The Complainant is The Coca-Cola Company of Atlanta, Georgia, United States of America, represented by Simmons & Simmons, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Whois Privacy Service of Jingan, Shanghai, the People's Republic of China.
The domain name <cokezone.com> is registered with Fabulous.com (herein “the disputed domain name”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 19, 2010. On January 19, 2010, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the disputed domain name. On January 20, 2010 Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 the Respondent of the Complaint, and the proceedings commenced on January 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2010. An e-mail which purports to be a Response was filed with the Center on February 10, 2010.
The Center appointed J. Nelson Landry as the sole panelist in this matter on March 3, 2010. 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.
The Coca-Cola beverage was invented in 1886 in the United States of America and was subsequently also known as the COKE beverage. The trademark COKE was first used in commerce in December 1941 in the United States and its use was subsequently extended to many countries around the world (herein the “Trademark COKE”). Thereafter, other cola beverages were developed and marketed under several trademarks including the word COKE namely DIET COKE, CHERRY COKE, COKE ZERO, COKE BLAK AND VANILLA COKE (herein the “Family of COKE Trademarks”).
In an Interbrand consultation in 2009, the brand Coca-Cola/COKE was evaluated and ranked the most valuable brand of the world, estimated in excess of USD 68 million. Within the past ten years, the Coca-Cola/COKE brand has consistently ranked as the world's most valuable brand amongst the top 20 brands.
The Trademark COKE was first registered by the Complainant in the United Kingdom in 1942 and the Complainant has registered a large number of registrations of said Trademark in many countries of the world in association with a wide range of goods and services as illustrated by four registrations between 1944 and 2002 in association with class 32, including one of these registered in 1985 in association with 15 other classes.
In addition to the first registration in United Kingdom, DIET COKE was registered in class 32 in United Kingdom in 1982. A community trademark registration for COKE was filed on February 2001 in association with 18 classes. Registrations for the Trademark COKE were filed in Australia in 1943 and in China in 1982, both in class 32.
The Trademark COKE was considered by different administrative panels in previous UDRP decisions in which the rights of the Complainant in its registered and unregistered Trademark COKE were acknowledged in respect of, amongst others, the following domain names: <rockncoke.net>, <cokeatlanta.com>, <cokecolacollectables.com>, <cokepromotions.com>, <cokeblak.com>, <cokeblak.net>, <cokeblak.org>, <cokestore.com>, <cocacolastore.com>, <cokecoke.com>, <cokerules.com>, <winatcoke.com>, <coketrader.com> and <cokeusa.com>.
The disputed domain name was registered on July 6, 2007.
The Complainant has no legal or business relationship with the Respondent and has not given any license, permission or authorization to the Respondent to use the Trademark COKE or the disputed domain name.
The Respondent has parked the disputed domain name at a website corresponding to it (herein the “Website”).
According to Annex 5 to the Complaint, the Website under the disputed domain name displays different adverts with sponsored listings such as a muslim dating website, a general online dating service. Some of the adverts show products or services related to those of the Complainant such as Schweppes beverages and an image of a cola-coloured beverage not associated with any trademark.
The Complainant represents that, by reason of the extended and worldwide use of the COKE Trademark and the associated trademarks in the family of COKE Trademarks which it owns, its COKE Trademark has achieved extensive reputation, goodwill and fame in the United States and around the world. By reason of such extensive use of the Trademark COKE and its registration in, inter alia, the United States, United Kingdom, the European Community, Australia and China, the Complainant contends it has rights in its COKE Trademark and the family of COKE Trademarks.
The Complainant further represents that the addition of the generic term “zone” to COKE results in confusing similarity to the COKE Trademark and in this respect relies on the following WIPO UDRP Administrative Panel decisions: The Coca-Cola Company v. Masud Osman, WIPO Case No. D2001-0618 (<cokecoke.com>, <cokerules.com> and <winatcoke.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>) and The Coca-Cola Company v. Gamlebyen Invest AS, WIPO Case No. D2000-1677 (<cocacoladrinks.com>).
