

(1) The Complaint in Case No. D2001-0754 was filed in email form on June 6, 2001, and in hardcopy form on June 8, 2001.

(2) The WIPO Arbitration and Mediation Center has found that:

- The Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy;

- Payment for filing was properly made;

- The Complaint complies with the formal requirements;

- The Complaint was properly notified in accordance with the Rules, paragraph 2(a);

- No formal Response was filed;

- The Respondent was appropriately notified of default;

- The Administrative Panel was properly constituted.

As Panelist, I accept these findings.

(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

(4) There have been neither further submissions nor communications from the Complainant and Respondent, or their representatives, after the appointment of the Panel.

(5) No extensions have been granted or orders issued in advance of this decision.

(6) The expected date of decision in this proceeding is July 27, 2001.

(7) The language of the proceedings is English.

 

4. Factual Background

A. The Complainant and its marks

The Complainant is the internationally famous producer of the best-known soft drink in the world.

Since long prior to Respondentís registration of the domain names, the Complainant has continuously owned and used the name and mark "Coca-Cola" in connection with its products and services. Large numbers of the Complainantís "Coca-Cola" marks are registered with government authorities in the United States and other countries around the world, including France where the Respondent is located. The following is a representative listing of the "Coca-Cola" marks that Complainant has registered with the United States Patent and Trademark Office ("USPTO"):

Reg. No. & Date

Description of Goods

238145
1/31/1928

All goods in Class 32 (light beverages)

1508297
10/11/1988

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

1741955
12/22/1992

Retail variety store services

1752201
02/16/1993

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

Further, the following is a representative listing of the "Coca-Cola" marks that the Complainant has registered within France:

Reg. No. & Date

Description of Goods

1637788
06/13/1945

All goods in classes 1 - 42

1566702
01/30/1980

All goods in classes 1 - 42

The Complainant also owns a U.S. trademark for "The World of Coca-Cola," U.S. Reg. 1657845 (September 17, 1991), for "exhibition services, namely, operation of a pavilion which displays exhibits and memorabilia concerning the Company, its history and its products", and operates a pavilion called "The World of Coca-Cola" that displays the Complainantís products, their history, information about the Complainant, and similar information.

During the fiscal year ending in September 2000, the Complainant spent in excess of 70 million U.S. dollars to advertise and promote the "Coca-Cola" trademark in connection with its products and services in France, and the Complainant sold in excess of 190 million cases of its products under and in connection with the "Coca-Cola" trademark in France.

B. The Respondent

The Respondent has not filed a Response. According to Gandiís Whois database, the Respondent in this administrative proceeding is Raphael Taieb, of the above address. No other information is known about the Respondent.

C. The Domain Names

The domain names resolve to the home page of the Complainantís main competitor, PepsiCo, Inc. at http://www.pepsi.com/current/index.html.

 

5. Partiesí Contentions

A. The Complainantsí assertions

The Complainant submits that the Respondent's domain names are identical or confusingly similar to the Complainantís marks, for the following reasons:

- The domain names at issue, <coca-colaworld.com>, <coca-colaland.com>, and <coca-coladrink.com>, all consist of the entire "Coca-Cola" trademark and trade name of Complainant, with the addition of a generic word. The first word -- "World" -- clearly implies that the domain name is related to The Coca-Cola Company and thus the domain is confusingly similar to Complainantís "Coca-Cola" mark and domain name, as well as to Complainantís "The World of Coca-Cola" mark. The word "Land" creates a similar impression and the Coca-ColaLand.com domain also is confusingly similar to Complainantís "Coca-Cola" mark and domain name. Last, the word "Drink" is a generic addition to The Coca-Cola Companyís "Coca-Cola" trademark and is widely recognized around the world as the main category of goods used in connection with the "Coca-Cola" trademark. It also is the primary trademark registration class for which the "Coca-Cola" trademark is registered in the U.S. and in France. In light of this extreme similarity between Respondentís <coca-colaworld.com>, <coca-colaland.com>, and <coca-coladrink.com> domain names, on the one hand, and The Coca-Cola Companyís trademarks "Coca-Cola" and "The World of Coca-Cola" (plus its <coca-cola.com> domain), on the other hand, Respondentís registration and use of the domain names creates a strong likelihood of confusion as to source, sponsorship, application, or endorsement of the domain names by The Coca-Cola Company. Numerous ICANN panels have established that the addition of words or letters to a mark used in a domain name does not alter the fact that the domain name is confusingly similar to the mark. See e.g., General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087; citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 and Gorstew Limited, Jamaica, and Unique Vacations, Inc. v. Cottrell Travel, NAF Case 94923; The Coca-Cola Company v. Gamlebyen Invest AS, WIPO Case No. D2000-1677.

