WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Coca-Cola Company v. MyFanta Network, S.L.
Case No. D2011-2063
1. The Parties
The Complainant is The Coca-Cola Company of Atlanta, Georgia, United States of America, represented by Hoyng Monegier LLP, Spain.
The Respondent is MyFanta Network, S.L. of Tortosa, Spain, represented by González Mogena, Spain.
2. The Domain Name and Registrar
The disputed domain name <myfanta.com> is registered with Hostopia.com Inc. d/b/a Aplus.net.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 23, 2011. On November 23, 2011, the Center transmitted by email to Hostopia.com Inc. d/b/a Aplus.net a request for registrar verification in connection with the disputed domain name. On November 28, 2011, Hostopia.com Inc. d/b/a Aplus.net transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant 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 29, 2011.
The Center 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” 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 December 1, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was December 21, 2011. On December 14, 2011, the Center received a request from the Respondent for the proceedings to be held in Spanish. The Center replied on the same day, stating, inter alia, that under the Rules the language of proceedings is the language of the Registration Agreement, unless determined otherwise by the Panel. The Response was filed with the Center on December 20, 2011.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on January 5, 2012. 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
According to the Complainant, The Coca-Cola Company, it is a purveyor of soft drinks and is one of the best known companies in the world. A major product of the Complainant is a range of soft drinks labelled Fanta. The Complainant owns trademarks for FANTA including the following:
Community trademark registration No. 2091817 FANTA (Word), granted and in force with a filing date of February 16, 2001, to cover multiple goods and services, including class 32 products and telecommunications in class 38;
Community trademark registration No. 002180537 FANTA (composite), granted and in force with a filing date of April 17, 2001;
Spanish trademark registration No. 177995 FANTA (Word), granted and in force with a filing date of January 23, 1946;
Spanish trademark registration No. 589131 FANTA (Word), granted and in force with a filing date of May 21, 1969.
According to the Respondent, it was founded for the creation and technological operation of a social network and has a presence in the world of technology and information science. It is the acknowledged registrant of the disputed domain name <myfanta.com>, which was created on January 24, 2009.
5. Parties’ Contentions
The Complainant contends that it has rights in the FANTA trademarks listed above and has produced copies of registration documents for Community trademarks from the Office for Harmonization in the Internal Market and for Spanish trademarks from the Spanish Office of Patents and Marks.
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights. The trademark FANTA is over seventy years old and is particularly well known in the Respondent’s country of Spain. Substantial documentation is submitted as to the international fame of the trademark FANTA. The disputed domain name incorporates the FANTA trademark entirely following the non-distinguishing term “my”.
The Complainant also has an Internet presence incorporating its trademark, including:
the website “www.movil.fanta.es” where there is an online game called FANTA Virtual Tennis;
the website “www.juegafantanordic.com” which includes a game associated with goods bearing the FANTA trademark;
the website “www.fanta.msite.tv” where ringtones, screen savers and games for mobile telephones can be downloaded and which is directly associated with the FANTA trademark;
news published on the website “www.marketingdirecto.com” on 15 April 2007, entitled “Fanta Presents “Fantavision”, The First Sitcom On The Web” where reference is made to a campaign launched by the Complainant created for Internet, mobile telephones and video consoles and broadcast over the website “www.fanta.es”.
The Complainant submits that the fact that the Complainant’s trademark enjoys an undeniable reputation grants it special protection in accordance with Spanish, European and international trademark law. The Spanish Patent and Trademark Office on August 6, 2010, acknowledged the incompatibility of a MYFANTA trademark (not purely a word mark but rather a composite mark) with the earlier rights of the Complainant over the mark FANTA (Word). An appeal by the Respondent against this decision was dismissed by the Spanish Patent and Trademark Office Board of Appeal.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Searches of the Spanish Patent and Trademark Office, and of Community and international trademarks, have not found evidence of the Respondent owing trademarks for MYFANTA or FANTA.
