WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Coca-Cola Company v. Wissam Michi aka W Michi aka Wi Michi
Case No. D2007-1670
1. The Parties
Complainant is The Coca-Cola Company, Atlanta, Georgia, United States of America, represented by King & Spalding LLP, United States of America.
Respondent is Wissam Michi, also known as W Michi, also known as Wi Michi, Brooklyn, New York, United States of America.
2. The Domain Names and Registrars
The disputed domain name <cokeblak.com> is registered with GoDaddy.com, Inc. The disputed domain names <cokeblak.net> and <cokeblak.org> are registered with Schlund + Partner AG.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 13, 2007, naming Wissam Michi as Respondent. On November 15, 2007, the Center transmitted by email to GoDaddy.com, Inc. and to Schlund + Partner requests for registrar verification in connection with the domain names at issue. On November 15, 2007, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent W Michi is listed as the registrant of the domain name <cokeblak.com> and providing the contact details. On November 16, 2007, Schlund + Partner AG transmitted by email to the Center its verification response confirming that Respondent Wi Michi is listed as the registrant of the domain names <cokeblak.net> and <cokeblak.org> and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 20, 2007, adding the names W Michi and Wi Michi as Respondents. The Center then verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (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 Respondent of the Complaint, and the proceedings commenced on November 21, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 11, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 12, 2007.
The Center appointed John R. Keys, Jr. as the sole panelist in this matter on December 21, 2007. 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.
4. Factual Background
Complainant owns numerous registrations for the mark COCA-COLA on the Principal Register of the United States Patent and Trademark Office (USPTO). The earliest registration date for any of these marks is January 31, 1928. The following is a list of some of those registrations.
Sample of Complainant’s COCA-COLA Marks
Reg. No. & Date
Description of Goods
All goods in Class 32 (light beverages)
Retail variety store services
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, pajamas, scarfs, scarves, shirts, shorts, shoulder wraps, skirts, sleep shirt, sleepers, socks, suspenders, sweaters, swimsuits, t-shirts, tops, underclothing, underwear, vests
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
In addition, Complainant owns a number of registrations for the trademark COKE on the USPTO’s Principal Register, the earliest of which dates from August 14, 1945. The following is a sample of Complainant’s COKE registrations.
Sample of Complainant’s COKE Marks
Reg. No. & Date
Description of Goods
Non-alcoholic beverages and syrups for beverages (Class 32)
Class 6: containers of metal; key rings of metal; wrapping or binding bands of metal; bottle openers (non-electric); can openers, non-electric cutlery knives; table cutlery (knives, forks and spoons);
Class 9: adding machines; calculating machines; eyeshades; magnetic memo holders; magnets; radios; telephone apparatus; thermometers;
Class 11: air cooling apparatus; lamps;
Class 14: bracelets (jewellery, jewelry (am.)); charms; jewellery; jewelry (am. i); clocks; clocks and watches; electric jewellery; jewelry key rings or key holders of precious metals or gems; lapel pins of precious metal; medallions (jewellery, jewelry (am.)); money clips (precious metals or gems); necklaces (jewellery, jewelry (am.)); pendants of precious metals or gems; pins of precious metal rings (jewellery, jewelry (am.)); stick pins of precious metal; watches
Class 16: adhesive stickers; bookmarkers; calendars; erasable memo pads; folders for papers; greeting cards; mechanical pencils; note books; paintings (pictures); paper clip holders; paper knives (office requisites); paperweights; pencil holders; pencils; penholders; pens (office requisites); playing cards; portfolios for paper; postcards; posters; table napkins of paper; writing pads;
Class 18: attache cases; bags for campers; bags for climbers; beach bags; brief case type portfolios; briefcases; business folders; credit card holders; game bags; handbags; luggage tags; pocket wallets; purses; purses, not of precious metal; traveling bags (cases); traveling sets (leatherware); traveling trunks; trunks (luggage); umbrellas; umbrellas (garden & patio);