According to the Complainant and its evidence, the Website under the disputed domain name is parked. The one “parked” page provides links to two dating sponsored websites (as mentioned hereinabove) and contains a search engine (presumably to locate the Complainant's COCA-COLA products) and a header menu with links titled “Coca-Cola”, “Soda”, “Cola”, “Drink”, “Food”, “Juice” and “Concentrate”. These links however, rather than resolving to another website, direct back to the Website.
On the basis of this evidence of the Respondent's “parked” Website, the Complainant submits that there is no evidence that the Respondent has used or made demonstrable preparation to use the disputed domain name in connection with a bona fide offering of goods and services, is commonly known by the disputed domain name or is making a legitimate noncommercial of fair use of the disputed domain name without intent for commercial gain or to divert consumers or to tarnish the Complainant's COKE Trademark. The Complainant relies on the fact that the reference to the Schweppes beverages does not necessarily relate to the Complainant, in that the said Schweppes brands are owned by different companies, namely by the Complainant in United Kingdom, while not in Europe, the United States or Australia.
The Complainant submits that there is no legitimate use of the word “coke” or the disputed domain name and that there is no explicable reason as to why the Respondent chose the disputed domain name.
The Complainant relies on previous WIPO UDRP administrative panel decisions and their findings that the use of a domain name for a “parked” website does not represent a right or legitimate interest in a domain name. See Compart AG v. Compart.com / Vertical Axis, Inc., WIPO Case No. D2009-0462.
Again in respect of the Respondent using the “parked” Website, the Complainant relies on earlier decisions to claim that the disputed domain name was registered and used in bad faith. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267, in which particular case, the administrative panel had mentioned the click-through revenues generated by the parking company, which revenues are frequently shared in some manner with the owner of the domain name. See also Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415, in which case, the panel stated that “the disputed domain names appear designed to attract Internet users who are looking for [c]omplainant's PRO FORCE goods, appear to cause confusion with [c]omplainant's marks and websites, appear to disrupt [c]omplainant's business by diverting consumers away from [c]omplainant's websites, and do all of these things for commercial gain because [r]espondent profits from the PPC revenue generated by these websites.”
According to the Complainant “the Respondent is obtaining a financial benefit from web traffic diverted through the [disputed] [d]omain [n]ame to linked websites on the [Website]”. The Complainant represents that in view of the vast reputation of the COKE Trademark, the only reasonable inference that can be drawn is that the disputed domain name was registered and used with the view of attracting Internet users for commercial gain to the Website by creating a likelihood of confusion with the Complainant's COKE Trademark as to the source, sponsorship, affiliation or endorsement of the Website, the whole in breach of paragraph 4(b)(iv) of the Policy and therefore contends that this registration and use is in bad faith.
Finally, the Complainant alleges that the association made by the Respondent with COKE in the disputed domain name is unfairly detrimental to the Complainant because of the confusion generated by these activities possibly connected with the Complainant, the damages to the exclusive association of COKE with the non-alcoholic beverages of the Complainant and the taking of unfair advantages of the rights in the Trademark COKE. By such activities of the Respondent, the Complainant further alleges that its customers seeking information on its COKE products would be diverted from it and its legitimate business would be disrupted.
The Respondent sent a Response to the Center by e-mail dated February 10, 2010. The e-mail, which according to the Respondent represents its Response, is not signed and not certified in accordance with the Policy and the Rules as the Complaint was.
In respect of the first criterion, identity or confusingly similarity, the Respondent's Response provides the following statement: “We agree that the Complainant has rights in the mark ‘coke'”. It but does not comment about the allegation of confusing similarity.
The Respondent submits that it is making a legitimate use of the disputed domain name in having parked said domain name at its Website where it adverts are automatically optimized to the interests of visitors to said domain as being shown. Visitors are thus given the opportunity to click on advertisements for goods of interests to them. In this respect the Respondent claims to generally rely on “previous WIPO UDRP panels” without giving a single reference or citation.
Again without giving a reference, the Respondent represents that panelists who see in parking a domain name an inference that such parking is a bad faith attempt to profit from complainant's activities, “do not appear to give credence to the possibility that domains have inherent value due to their generic meaning, or that these generic domains will attract direct navigation traffic”.
