The Complainant is The Coca-Cola Company of Atlanta, Georgia, United States of America (“United States”), represented by FisherBroyles LLP, United States.
The Respondent is Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States / Thien Le Trieu, Le Trieu Thien of Ho Chi Minh, Viet Nam.
The disputed domain name <xomtu.com> is registered with Name.com LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2015. On November 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 17, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 30, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 5, 2015.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 8, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 28, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 30, 2015.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on January 11, 2016. 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.
On January 21, 2016, at the request of the Panel, the Center issued Procedural Order No. 1 to the Parties, reproduced below:
“1. It appears to the Panel that the Complainant’s trademark applications have not proceeded to grant, however the Panel notes that the Complainant also claims common law trademark rights in the mark XOMTU via its use on certain social media as the hashtag #XOMTU.
2. The Panel invites the Parties to provide submissions as to whether the hashtag #XOMTU has any meaning in the Vietnamese language and if so to provide a translation into English. The Panel also invites the Parties to provide an explanation of whether in that party’s view such hashtag is a coined, arbitrary, suggestive, descriptive or generic term.
3. The Panel informs the Parties that in the absence of submissions from the Parties regarding the treatment of trademarks arising from hashtags, the Panel intends to refer to the principles of hashtag-mark treatment laid down in the United States Patent & Trademark Office’s Trademark Manual of Examining Procedure (TMEP §1202.18) which includes the following remarks: “A ‘hashtag’ is a form of metadata comprised of a word or phrase prefixed with the symbol ‘#’…. Hashtags are often used in social-networking sites to identify or facilitate a search for a keyword or topic of interest…. A mark comprising or including the hash symbol (#) or the term HASHTAG is registrable as a trademark or service mark only if it functions as an identifier of the source of the applicant’s goods or services. Generally, the hash symbol and the wording HASHTAG do not provide any source-indicating function because they merely facilitate categorization and searching within online social media (i.e., social-media participants are directed to search a particular subject by typing, e.g., ‘hashtag ABC,’ where ABC is the subject)…. [I]f a mark consists of the hash symbol or the term HASHTAG combined with wording that is merely descriptive or generic for the goods or services, the entire mark must be refused as merely descriptive or generic.”
4. The Panel notes that the Complainant has provided some time-limited evidence of the use of the #XOMTU hashtag on “www.facebook.com”. The Panel has conducted an independent search of the said hashtag on “www.facebook.com” by way of the URL “https://www.facebook.com/hashtag/xomtu” with a view to obtaining a fuller picture of its use and has noted multiple posts apparently referencing the Complainant’s products across a date range from June 2015 to date, together with total “likes” of 448,792, total “comments” of 8,300 and total “shares” of 1,121. The Panel also noted a number of posts on “www.facebook.com” referencing and linking to an apparent advertising campaign by the Complainant associated with the #XOMTU hashtag, which advertisements are published on “www.youtube.com” and which in total have received approximately 5.5 million views. The Panel invites the parties to submit additional comment concerning the outcome of the Panel’s independent investigation and its effects on the issue of the Complainant’s claim to rights in the XOMTU mark, a necessary element of the Complainant’s case under the Uniform Domain Name Dispute Resolution Policy (“UDRP”).
The Complainant is hereby given five days from the date of this Order (namely, until January 26, 2016) to submit to the Center (using the email address: email@example.com, and copied to the Respondent) such comments or submissions as it wishes to make restricted to the matters disclosed in paragraphs 2, 3 and 4 above.
The Respondent is hereby given ten days from the date of this Order (namely, until January 31, 2016) to submit to the Center (using the email address: firstname.lastname@example.org, and copied to the Complainant) (1) any comments confined in scope to the Complainant’s submission in respect of the Panel’s above order, and/or (2) any comments confined in scope to the matters disclosed in paragraphs 2, 3 and 4 above.
The Decision due date in this proceeding is hereby extended to February 11, 2016.”
The Complainant filed a response to Procedural Order No. 1 on January 26, 2016. The Respondent did not respond.
The Complainant is the world’s largest beverage company. 1.9 billion servings of its products are consumed daily in more than 200 countries. It owns more than 500 sparkling and still drinks brands including four of the world’s top five nonalcoholic sparkling beverage brands.
The Complainant says that it began a campaign named “Share a Coke” in 2011. Initially, this featured product packaging with the phrase “Share a Coke with” together with first or given names such as “Joe” or “Linda”, or terms such as “classmate” or “friend”. The Complainant adds that this campaign was successful and that it then established a website at “www.shareacoke.com” which allows consumers to personalize their own contour bottle of the Complainant’s product.
The Complainant says that it began using the XOMTU mark in Viet Nam in May 2014 in connection with its “Share a Coke” campaign as well as “other marketing activities” and thereafter registered the domain names <xomtu.vn> and <xomtu.com.vn> on August 15, 2014. The Complainant filed applications for the word marks XOMTU and XÔMTỤ with the National Office of Intellectual Property of Viet Nam under application numbers 4-2014-28234 and 4-2014-28235 respectively, each in international classes 16, 25, 32 and 41. The Complainant adds that these applications are now published.
