WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Coca-Cola Company v. Marcus Steiner
Case No. D2012-1804
1. The Parties
The Complainant is The Coca-Cola Company of Atlanta, Georgia, United States of America (“US”), represented by King & Spalding, US.
The Respondent is Marcus Steiner of Vienna, Austria.
2. The Domain Name and Registrar
The disputed domain name <cokezoneuk.com> is registered with Ascio Technologies Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2012. On September 10, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 13, 2012 the Center transmitted by e-mail to the Registrar a request for registrar verification reminder. On September 17, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 September 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 8, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on October 9, 2012.
On September 25, 2012, the Center received an informal email communication from a Mr. Brandauer. This communication is discussed further at paragraph 6 of this Decision.
On October 11, 2012, due to an administrative oversight, the Center sent to two email addresses it had inadvertently not included in the original notification of the Complaint and granted the Respondent an additional five (5) days to indicate to the Center whether it intended to participate in these proceedings or otherwise. The new date for Response was set to October 16, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on October 17, 2012.
The Center appointed Nick J. Gardner as the sole panelist in this matter on November 6, 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
The facts are straightforward and can be summarized briefly as follows.
The Coca-Cola beverage was invented in 1886 in the US. It has subsequently also become known as the “Coke” beverage. The trademark COKE was first used in commerce in December 1941 in the US and its use was subsequently extended to many countries around the world. Thereafter, other cola beverages were developed and marketed under several trademarks including the word “Coke” including DIET COKE, CHERRY COKE, COKE ZERO, COKE BLAK and VANILLA COKE.
In an Interbrand (an independent brand valuation consultancy) 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 Complainant has registered a large number of registrations for the trademark COKE in many countries of the world in association with a wide range of goods and services. The trademark COKE was first registered by the Complainant in the US in 1945..
The trademark COKE has been 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 Complainant has also registered the trademark COKE ZONE - for example United Kingdom of Great Britain and Northern Ireland (United Kingdom) registration E6207393 which was applied for in 2007. The Complainant has since 2007 operated a marketing rewards scheme under this trademark.
The disputed domain name was registered in August 20, 2012. The Respondent does not operate any website at the disputed domain name. Instead, according to the Complainant, that web site address resolves to the Complainant’s genuine web site at “www.cokezone.co.uk”.
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 trademarks COKE or COKE ZONE or the disputed domain name.
5. Parties’ Contentions
In summary the Complainant says it has rights in the trademarks COKE and COKE ZONE which are similar to the disputed domain name, the only difference in the latter case being the addition of the descriptive letters “uk” which commonly refer to the United Kingdom.
The Complainant says the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant says the Respondent is engaged in the practice of sending spoof e-mail addresses to consumers purporting to advise them they have won a prize in a marketing promotion run by the Complainant. Consumers who respond to such e-mails do so via an e-mail address which uses the disputed domain name and in doing so unwittingly provide their personal details to the Respondent. The Complainant says the scheme is fraudulent as no prizes exist, the e-mails in question wrongly purport to come from a genuine Coca Cola e-mail account, and contain links to genuine Coca Cola web site. Furthermore, consumers who visit “www.cokezoneuk.com”, to check the bona fides of these emails are then redirected to the Complainant’s own web site thereby obscuring the true position.
The Complainant says in these circumstances the disputed domain name was clearly registered and being used in bad faith. Specifically, it says this activity is directly covered by paragraph 4(b)(iv) of the Policy which provides that evidence of bad faith includes:
“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 did not reply to the Complainant’s contentions.
6. Discussion and Findings
Before considering the substantive issues, it is necessary to consider whether the lack of Response prevents the Panel proceeding to resolve this dispute. Under the Rules, paragraph 2:
(a) When forwarding a complaint, including any annexes, electronically to the Respondent, it shall be the Provider's responsibility to employ reasonably available means calculated to achieve actual notice to Respondent. Achieving actual notice, or employing the following measures to do so, shall discharge this responsibility:
(i) sending Written Notice of the complaint to all postal-mail and facsimile addresses (A) shown in the domain name's registration data in Registrar's Whois database for the registered domain-name holder, the technical contact, and the administrative contact and (B) supplied by Registrar to the Provider for the registration's billing contact; and
(ii) sending the complaint, including any annexes, in electronic form by e-mail to:
(A) the e-mail addresses for those technical, administrative, and billing contacts;
(B) postmaster@<the contested domain name>; and
(C) if the domain name (or "www." followed by the domain name) resolves to an active web page (other than a generic page the Provider concludes is maintained by a registrar or ISP for parking domain-names registered by multiple domain-name holders), any e- mail address shown or e-mail links on that web page; and
(iii) sending the complaint, including any annexes, to any e-mail address the Respondent has notified the Provider it prefers and, to the extent practicable, to all other e-mail addresses provided to the Provider by Complainant under Paragraph 3(b)(v).