The Complainant submits a report on the entity Myfanta Network, S.L., arising out of research conducted by an enquiry agent, and contends that Myfanta Network, S.L., is a shell company. The Complainant says that Myfanta Network, S.L., does not really exist, has no activity and its bank account did not reflect any activity.
An associated company of the Respondent, namely Net Service Syst Spain S.L., is the registrant of other challenged domain names based on “myfanta” including <myfanta.info>, <myfanta.mobi>, <myfanta.net>, <myfanta.org>, <myfanta.eu> and <myfanta.us>, and was the original applicant for the Spanish trademark MYFANTA (composite).
The Complainant further contends that the disputed domain name was registered and is being used in bad faith and is inactive. The Respondent could not ignore the extremely well-known trademark FANTA, one of the best known brands in Spain with over 50% share of the relevant market. It is submitted, with previous decisions under the UDRP cited, that the registration of a domain name identical to a well-known trademark of which a respondent was or should have been aware constitutes bad faith.
The Complainant draws a parallel between the disputed domain name containing the expression “myfanta” and the Complainant’s domain name <mycoke.com>, which refers to the Complainant’s well-known product Coca-Cola and its popular abbreviation “Coke”.
The Complainant sent a cease and desist letter setting out its position to the Respondent on April 28, 2010, and subsequently. A reply was received from the Respondent’s representative. Correspondence between these parties over some months led to restatements of each party’s position and did not lead to a resolution of the dispute.
The Complainant submits that the Respondent’s use of the disputed domain name amounts to passive holding, which according to previous decisions under the UDRP may be a ground for a finding of use in bad faith.
The Complainant has cited a number of previous decisions under the UDRP that it considers should be treated as precedent by the Panel.
The Complainant requests the transfer of the disputed domain name.
The Respondent contests the Complaint.
The Respondent contests that the disputed domain name is identical or confusingly similar to the Complainant’s trademark FANTA. The terms have to be compared as a whole and “myfanta” comprises three syllables, compared with two in FANTA.
The Respondent says public knowledge of the FANTA trademark is not relevant because the disputed domain name and the Complainant’s trademark exist in different fields of business.
The Respondent states there is no doubt that Fanta is a soft drink manufactured by the Coca-Cola Company and that all documentation found in respect of the FANTA trademark is related to the soft drink.
The Respondent contends that Myfanta Network, S.L., is a company incorporated primarily by the partners of Net-Service Syst Spain, S.L., for the creation and technological operation of a social network and therefore is present in the world of technology and information science, not soft drinks.
The Respondent says that the decision of the Spanish Patent and Trademark Office to refuse the registration of the MYFANTA trademark is under judicial review by the High Court of Justice in Madrid, Case No. 434/10.
The Respondent further contends that it has rights or legitimate interests in respect of the disputed domain name. Myfanta Network, S.L., is not a front company as asserted by the Complainant, for reasons that include:
the MYFANTA trademark application is being considered in a judicial review;
the Respondent and its partners intended from the outset to create a social network called “myfanta”, and for this reason, they created the company Myfanta Network, S.L.;
Myfanta Network, S.L., was incorporated with the intention of creating an innovative, revolutionary social network different from all the other social networks. It is a social project based on the fantasy of changing the rules of the game, from which the word “myfanta” derives. The Respondent invites the Panel or the Complainant to access the project by means of a username and password;
Myfanta Network, S.L., has a deed of incorporation, produced in evidence;
Myfanta Network, S.L., has been registered in the Spanish Tax Agency;
Myfanta Network, S.L., has requested a loan from the banking institution La Caixa, and holds an account with the banking institution Caixa Sabadell;
Myfanta Network, S.L., has been registered in the Spanish General Social Security Treasury;
Myfanta Network, S.L., is registered in the Spanish Data Protection Agency;
Myfanta Network, S.L., has numerous expenses, one of which is the contracting of broadband services from the company Iberbanda to develop its social network;
the Complainant’s assertion that the Respondent does not have a nameplate at its registered address is of no consequence;
FANTA is not an exclusive trademark of the Complainant since there exist:
Community trademark no. 9015413 NEW FANTACHROME
Community trademark no. 8561458 FANTATOR
Community trademark no. 8797003 FANTASI
Trademark no. 238296 FANTASIT
Trademark no. 1620203 FANTASY TOURS
Trademark no. 1787388 FANTAGRAPHY
Trademark no. 2004101 FANTASMIKOS
Trademark no. 2055254 FANTASVILLE
Trademark no. 2187882 FANTAZIA LIVE IN IBIZA
Trademark no. 2422739 FANTASMOTES
Community trademark no. 3013752 FANTA CHROME
French trademark no. 3832701 FANTA STICK
Danish trademark no. VA196303313 FANTA STIKO
Italian trademark no. 000769364 FANTAGRAFIA
French trademark no. 3457453 LA FANTA
British trademark no. 2434544 LA FANTA.