The Respondent states that the Website displays different adverts depending on the time it is viewed and the location of the visitors and that some of the adverts show products or services related to those of the Complainant. The Respondent represents that an Internet user viewing such a parked website would not have any doubt about this being an unofficial website and consequently one cannot infer that the Respondent set out to mislead Internet users. In this respect, the Respondent relies on the WIPO UDRP Administrative Panel decision in Dr. Ing. h.c. F. Porsche AG v. The Eight Black Group, Simon Chen and Denise Marble, WIPO Case No. D2009-0989 (involving <porscheexperience.com> and <porschguides.com>) from which it quotes the following citation: “Although the complainant's mark has a very high reputation, it does not follow that any use of it in a domain name would be in bad faith for the purpose of the Policy”. Relying on this argument, decision and citation, the Respondent contends that the disputed domain name was not registered and used in bad faith as alleged by the Complainant.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The Respondent has filed in this proceeding an e-mail message in which the Respondent indicated “This is our response to the complaint about cokezone.com”, but which is not signed nor certified. The Center has left it to the Panel's discretion to decide whether this document should be considered as a Response in its present state.
The Panel does not want to deprive the Respondent from presenting its views and arguments in this case on the one hand, and did not see any utility in requesting the Respondent to sign and certify the document in view of the absence of factual evidence therein on the other hand. The Panel has elected to consider the Respondent's Response e-mail in its current state and to analyze it accordingly without seeking comments from the Complainant.
The Complainant has provided substantial and convincing evidence to establish that it has rights in the Trademark COKE and the Family of COKE Trademarks, which it has used for nearly seventy years in respect of the Trademark COKE and which has been the confirmed by administrative panels in earlier WIPO UDRP decisions mentioned herein about the ownership of these trademarks. It is not surprising that the Respondent has acknowledged that the Complainant has these rights.
Furthermore the Complainant has also established that the Coca-Cola/COKE Trademark has a high value worldwide and has been a leader in the 20 top ranking brands in the last ten years. The Panel finds that this trademark is famous notwithstanding the fact the word “coke” may have a generic meaning. It is appropriate to note that the Respondent did not deny being aware of its existence and ownership in the hands of the Complainant.
The mere addition of the generic term “zone” does not in any way diminish or eliminate the confusion between the disputed domain name and the Trademark COKE of the Complainant. Similarly to earlier administrative panels in WIPO UDRP cases referred to by the Complainant with which the Panel concurs, the Panel finds that in this combination of the Trademark with a generic term “zone”, the disputed domain name is confusingly similar to the Trademark.
The first criterion has been met.
The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name by stating that the Respondent has never been known by the disputed domain name, and is not making legitimate noncommercial or fair use of the disputed domain name. Furthermore, the Complainant has never given a license, nor in any way authorized the Respondent to make use of the Complainant's Trademark COKE. There is no evidence that the Respondent has ever engaged in any legitimate business under the Complainant's Trademark.
The one page evidence of the Website provided with the Complaint, and the page that the Panel observed upon visiting the Website, clearly show that there are listed thereon sponsored links and at least two of these are not related to non-alcoholic beverages, but rather dating links. Further, the non-alcoholic cola illustration is apparently not one associated with the Trademark COKE nor any of the family of COKE Trademarks.
While the Respondent filed what it considers a Response, it did not take advantage of this opportunity to explain how it might not have been trying to benefit from or “ride on” the reputation of one of the most famous trademarks in the world, the existence of which it did not deny, nor did it deny deriving benefit from these sponsored links. The Respondent mentions that previous WIPO UDRP panels have found that a parked website is a legitimate use of a domain name, but does not cite a single specific panel decision to support the assertion. Furthermore the Respondent does not explain how the presence of sponsored dating links and mention of “videos eroticos gratis”, under Related Searches on its Website when the Panel visited the Website, amounts to a bona fide offering of goods of services.