The Complainant submits that the Respondent has no legitimate interest or rights in the domain names, and has registered and is using the domain names in bad faith, for the following reasons:

- The Respondentís true purpose in registering the domain names is to profit from the goodwill associated with the "Coca-Cola" mark. This is clearly evident from the fact that the Respondent first wrote to the Complainantís Marketing Department on or about November 2, 2000, stating, inter alia:

"As of several days ago, I am the owner of the following Internet addresses:
- "www.coca-colaworld.com"
- "www.coca-colaland.com"
- "www.coca-coladrink.com"
"I am contacting you in order to propose to you the acquisition of these domain names.
"These domain names are indeed strategic, particularly when one knows that the Coca-Cola site is at the address:
"www.coca-cola-world.com"
"In this regard, Pepsi, Inc. is due to send us a business proposal before November 11, nevertheless, it seems to me appropriate to inform you thereof.
"Awaiting a business proposal from Coca-Cola, I remain
Very truly yours
Raphael Taieb"

This letter clearly demonstrates that the Respondent was aware of The Coca-Cola trademark and of the "strategic" value of the domain names given their great similarity to the Complainantís "Coca-Cola" trademark and its <coca-cola-world.com> domain name. Moreover, the Respondentís offer to sell the domain names to the Complainant or to its main competitor, PepsiCo, Inc., is a clear indication of the Respondentís intent to capitalize on The Coca-Cola Companyís reputation and goodwill associated with the "Coca-Cola" trademark and to profit from the sale of the domain names

- Although the letter does not seek a specific amount, it clearly is not limited to Respondentís out-of-pocket expenses and as such it constitutes bad faith. See Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001 ("Here respondent did not limit its request for payment of out-of-pocket expenses. He sought payment for transfer of the domain name by soliciting offers of any amount through a domain name broker site.... The Complaint also alleges that listing the domain name on that site is Ďfor the purpose of selling or transferring the domain name for valuable consideration in excess of out-of-pocket costs.í... This allegation coupled with the listing documentation support a finding of bad faith use akin to the circumstances described in paragraph 4b(i) of the Policy.").

- Respondent has no bona fide commercial or noncommercial basis for using the domain names. The Coca-Cola Company is one of the largest and best known companies in the world, sells hundreds of millions of cases of its products in the United States and around the world, and has multiple trademarks for "Coca-Cola" in the United States and around the world. Thus, the Respondent clearly was aware of the "Coca-Cola" trademark and sought to harm The Coca-Cola Company by his actions and/or to gain therefrom.

- Respondentís true purpose in registering the domain names is to capitalize on The Coca-Cola Companyís reputation and goodwill associated with the "Coca-Cola" trademark and to divert traffic from the Complainant to Complainantís main competitor -- PepsiCo, Inc. The Respondentís actions are blatantly harming The Coca-Cola Company, and through such actions Respondent is acting in bad faith.

- Respondent registered and is using the domain names for the purpose of selling them for profit. Having failed to obtain an offer from Complainant in response to Respondentís November 2, 2000 letter (and having received a cease and desist letter instead), Respondent no doubt sought to "punish" Complainant by using the domain names to redirect traffic to Complainantís main competitor.

- On or about March 24, 2001, a user who was looking for Complainantís website complained to Complainant that he had stumbled on the "Coca-ColaWorld.com" domain name and was redirected to the PepsiCo website. Thus, there is at least initial interest confusion and/or dilution as a result of Respondentís conduct.

- Complainantís "Coca-Cola" trademark is famous under Section 43(c) of the U.S. Lanham Act, 15 U.S.C. ß 1125(c). Respondent is using the domain names for the purpose of intentionally diverting users from Complainantís sites to those of its main competitor and this commercial use is likely to cause dilution of the "Coca-Cola" trademark by lessening its capacity to identify and distinguish Complainantís goods and services. Respondentsí actions thereby constitute unlawful dilution under Section 43(c) of the U.S. Lanham Act, 15 U.S.C. ß 1125(c).

- On several occasions ICANN panels have addressed the legitimacy of a respondentís use of a domain name to redirect users to another site. All such uses were found to be in violation of ICANNís Policy even if there was no commercial intent.

Accordingly the Complainant requests that the Panel order that the domain names be transferred to the Complainant.

B. The Respondentís assertions

The Respondent has not filed a Response.

 

6. Discussion and Findings

Paragraph 4.a. requires the Complainant to make out three elements:

a). The Complainant has rights in a trade or service mark, with which Respondentís domain name is identical or confusingly similar (paragraph 4.a.(i)); and

b). The Respondent has no rights or legitimate interests in respect of the domain name (paragraph 4.a.(ii)); and

c). The Respondent registered and is using the domain name in bad faith (paragraph 4.a.(iii)).