The Respondent further contends that the disputed domain name has been registered and is being used in good faith. The project of creating a new social network is taking longer than expected owing to its complexity. The disputed domain name has not yet been used on a large scale, but will be.
The Respondent acknowledges the cease and desist letters from the Complainant but contests them.
The Respondent contends that previous decisions and provisions under the UDRP relating to passive use of a domain name are not relevant to the present dispute because the social networking project is merely unfinished.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required:
“…to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Complainant has produced satisfactory evidence that it has rights in the trademark FANTA. The disputed domain name <myfanta.com> comprises effectively the expression “my fanta”. The prefix “my” is in common use in the naming of domain names and websites (the Complainant itself has a website corresponding to the domain name <mycoke.com>, reflecting its trademark COKE). The Panel finds <myfanta.com> to be confusingly similar to the Complainant’s trademark FANTA and accordingly finds for the Complainant under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The onus is upon the Complainant to prove that the Respondent does not have rights or legitimate interests in the disputed domain name. As is conventional, since this requires the proving of a negative, the Complainant has asserted on the basis of reasonable enquiries that the Respondent does not hold any relevant trademark and has no relationship with the Complainant. The Complainant has stated a prima facie case that the Respondent may seek to refute in the terms of paragraph 4(c) of the Policy or otherwise. Paragraph 4(c) of the Policy states that the Respondent may establish rights to or legitimate interests in a domain name by demonstrating:
“(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.”
The Complainant has sought to pre-empt the Respondent’s possible defences under paragraph 4(c) of the Policy or otherwise by asserting that the Respondent’s company, Myfanta Network, S.L., is a shell company that has no tangible existence and does not trade. The Complainant has submitted in evidence a detailed report in this respect by a private investigator. The implication appears to be that Myfanta Network, S.L., is a front company created for the purpose of legitimising the Respondent’s claim to have rights in the disputed domain name.
A shell company may be entirely legitimate. It may be the vestige of a company that has ceased trading but is kept alive to protect certain intellectual property. It may be a nascent company available for sale off the shelf. It may be a rudimentary company set up for a purpose yet to be developed, and need not be a front company in any disreputable sense.
The Respondent asserts in effect that Myfanta Network, S.L., is a rudimentary company and says that the Complainant’s private investigator could have contacted and sought clarification from the proprietors, which it did not. The Respondent says that Myfanta Network, S.L., was established to develop an innovative Internet social fantasy network to be known as “myfanta” and is a genuine company, as evidenced by, among other things, the substantial work done on the websites. The Respondent has produced evidence that Myfanta Network, S.L., has a deed of incorporation; has been registered with the Spanish Tax Agency; has requested a loan from the banking institution La Caixa; holds an account with the banking institution Caixa Sabadel; has been registered with the Spanish General Social Security Treasury; is registered with the Spanish Data Protection Agency; and contracts broadband services from the company Iberbanda.