The Panel finds that in view of the present circumstances and the evidence, the adoption, registration and use of the disputed domain name by the Respondent is, in the Respondent's words, a “parasitic attempt to profit from the legitimate development activity of others”, namely the famous trademarks of the Complainant. Contrary to the representations of the Respondent (that allegedly panelists do not give credence to the possibility that certain domain names have inherent value due to their generic meaning), the Respondent does not provide any evidence nor explanation about the alleged generic meaning of the disputed domain name. The Respondent did not explain why the Trademark COKE was chosen instead of, perhaps, “cone”, “code” or “core” which are all common generic terms. It is farfetched in this Panel's view to represent that the Internet visitors upon seeing <cokezone.com> would readily see in the “coke” term a fuel product, rather than the famous Trademark COKE, and will be influenced by the fact that the Website is obviously not an official site of the Complainant. The presence of several terms such as “Coca-Cola”, “Soda” and “Fanta” on the Website would confirm to the Internet visitors that there is a relationship, as sought by the Respondent, with the products of the Complainant under the famous COKE Trademark.
The Panel finds that the Respondent is not making a legitimate non-commercial or fair use of the disputed domain name and that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The second criterion has been met.
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
(i) circumstances indicating that [the respondent] ha[s] registered or [the respondent] ha[s] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the domain name; or
(ii) [the respondent] ha[s] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent] ha[s] engaged in a pattern of such conduct; or
(iii) [the respondent] ha[s] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent] ha[s] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [the respondent's] website or location or of a product or service on [the respondent's] website or location.
In respect of this criterion, the Complainant has made sound and serious representations, as outlined herein, well supported with UDRP panel decisions in respect of the Respondent's Website and the latter's benefit from Internet traffic diverted through the Website to other linked websites present on the parked page. The Panel notes that the Respondent did not deny that revenues, as alleged, are derived in this manner, thus representing a financial benefit for the Respondent.
The Respondent attempts to justify its choice and use of the disputed domain name in relying on and quoting from the administrative panel decision in Dr. Ing. h.c. F. Porsche AG, supra, pertaining to the domain names <porscheexperience.com> and <porscheguides.com>, where, despite the very high reputation of the mark PORSCHE noted by the Panel, there was no finding of use in bad faith (herein the Porsche decision). A careful review and consideration of this recent Porsche decision brings out facts and circumstances that distinguish the facts of this decision from the facts of the present case under consideration.
While the respondent in the Porsche decision, a long-time owner of different Porsche cars and admirer thereof, had according to the complainant registered the two domain names to promote an electronic book, the panel observed that one of the two domain names had not been used. The book that the respondent wished to promote was “an electronic book providing information about Porsche cars, entitled ‘The Ultimate Guide to the Porsche Brand'”. The panel noted therein that the respondent was not using the domain names to sell any other goods or services and that this was not a “'bait and switch operation'”. In view of these facts, where the activities of the respondent were solely in respect of promoting his book and putting forward his positive experience as a Porsche car owner, the panel did not see any bad faith therein.
We are facing quite a different situation in the present case and circumstances. We are in the presence of the use of a domain name with a deliberate and sought-after confusing similarity to the Trademark COKE and the Respondent has not advanced any evidence or convincing arguments to rebut the circumstances of bad faith in paragraph 4(b)(iv) of the Policy. The Panel considers that the Respondent has intentionally attempted to attract for commercial gain Internet users to its Website by creating a likelihood of confusion with the Complainant's Trademark COKE as to the source, sponsorship, affiliation, or endorsement of its Website. The Respondent's redirection of Internet visitors to dating websites by using sponsored links is not distinguished from numerous instances in earlier WIPO UDRP decisions where Internet visitors were redirected to other unrelated third-party websites. All these activities are characterized as bad faith and the question of whether the Website appears to be a non-official one does not come into play in this Panel's view.
Under the circumstances and evidence in this case, different and distinguishable from that in the Porsche decision cited by the Respondent, the Panel finds that the Respondent has registered the disputed domain name in bad faith and used it in bad faith.
The third criterion has been met.
The Panel concludes that:
(a) the disputed domain name <cokezone.com> is confusingly similar to the Trademark COKE in which the Complainant has rights;
(b) the Respondent has no rights or legitimate interest in the disputed domain name;
(c) the disputed domain name has been registered and is being used in bad faith.
Therefore, in accordance with paragraphs 4(a) and 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <cokezone.com> be transferred to the Complainant.
J. Nelson Landry
Dated: March 16, 2010