Class 20: air cushions, not for medical purposes; air mattresses, not for medical purposes; air pillows, not for medical purposes; boxes of wood or plastic; cushions; mirrors (looking glasses); silvered glass (mirrors);
Class 21: bells & eggs (ornamental table bells & eggs); beverages (heat insulated containers for); bottle openers (housewares); bowls (basins); ceramics for household purpose; coasters, not of paper and other than table linen; crystal (glassware); cups, not of precious metal; decanters; dishes, not of precious metal; figurines (statuettes) of porcelain, terra-cotta or glass; flower pots; glass jars (carboys); goblets, not of precious metal; ice buckets; ice chests for household use; mugs, not of precious metal; pitchers, not of precious metal plates paper); saucers, not of precious metal; spoons; stemware; tankards, not of precious metal; trays for domestic purposes, not of precious metal; trays for domestic purposes, of paper trivets (table utensils); tumblers for drinks;
Class 24: appliance covers; bath linen (except clothing); cloth (dish); dish cloths; finger-tip towels of textile; household linen; pot holder; rags; rugs (traveling) (lap-robes); serviettes of textile; table cloths (not of paper); table mats (not of paper); table napkins of textile; table runners; towels of textile; washing mitts;
Class 25: aprons (clothing); caps (headgear); clothing; hats; headgear for wear; jackets (clothing); neckties; pajamas; shirts; shorts; sun visors; sweat shirts; t-shirts; vests; visors (hat making);
Class 26: badges for wear, not of precious metal; belt clasps; buckles (clothing accessories); tie clips (cosmetic jewelry); tie pins not of precious metal;
Class 27: floor coverings; hangings (wall) not of textile; wall hangings, not of textile;
Class 28: balls for games; balls for games (small); basketball backboards; bats for games; cars (toys); children’s furniture; dart boards; decorations for Christmas trees; die cast metal vehicles; dolls; fishing tackle; golf equipment; golf tees; inflatables; non-powered toy vehicles and accessories; ornaments for Christmas trees; plastic dish set; playing balls; puzzles (jigsaw); rackets; rubber balls; toy banks; toys; train sets; trucks (toys); whistles; yo-yos;
Class 34: ashtrays, not of precious metal, for smokers; lighters for smokers; matches.
On January 20, 2005, Complainant applied to register the trademark COCA-COLA BLAK for a coffee-flavored cola drink. The USPTO registered the mark on the Principal Register, registration number 3,313,553, on October 16, 2007, with a priority date of October 5, 2004.
On April 13, 2005, Respondent registered the domain name <cokeblak.com>.
On September 30, 2005, Complainant applied to register the trademark COKE BLAK for its coffee-flavored cola drink. The USPTO issued a Notice of Allowance for that mark on December 26, 2006, but it is not yet registered.
Respondent registered <cokeblak.net> on January 27, 2006, and <cokeblak.org> on January 28, 2006.
5. Parties’ Contentions
(i) The Domain Names Are Identical or Confusingly Similar to Complainant’s Trademarks
Complainant contends that it owns a number of registrations for its COCA-COLA and COKE marks in the United States of America and many other countries.
Complainant’s right to use the COCA-COLA and COKE marks registered with the USPTO has become incontestable under U.S. law, 15 U.S.C. § 1065 and 1115, and the certificates of registration constitute “conclusive evidence” of “the validity of the registered mark and of the registration of the 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”, 15 U.S.C. § 1115.
Complainant contends that in January and February 2005 there was significant publicity concerning the Complainant’s testing of its new Coca-Cola Blak product and application for COCA-COLA BLAK trademarks, with articles about the product and trademark appearing in the industry publication “Beverage Digest”.
Complainant contends that it has spent millions of dollars in advertising and promoting the COCA-COLA, COKE, COCA-COLA BLAK, and COKE BLAK marks in connection with its products and services throughout the United States of America and the world. Complainant has sold hundreds of millions of dollars worth of its products and services under and in connection with those marks throughout the United States and the world.