Having considered the weight and materiality of the evidence, and taking into account that the application to register the proposed trademark MYFANTA has been appealed to the High Court of Justice in Madrid, at doubtless some cost in legal and Court fees, the Panel finds on the balance of probabilities that (as far as this may be relevant for a finding under the second element of the Policy) Myfanta Network, S.L., appears to exist as a company. The failure to display a nameplate at a company address would not, in and of itself, be determinant of the legitimacy of a company. However that may be, the genuine existence of the Respondent’s company Myfanta Network, S.L., does not per se give rise to a finding under the UDRP that the choice of “my fanta” for use as a second level domain (or company name for that matter) was made in anticipation of a bona fide provision of goods and services in a way that was not meant to capitalize off another’s trademark.
The Panel draws a clear distinction, however, between the question of the bona fide existence of the Respondent’s enterprise, and the choice of the disputed domain name intended for that enterprise.
The Respondent’s possible use of, or demonstrable preparations to use, the disputed domain name in connection with an offering of goods or services, whether for profit or otherwise, has to be bona fide in order to fulfill the requirements of paragraph 4(c) of the Policy, which in the present case depends in part upon whether the disputed domain name may have been registered and used in bad faith. This will be considered before returning to the question of rights or legitimate interests.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name by a respondent in bad faith, however these provisions are illustrative and without limitation and bad faith may be found otherwise.
Paragraph 4(b)(iv) of the Policy reads:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The Respondent’s prior awareness of the Complainant’s trademark FANTA is beyond doubt since the Respondent has conceded as follows:
“From the outset, FANTA is related to a soft drink manufactured by the company COCA-COLA COMPANY, and is widely known for making reference to a soft drink or refreshment that has been greatly acknowledged in the market for a long time. The trademark FANTA immediately conjures up a refreshing orange or lemon soft drink. There is no doubt about any of this and, in fact, all of the documentation we find in respect of the existence of the FANTA trademark is related to the soft drink.”
Without necessarily doubting, despite the passage of two years, that the Respondent may well have intended to create a social network enterprise, the fact remains that the disputed domain name selected for the purpose comprises substantially and visibly the Complainant’s trademark. The Respondent states it intends its enterprise to be a popular Internet venue. In the Panel’s finding, the Respondent could not reasonably have expected otherwise than that a high proportion of Internet users, if not the majority, could be confused into associating the disputed domain name and its corresponding website with the Complainant and its trademark FANTA, within the meaning of paragraph 4(b)(iv) of the Policy.
Furthermore, the Respondent’s expectation that it was free to name its website “myfanta”, having regard to the high profile of the trademark FANTA in Spain and internationally, and especially in the light of the Respondent’s clear acknowledgement of the fame of the FANTA trademark, was in this Panel’s view devoid of all realism. Paragraph 2(b) of the Policy imposes upon a registrant a condition that:
“to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party”.
The Respondent’s choice of the disputed domain name is found by the Panel to have been so far below the normal expectation of the care required to avoid infringing another’s trademark, and thereby so lacking in good faith, that it can only be classed on the current record as an act of registration and use in bad faith in the terms of paragraph 4(a)(iii) of the Policy. The registration of a domain name in the name of a famous mark, of which the respondent had knowledge, may in any case, be considered strong supporting evidence of bad faith (DHL Operations B.V. v. Ali Kazempour, WIPO Case No. D2004-1094).
Reverting to the question of whether the Respondent may have rights or legitimate interests in the disputed domain name, it follows that the Respondent cannot establish rights or legitimate interests within the meaning of paragraph 4(a)(ii) of the Policy on the basis of a registration found to have been made in bad faith.
The Panel respects the jurisdiction of the High Court of Justice in Madrid, which has yet to pronounce on the Respondent’s appeal concerning the proposed trademark MYFANTA. That dispute, however, is a trademark dispute that is not the domain name dispute before the present Panel. A decision by the High Court of Justice in Madrid in favour of the present Respondent may not have necessarily changed this Panel’s decision, which is concerned principally with the use to which the Respondent has committed the disputed domain name.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <myfanta.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Dated: January 19, 2012