As stated in Procedural Order No. 1, the Panel noted that there are instances of the hashtag #XOMTU on “www.facebook.com” in posts featuring “likes” in the hundreds of thousands and linking to relative video advertising on “www.youtube.com” for the Complainant’s products which features the same hashtag and has received millions of views.
In answer to Procedural Order No. 1, the Complainant notes that in the Vietnamese language, XOMTU means, “gather together and have fun.”
Little is known about the Respondent, who appears to be a private individual with an address in Ho Chi Minh City, Viet Nam. The disputed domain name was created on July 6, 2014. According to screenshots produced by the Complainant, the corresponding website features the Complainant’s well-known stylized COCA COLA mark and contour bottle in a top banner alongside the hashtag #XOMTU. Below the banner is a listing of what appear to be comments in the Vietnamese language from users of the “www.facebook.com” website which, according to a note at the foot of the page, are delivered to the website via the “Facebook Comments Plugin”.
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
The Complainant submits that it has spent substantial sums of money to advertise and promote its use of the XOMTU mark in connection with the Complainant’s products and services in Viet Nam and that as a result of the Complainant’s advertising, promotion and use of such mark it has developed goodwill and name and brand recognition. The Complainant also asserts that the XOMTU mark is well-known in Viet Nam as uniquely identifying the Complainant’s products and represents the high quality and level of consistency that is expected by the Complainant’s customers.
The Complainant produces the following as an example of the fame and/or single-source recognition of the Complainant’s XOMTU mark, namely (1) the first four pages of search results on “www.instagram.com” for the search “xomtu” for which the Complainant notes that all but “a handful” of such posts reference the Complainant’s products; and (2) posts from “www.facebook.com” which reference the Complainant and the XOMTU mark which predate the date of registration of the disputed domain name.
The Complainant submits that the disputed domain name is identical and confusingly similar in pronunciation and sound, in appearance and by way of suggestions, connotations and commercial impressions to the Complainant’s XOMTU mark. The Complainant asserts that use of the disputed domain name is likely to cause confusion to the public.
The Complainant notes that the Respondent is not known or identified by the name “Xomtu” nor is it affiliated or connected in any way with the Complainant’s business, that the Respondent does not operate a business or offer any products or services commonly known by that name, that the Respondent has not acquired trademark rights for such name and that the Respondent is not a licensee of the Complainant or otherwise authorized by it to use the disputed domain name. The Complainant adds that the Respondent has used the website associated with the disputed domain name to attract Internet users seeking information relating to the Complainant’s products and services and has thereby diverted customers from the Complainant. The Complainant adds that the said website appears to be an official website of the Complainant as it incorporates the Complainant’s trademarks, product images and “Share a Coke” campaign. The Complainant asserts that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant notes that it has attempted to have the website associated with the disputed domain name taken down by emailing the hosting provider but that its communications have not received any response. The Complainant contends that the disputed domain name was registered with full knowledge of the rights of the Complainant in the XOMTU mark due to its identity with such mark and the website content which makes multiple references to the Complainant and uses the Complainant’s famous stylized trademark which it asserts is one of the most well-known and recognizable in the world. The Complainant notes that it prohibits profanity, vulgarity, celebrity names or third party trademarks from appearing on those of its products used in the “Share a Coke” campaign but that the Respondent’s website allows any of such terms to appear in an image of genuine-looking products of the Complainant.
The Complainant asserts that the Respondent is diverting consumers from the Complainant’s legitimate and authorized websites thereby disrupting the Complainant’s business and 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 XOMTU mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and of products and services advertised on that website.
The Complainant submits that the Respondent’s bad faith is further evidenced by the fact that the Respondent is located in Viet Nam, where the Complainant’s XOMTU mark is being used exclusively and where the Complainant’s campaign has been highly popular and successful.
In response to Procedural Order No. 1, the Complainant notes that although it’s pending trademark applications have not proceeded to grant, they have passed the formality examination and have been published by the appropriate authority. As noted above, the Complainant states that in the Vietnamese language, XOMTU means “gather together and have fun”. The Complainant asserts that its use of #XOMTU and XOMTU is suggestive in that “gather together and have fun” does not convey a descriptive or generic connotation of the nature of goods and services associated with the Complainant’s use of such mark. The Complainant submits that while the Complainant’s use might suggest notions of the characteristics or attributes of the underlying goods and services, such use fails to describe these with the degree of immediacy and particularity necessary for the mark to be considered descriptive. The Complainant asserts that #XOMTU functions as a trademark as it identifies the Complainant as a single source. The Complainant notes that in its submissions in the Complaint and as identified by the Panel in the Procedural Order, there are millions of hits, likes, shares and similar consumer activity on social media recognizing #XOMTU exclusively with the Complainant and its products and services and functioning as an identifier of source. The Complainant contends that its use of #XOMTU is not simply to identify or facilitate a search for a keyword or topic of interest but as an identifier of the source of its goods and services as evidenced by voluminous references to the Complainant’s use of #XOMTU which are exclusive to the Complainant and its products and services.