Complainant contends that by virtue of the Company’s long use, widespread advertising, and enormous sales, the COCA-COLA, COKE, COCA-COLA BLAK, and COKE BLAK marks have become well-recognized and famous, both in the United States of America and around the world, and represent goodwill of extraordinary value.
Complainant has registered and uses domain names that include the Company’s marks at “www.coca-cola.com”, “www.coke.com”, and “www.coca-colablak.com”.
Complainant further contends that the domain names <cokeblak.com>, <cokeblak.net>, and <cokeblak.org> (Domain Names), are confusingly similar to Complainant’s COKE, COCA-COLA, and COCA-COLA BLAK trademarks, and identical to its COKE BLAK trademark. The addition of “.com”, “.net” and “.org” at the end of each domain name are of no consequence in determining similarity under the UDRP.
Complainant contends that the Domain Names are confusingly similar to Complainant’s COKE trademark in that each contains the entire COKE trademark and trade name of Complainant with the addition of the word “Blak” at the end thereby creating a strong likelihood of confusion as to source, sponsorship, affiliation, or endorsement of Respondent’s domain and website by The Coca-Cola Company. Complainant contends further 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. Complainant cites a number of WIPO UDRP decisions in which the Panel found that the combination, in a domain name, of the word “Coke” with another generic term results in confusing similarity to The Coca-Cola Company’s COKE trademark, including The Coca-Cola Company v. Masud Osman, WIPO Case No. D2001-0618; The Coca-Cola Company v. NW Spur, Leonard Street and Michelle Street, WIPO Case No. D2001-0406; The Coca-Cola Company v. Tantamount Property Trust, WIPO Case No. D2001-0327; and The Coca-Cola Company v. Gamlebyen Invest AS, WIPO Case No. D2000-1677.
Finally, Complainant contends that the Domain Names are also confusingly similar to the COCA-COLA and COCA-COLA BLAK trademarks, noting that courts have said that “[t]he word ‘koke (coke)’ is simply an abbreviation which the public has made of the trademark ‘Coca-Cola’”.
(ii) Respondent Has No Rights or Legitimate Interests in the Domain Names
Complainant contends that Respondent has no rights or legitimate interests in the CokeBlak Domain Names.
Complainant contends that on November 14, 2005, Counsel for Complainant wrote to Respondent requesting that Respondent cease using the Company’s trademarks and delete the <cokeblak.com> domain name or assign it to Complainant. Complainant followed up on this correspondence on December 19, 2005 and January 18, 2006. In response to this communication, Complainant contends that Respondent claims to have selected the <cokeblak.com> domain name because he wished to create a “friends network” geared toward Middle Eastern people, asserting that “Cokeb Lak” means “planet for you” in Lebanese.
Complainant contends, however, that Respondent has made no bona fide use of or demonstrated preparations to use the Domain Names in a bona fide manner. In the 31 months since Respondent registered <cokeblak.com>, he has never placed a “friends network” on the site and has had only a rudimentary “coming soon” page on the site. This use, Complainant contends, is not a bona fide offering of goods or services. Further, where a registrant does not use or make any preparations to use a domain name in connection with the bona fide offering of goods or services, the registrant cannot be commonly known by that domain name.
In addition, Respondent has not registered or sought to register “Coke Blak” or “Cokeb Lak” as trademarks, which Complainant contends is another indication that he has no rights or legitimate interests in the domain names.
With regard to Respondent’s claim that his interest in the Domain Names is motivated by the fact that “Cokeb Lak” is a transliteration of “planet for you” in Arabic, Complainant has determined that “Cokeb Lak” is not a correct transliteration of the Lebanese term for “planet for you”. Rather, the Lebanese term is pronounced “Kawkab Lak”. Further, Respondent has not indicated why such a site would use the English character set rather than the Arabic character set, and why it was necessary to use US-based domains (i.e., .com, .net, and .org) for such a site instead of Arabic-based domains (e.g., .lb). Finally, <kawkablak.com>, <kawkablak.net>, and <kawkablak.org> are all available for registration, but Respondent has chosen not to register them.