(b) Except as provided in Paragraph 2(a), any written communication to Complainant or Respondent provided for under these Rules shall be made electronically via the Internet (a record of its transmission being available), or by any reasonably requested preferred means stated by the Complainant or Respondent, respectively (see Paragraphs 3(b)(iii) and 5(b)(iii)).”
The Complaint was served by the Center via e-mail to the appropriate e-mail addresses as identified in the Complaint and as recorded in respect of the Respondent in the Registrar’s records. No Response was received to any of these. The Center then sought to serve the Complaint by courier to the Respondent’s postal address. The address was genuine and a delivery was initially effected on September 21, 2012, but whoever was at the address then refused to accept the delivery and instructed the courier to return it to the sender.
Shortly after this, on September 25, 2012, the Center received the following e mail:
“Dear Ladies and Gentlemen,
could you please forward a copy of the complaint directly to my email address:
Case No. D2012-1804
[…] [Mr.] Brandauer
UPC Austria GmbH”
As is apparent Mr. Brandauer did not explain what, if any, his connection was with the Respondent, or why he was involved in this matter. The Center noted however that his company was listed as the technical and billing contact for the disputed domain name and forwarded to him a copy of the Complaint. No further communication was received by the Center from him or anyone else.
In these circumstances the Panel is satisfied that the Center has complied with its obligation to employ “reasonably available means calculated to achieve actual notice to Respondent”. Under the Rules (paragraph 5(e)) “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.” The Panel concludes that there are no exceptional circumstances which prevent the Panel deciding the dispute.
A. Substantive Issues
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) The disputed domain name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trade marks COKE and COKE ZONE. The filed evidence convincingly demonstrates that COKE is an extremely well known Trademark which is used very widely indeed throughout the world. There are a very large number of registrations either for or including the word “Coke“ owned by the Complainant worldwide. The Complainant also has registrations for the trade mark COKE ZONE including for example United Kingdom registration E6207393.
The Panel finds that the disputed domain name is confusingly similar to the COKE ZONE trade mark. The addition of the descriptive letters “uk”, which commonly refer to the United Kingdom, does not remove this similarity. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy, “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).
It is also established that the addition of a generic term (such as here the letters “uk”) to a disputed domain name has little, if any, effect on a determination of legal identity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006-0189).
For similar reasons, the Panel also finds that the disputed domain name is confusingly similar to the COKE trade mark. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade marks. Accordingly, the first condition of paragraph 4(a) of the Policy has been fulfilled.
C. Rights or Legitimate Interests
COKE is a registered trademark owned by the Complainant and a word which (although it has other meanings) is widely recognized and associated with the Complainant. It is one of the leading brands in the world. The trade mark COKE ZONE has also been widely used by the Complainant since 2007 in particular in association with a marketing rewards program. Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to the Respondent of the dispute, 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) the Respondent has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or to use the COKE or COKE ZONE trade marks. The Complainant has prior rights in the COKE ZONE trade mark which precede the Respondent’s registration of the disputed domain name. The Complainant has therefore established a prima facie case that the Respondent has no rights and legitimate interests in the disputed domain name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the disputed domain name (see for example Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the second condition of paragraph 4(a) of the Policy has been fulfilled.
D. Registered and Used in Bad Faith
The evidence filed by the Complainant clearly establishes that the Respondent is engaged in a deceptive practice seeking to obtain personal data from consumers who are misled into believing they have won a prize offered by the Respondent. It is not clear to the Panel what the Respondent is then doing with that data but it is clearly being obtained by deception and by confusing consumers into believing they are dealing via e-mail with the Complainant when they are not.
The Respondent has been given an opportunity to provide any legitimate explanation he may have to explain this conduct. The Respondent has not responded. The Panel finds that the Respondent has failed to produce any evidence to establish good faith registration and use of the disputed domain name. Accordingly, the Panel accepts the Complainant’s evidence that the disputed domain name has been registered for the purpose of using it in connection with activity which is intended to obtain personal data by deception. The Panel finds that this is evidence of bad faith registration and use.
Furthermore, under the Policy, evidence of registration and use in bad faith is established by, amongst other factors, circumstances which indicate that “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” (Policy paragraph 4(b) (iv)). In the present case, the Panel concludes that the deliberate use of the Complainant’s trade mark as part of the disputed domain name, is most likely intended to enable the Respondent to attract for commercial gain by email, consumers who are misled into providing their personal data. This would fall squarely within the type of circumstances to which the Policy refers.
Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
For 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 <cokezoneuk.com>, be transferred to the Complainant
Nick J. Gardner
Date: November 13, 2012