A. The Complainant has rights in a trade or service mark, with which Respondentís domain name is identical or confusingly similar.

There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.

The Complainant has provided the registration documents for its "Coca-Cola" marks in the US and France, and its "The World of Coca-Cola" mark in the US. I conclude that the Complainant Ė as registered proprietor of the marks Ė has established the first requirement of this paragraph; that is, that it has rights in a relevant trademark.

The second requirement is that the domain name be identical or confusingly similar to the marks. I conclude that the domain names are all confusingly similar to the Complainantís marks. These marks are amongst the most famous and distinctive marks in all the world. Generally it is fair to say that virtually any use of any word that incorporates these marks by anyone other than the Complainant, is going to lead to confusion in the minds of consumers. Specifically, in respect of the first domain name, <coca-coladrink.com>, the domain name is the concatenation of Complainantís famous mark together with the category of product that it famously sells. Anyone coming across the domain name will inevitably be confused as to its source. No further analysis is necessary. The other two domain names <coca-colaland.com> and <coca-colaworld.com>, comprise the Complainantís famous mark together with a generic suffix, "land" or "world". Other Panels within the UDRP have found that this leads to confusing similarity and I am happy to add my voice to this view, see Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; Yahoo!, Inc. v. Eitan Zviely, et al, WIPO Case No. D2000-0273; Shopping24 Gesellschaft für multimediale Anwendungen GmbH v. Christian Rommel, WIPO Case No. D2000-0508; CLT-UFA SA v. This Domain is for Sale, WIPO Case No. D2000-0801. This is to be contrasted with the situation of a non-distinctive or non-famous mark, paired with a generic suffix, see for example Micron Technology, Inc. v. ThisDomain isForSale, WIPO Case No. D2001-0712. In this case, the suffixes of "land" and "world" do not obviate the confusion that will occur if a consumer encounters the mark "coca-cola" in a domain name with the generic suffix appended.

The Complainant has shown that it has rights in trademarks, and that the domain names are confusingly similar to these marks. I conclude therefore that the Complainant has satisfied the requirements of paragraph 4.a.(i) of the UDRP.

B. The Respondent has no rights or legitimate interest in respect of the domain name.

The Complainant asserts that the Respondent has no rights or legitimate interest in the domain name, as required under paragraph 4.a.(ii) of the UDRP. It makes a number of specific arguments on this point, as provided above in section 5.

In any event, in the absence of a Response, I consider it necessary to analyse whether any of the defences provided in Paragraph 4.c. might apply. Paragraph 4.c. of the UDRP provides the following examples to the Respondent:

"(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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."

There is absolutely no evidence that any of the scenarios of Paragraph 4.c apply here. The Complainantís marks are probably the most famous marks in the world. It is therefore difficult to think of how anyone could establish a legitimate interest in any name that included the words "coca-cola". Moreover, the Respondentís letter to the Complainantóindicating that he seeks to profit from the opportunistic registration of the domain nameóremoves any fear that he might have a legitimate interest or rights in the domain name.

As a result I conclude that, even having considered the possible application of Paragraph 4.c., the Respondent has no rights or legitimate interest in the domain name. I conclude that the Complainant has satisfied the requirements of paragraph 4.a.(ii) of the UDRP.

C. The Respondent registered and is using the domain name in bad faith.

The final issue is that of bad faith registration and use by the Respondent. For paragraph 4.a.(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and continues to use it in bad faith.

The Respondentís letter of November 2, 2000 indicates that he is an abusive registrant, and proposes the transfer of the domain name to the Complainant after noting the importance of the domain names to the Complainant. I consider this to be a clear example of bad faith, as provided in paragraph 4.b.(i). Though the Respondent does not indicate a figure, it is apparentóboth from the language and the fact that he contacted the Complainant with the unsolicited offeróthat he intends to seek greater than his out-of-pocket costs.

I therefore conclude that the Complainant has satisfied paragraph 4.a.(iii) of the UDRP.

 

7. Decision

The Complainant has made out all of the elements of paragraph 4.a. of the Uniform Domain Name Dispute Resolution Policy.

Pursuant to Paragraph 4.i. of the Uniform Domain Name Dispute Resolution Policy and Rule 15 of the Rules for the Uniform Domain Name Dispute Resolution Policy, the requested remedy is granted.

I hereby order that the domain names <coca-coladrink.com>, <coca-colaland.com>, and <coca-colaworld.com> be transferred forthwith to the Complainant.

 


 

Dan Hunter
Sole Panelist

Dated: July 27, 2001