Complainant contends that where registrants use famous marks under a claim that the mark represents a translation or transliteration from a foreign language, the majority of UDRP Panel decisions find against the domain name registrant. Further, where the registrant has notice of a mark or the mark is so famous that the registrant is deemed to have notice, explanations that the mark represents a foreign term rather than the trademark are suspect.
In sum, Complainant contends that because “Coke” and “Coke Blak” are famous products marketed under the extraordinarily well-known trademarks of The Coca-Cola Company, Respondent has no right or legitimate interest in <cokeblak.com>, particularly given his dubious explanation as to why he used Complainant’s mark, his failure in over two and a half years to place a legitimate website on any of the domains, the timing of his registration of <cokeblak.com> (shortly after the product was publicly announced), and the timing of his registrations of <cokeblak.net> and <cokeblak.org> (after he was contacted by The Coca-Cola Company).
(iii) Respondent Registered and is Using the Domain Names in Bad Faith
Complainant contends that Respondent registered and is using the Domain Names in bad faith as demonstrated by the following:
The COKE and COCA-COLA trademarks are exceptionally famous and far predate Respondent’s activity.
The news concerning the “Coca-Cola Blak” product appeared at least as early as January 21, 2005 and February 4, 2005, and predate Respondent’s April 13, 2005 registration of the <cokeblak.com> domain name.
The COKE and COCA-COLA trademarks are so famous that Respondent must have been aware of them when selecting the <cokeblak.com> domain. Respondent clearly was aware of the trademarks when selecting the <cokeblak.net> and <cokeblak.org> domains, because Complainant had already contacted him at that point.
Respondent’s story concerning an incorrectly transliterated website which has never appeared in the 31 months since the domain name <cokeblak.com> was registered is not credible. Respondent could have used a different, correct transliteration and a country code and language choices much more fitting to his asserted purpose. The only possible reason he chose to use “Coke Blak” is to make use of The Coca-Cola Company’s well-known trademarks.
Complainant contends that between April 8, 2005, and April 16, 2005 – at the same time that Respondent registered <cokeblak.com> – he also registered other infringing domains such as <4nba.com>, <4nfl.com>, <superbowlgirls.com>, and <mskid.com>. This indicates that Respondent’s intent at the time of registration was to cybersquat. Respondent’s conduct, Complainant contends, demonstrates a pattern of registering third parties’ trademarks and preventing the trademark owners from registering them which constitutes “evidence of the registration and use of a domain name in bad faith”.
Complainant contends that Respondent registered other domain names that include trademarks as well. He also previously registered (but apparently no longer holds) the domains <thedixiechicks.net>, <foxednews.com>, <camillaparkerbowles.org>, and <bmwx.com>.
Finally, Complainant contends that Respondent has held the Domain Names without doing anything with them, again suggesting that his real purpose is cybersquatting. The passive holding of a domain name that is identical or confusingly similar to a well known trademark constitutes registration and use of the domain name in bad faith.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Respondent did not respond to the Complaint, therefore the Panel first considers whether Respondent has been given adequate notice of the proceeding. The evidence indicates the Center sent the Complaint in electronic form, by facsimile, and in hard copy by courier service to the addresses provided in Respondent’s registration information, and that the Complaint was in fact delivered at least in hard copy. The Panel concludes that the Center discharged its responsibility under the Rules to notify Respondent of the Complaint and the administrative proceeding.
Where a respondent does not respond to the complaint, the panel must decide the dispute based upon the complaint. Rules, paragraphs 5(e) and 14(a). The panel is to decide the complaint on the basis of the statements and documents submitted, in accordance with the Policy, the Rules and any principles of law the panel deems applicable. Rules, paragraph 15(a). Under paragraph 14(b) of the Rules, Respondent’s failure to answer entitles the Panel to “draw such inferences therefrom as it considers appropriate”.
Under paragraph 4(a) of the Policy, Complainant must prove each of the following three elements of its case in order to obtain the requested relief:
(i) Respondent’s Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) Respondent’s Domain Names have been registered and are being used in bad faith.
The Panel considers each element in order.
A. Identical or Confusingly Similar
With regard to whether the Domain Names are identical or confusingly similar to trademarks in which Complainant has rights, Complainant clearly possesses legal rights in the trademarks COCA-COLA, COKE, COCA-COLA BLAK, and COKE BLAK. COCA-COLA and COKE are long-registered and widely used marks in the United States of America and other countries around the world. The Panel finds that these two marks are famous marks. In fact, it is difficult to imagine any two trademarks more widely famous than these. COCA-COLA BLAK and COKE BLAK are more recent and might not be famous in themselves. The first has been registered by the USPTO, and the second has been allowed for registration although not yet registered. Both have been used in commerce, publicized, and derive a significant degree of immediate public recognition and identification from their famous COCA-COLA and COKE components.
Each of the Domain Names is identical to Complainant’s COKE BLAK trademark. The additions of the top level domains “.com”, “.net” and “.org” to the word “cokeblak” are properly disregarded when considering a domain name’s identity or confusing similarity to a trademark.
The Domain Names are also confusingly similar to Complainant’s other trademarks. “Cokeblak” is confusingly similar to Complainant’s registered COCA-COLA BLAK mark in that the word “Coke” was derived originally as a short form of “Coca-Cola”. The two have long been associated in public perception as alternative references to the same products. See Coca-Cola Co. v. Busch, 44 F. Supp. 405, 408, 410 (E.D. Pa. 1942) (“[t]he word ‘koke (coke)’ is simply an abbreviation which the public has made of the trademark ‘Coca-Cola.’ and “the abbreviation of the trade-mark which the public has used and adopted as designating the product of the complaint is equally as much to be protected as the trademark itself …”). An Internet user seeing a domain name using the word “cokeblak” would be likely to perceive it as relating to or being associated with “Coke”, “Coca-Cola”, or “Coca-Cola Blak”.
Similarly, the Domain Names are confusingly similar to Complainant’s COKE trademark and, based on the public perception of “Coke” and “Coca-Cola” as alternative identifiers of the same products, probably to the COCA-COLA trademark as well. The Domain Names incorporate Complainant’s COKE mark in its entirety, adding to it the word “blak”, which is in this case essentially descriptive of the black coffee-flavored product. 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. 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998). See General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087.
More specifically, a number of previous WIPO UDRP panels have found that the combination of the word “Coke” with another generic term in a domain name results in confusing similarity to Complainant’s COKE trademark. See, e.g., The Coca-Cola Company v. Masud Osman, WIPO Case No. D2001-0618 (<winatcoke.com>, <cokecoke.com>, and <cokerules.com>); The Coca-Cola Company v. NW Spur, Leonard Street and Michelle Street, WIPO Case No. D2001-0406 (<coketrader.com>); The Coca-Cola Company v. Tantamount Property Trust, WIPO Case No. D2001-0327 (<cokeusa.com>); The Coca-Cola Company v. Gamlebyen Invest AS, WIPO Case No. D2000-1677 (<cocacoladrinks.com>).
Considered in any one of several ways, the Panel finds that each of Respondent’s Domain Names is either identical or confusingly similar to one or more of Complainant’s established trademarks and thus concludes that Complainant has established the first element of its case.
B. Rights or Legitimate Interests
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names, and Respondent, in default here, has not come forward with any evidence or argument that he does.
In support of its own case, Complainant shows that Respondent has not used, or made any demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services. Policy, paragraph 4(c)(i). The first of the three Domain Names was registered in April 2005, and, some 33 months later, no actual use has been made of any of the three Domain Names. There has thus been no showing on the record of a bona fide offering of goods or services or any demonstrated preparations for such an offering, using the Domain Names. The “coming soon” page appearing at <cokeblak.com> does not amount to a bona fide offering of goods or services. See, e.g., Associazione Bancaria Italiana (ABI) v. Secured Assets Corp., WIPO Case No. D2005-0319 ( “parking” a domain name that is identical to a trademark for more than a year with a “Coming Soon” page is not evidence of rights or legitimate interests); Sanofi-Aventis v. The Counsel Group, LLC, WIPO Case No. D2005-0650 (parked domain name on Registrar’s website with “Coming Soon” page insufficient to establish rights or legitimate interests); Virtual Canvas v. Philip Viger, WIPO Case No. D2004-0074 (website with “Coming Soon” page insufficient to establish bona fide offering of goods or services, particularly where website has remained a holding page at all times since registration); Dr. Pfaff GmbH v. Charles Eaton, WIPO Case No. D2002-0320 (website with “Under Construction . . . Please check back at later time” insufficient to establish bona fide offering of goods or services).
Discussion of Respondent’s interests might well end at this point inasmuch as he has made no effort to demonstrate that he has any legitimate interests in the Domain Names. Nevertheless, Complainant, anticipating an argument that has never come, notes that in correspondence with Respondent he asserted that he intended to use the “cokeblak” domains to create a “friends network” for persons from the Middle East and that “cokeb lak” means “planet for you” in Arabic.
The most direct answer to Respondent’s purported argument is that Respondent has not in fact created any such website and has not demonstrated any preparations to do so. In addition, however, Complainant presents substantial evidence that the correct transliteration for the Arabic word for planet is “kawkab”, not “cokeb”. In the absence of any rebuttal by Respondent, Complainant’s evidence on this point is deemed persuasive. It is thus unnecessary to go further into any of the complexities of dealing with transliterations from other languages. Given the foregoing, there is simply no evidence of record that Respondent is using or preparing to use the Domain Names in connection with a bona fide offering of goods or services. The Panel need not deal with Complainant’s remaining contentions.
Complainant has shown that Respondent has no rights or legitimate interests in the Domain Names and thus establishes the second element of its case.
C. Registered and Used in Bad Faith
Complainant must prove that Respondent both registered and is using the Domain Names in bad faith. While it is true that Respondent registered <cokeblak.com> before Complainant applied to register the trademark COKE BLAK, that fact does not avoid a determination of bad faith registration and use given the totality of circumstances here.
First, the evidence is sufficient to attribute to Respondent both constructive and actual knowledge of Complainant’s famous COCA-COLA and COKE trademarks. See 15 U.S.C. § 1072; Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (“As a matter of United States law, Respondent had prior constructive or actual knowledge of Complainant’s trademark” because the mark was registered); Waterman, S.A.S. v. Brian Art, WIPO Case No. D2005-0340 (finding bad faith registration and noting that complainant’s mark was well-known); Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090 (registration of a mark puts a respondent on constructive notice); Microsoft Corporation v. Party Night, Inc. d/b/a/ Peter Carrington, WIPO Case No. D2003-0501 (“It is not reasonable to expect the Respondent to register the disputed Domain Names if the Respondent had no knowledge of the Complainant’s trademark and services in connection thereto”). Prior WIPO UDRP panels have held that actual or constructive knowledge of complainant’s rights in trademarks is a factor supporting bad faith (Ticketmaster Corporation v. Spider Web Design, Inc., WIPO Case No. D2000-1551). Complainant’s COKE and COCA-COLA trademarks are so famous that Respondent must have been aware of them when he registered the Domain Names using the COKE mark as their predominant component.
Second, Respondent’s actual and constructive knowledge of Complainant’s trademarks notwithstanding, Respondent registered the Domain Name <cokeblak.com> shortly after considerable industry publicity concerning Complainant’s testing of a coffee-flavored cola beverage and after Complainant had already applied to register the trademark COCA-COLA BLAK. Respondent then registered the Domain Names <cokeblak.org> and <cokeblak.net> after Complainant applied to register the trademark COKE BLAK and after Complainant had already contacted Respondent and asked him to cease using <cokeblak.com> and to transfer that name to Complainant. Respondent’s actions constituted an opportunistic effort to grab a domain name based on Complainant’s famous COKE and COCA-COLA marks which domain would likely be of great value to Complainant in marketing its new Coke Blak product.
Substantial authority exists to the effect that registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is itself sufficient evidence of bad faith registration and use. Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489, 498 (2d Cir. 2000); Pepperdine University v. BDC Partners, Inc., WIPO Case No. D2006-1003; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith). The Panel finds that Respondent registered the three Domain Names, each of which is identical or confusingly similar to famous trademarks belonging to Complainant, and that Respondent has no demonstrated relationship to or legitimate interest in any of Complainant’s trademarks. This constitutes bad faith registration of the Domain Names.
While Respondent apparently has not used the Domain Names in connection with any active website, there is a well-established line of authority in cases decided under the Policy that the passive holding of a domain name is evidence of bad faith use of the name where other factors are present. Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003; see, e.g., Associazione Bancaria Italiana (ABI) v. Secured Assets Corp., WIPO Case No. D2005-0319 (“parking” a domain name that is identical to a trademark for more than a year with a “Coming Soon” page is evidence of bad faith use); Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090. The Panel finds that such factors exist here.
The principal factor cited in Telstra and other cases is the strength and fame of the trademark involved. As discussed above, Complainant’s trademarks are extremely well known, Complainant having used and registered COKE and COCA-COLA many years before Respondent registered his Domain Names. Respondent had both constructive and actual knowledge of Complainant’s marks but chose nevertheless to seek to exploit them and the goodwill developed in them. As stated previously, registration of a domain name that is confusingly similar to a famous trademark by any entity that has no relationship to that mark is also considered sufficient evidence of bad faith use. Sporty’s Farm L.L.C. v. Sportsman’s Market, Inc., 202 F.3d 489, 498 (2d Cir. 2000); Pepperdine University v. BDC Partners, Inc., WIPO Case No. D2006-1003; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known product by someone with no connection with the product suggests opportunistic bad faith).
Another of the Telstra factors exists here in that Respondent submitted no response to the Complaint and thus provided no evidence of any actual or intended good faith use of the Domain Names. See Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Respondent’s story, conveyed to Complainant in correspondence some two years ago, concerning a planned Arabic “friends” website has not been supported on the record here and, in any event, does not appear to be credible based on the evidence submitted by Complainant. Respondent could have used a different, correct transliteration and a country code and language choices much more fitting to his asserted purpose. The only apparent reason he chose to use “cokeblak” was to make use of Complainant’s well-known trademarks. See Inter Ikea Systems B.V. v. Ikea Systems Internat’l Co. Ltd., WIPO Case No. D2003-0965 (since registrant could have used different transliteration of his name the “only possible reason to use IKEA is to make use of the well-known name IKEA”). As stated in Telstra, it is not possible to conceive a plausible actual or contemplated actual use of the Domain Names by Respondent that would be legitimate. Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Considering the totality of the circumstances here, the Panel concludes that the record is sufficient for the Panel to infer and find bad faith use of the Domain Names from the passive holding of those domains.
Finally, the Panel notes Complainant’s additional contention that Respondent has registered numerous other domain names incorporating the trademarks of third parties. This assertion is suggestive but unnecessary to the Panel’s determination of bad faith here.
Complainant has established the third element of its case.
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 names, <cokeblak.com>, <cokeblak.net>, and <cokeblak.org> be transferred to Complainant.
John R. Keys, Jr.
Dated: January 4, 2008