The Respondent did not reply to the Complainant’s contentions.
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark 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.
The inquiry under the first element is in two parts. The first issue is whether the Complainant has UDRP-relevant rights in a trademark and the second is whether any such trademark is identical or confusingly similar to the disputed domain name. Failure on either of the two issues would result in a failure to meet the requirements of paragraph 4(a)(i) of the Policy and ultimately in failure of the Complaint.
In the first instance, the Panel turns to the Complainant’s trademark applications made with the National Office of Intellectual Property of Viet Nam. While noting that the applications have passed the formality examination and have been published, the Complainant confirms in its response to Procedural Order No. 1 that they have not as yet proceeded to registration. The preponderant view of panels under the Policy regarding trademark applications, which is shared by the present Panel, is that unless an application has proceeded to registration it does not constitute a trademark in which a complainant has rights for the purposes of the Policy (see for example the comprehensive treatment of this topic in Fashiontv.com GmbH v. Mr. Chris Olic, WIPO Case No. D2005-0994 and the more recent cases of Tiger Media, Inc. v. Leconte Pierre, WIPO Case No. D2011-0670 and Jetgo Australia Holdings Pty Limited v. Name Administration Inc. (BVI), WIPO Case No. D2013-1339). In these circumstances, the Panel declines to find that the Complainant has rights in a trademark in terms of its two applications for a registered mark in respect of the XOMTU word mark.
The Panel therefore turns to the question of whether the XOMTU mark may be considered to be a common law trademark of the Complainant. Paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) addresses the question of what needs to be shown for a complainant to successfully assert unregistered or common law trademark rights and provides the following consensus view:
The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant’s rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant’s claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.
In the present case, the Complainant claims use of the mark in connection with its “Share a Coke” campaign in Viet Nam since May 2014, translating XOMTU from the Vietnamese language as “gather together and have fun”. No indication of the amount of sales under the mark, extent of advertising, consumer surveys or media recognition were produced. The Complainant did however make reference to the use of the XOMTU mark as a hashtag “#XOMTU” on social media and produced as evidence relative searches on the social media websites “www.instagram.com” and “www.facebook.com” for said term.
As noted in the Procedural Order, in the absence of relative submissions from the Parties, the Panel decided to refer to the United States Patent & Trademark Office’s Trademark Manual of Examining Procedure, which contains principles for hashtag-mark treatment, in order to identify any points of general guidance which might be helpful to its analysis in the present case. The Panel finds two such points to be of assistance. First, it appears to the Panel that such a mark must function as an identifier of goods and services rather than merely serving as a label which facilitates searching or linking of topics within social media. Secondly, the wording in such mark must not be merely descriptive or generic for the goods and services concerned. In these circumstances, the Panel finds that a hashtag mark could constitute an unregistered or common law trademark for the purposes of the Policy provided that the above two points are fulfilled and that the mark concerned has acquired the necessary “secondary meaning”. However, for the reasons outlined below and in the particular circumstances of this case, the Panel does not consider that it is necessary for it to make a definitive ruling as to whether the hashtag #XOMTU constitutes a common law trademark per se.
Having reviewed the social media materials produced with the Complaint and the up-to-date searches outlined in Procedural Order No. 1, the Panel considers that it has been established that the mark XOMTU has become a distinctive identifier and has acquired a secondary meaning associated with the Complainant and its goods or services, specifically through the Complainant’s activities in connection with the Vietnamese version of the Complainant’s “Share a Coke” campaign. In reaching this conclusion, the Panel first notes that while the phrase which the mark represents may well be commonly used in many different contexts, it is not descriptive in any way of the Complainant’s products, nor does it convey any generic connotation thereof. Secondly, the Panel notes that the “www.youtube.com” statistics provide substantive evidence that the Complainant’s introduction of the term XOMTU within its online video advertising has reached a significant audience. The Panel observes that the extent of the consumer impact of such online video may be readily identified from the number of “views” displayed on the corresponding online video website with a degree of accuracy over and above that typically available from advertising on conventional broadcast media, the extent of which may require to be supplemented in evidence by consumer surveys and the like as anticipated by paragraph 1.7 of the WIPO Overview 2.0.
It appears to the Panel that a significant number of consumers have responded to the Complainant’s online advertising campaign by making posts under the hashtag #XOMTU on social media which feature images of the Complainant’s products. The impetus for the making of such posts seems to the Panel to have been a “call to action” in the Complainant’s video advertising campaign. Accordingly, in this case, the Panel considers that the apparently widespread adoption of the #XOMTU hashtag is effectively a consequence of the fact that a secondary meaning had already arisen for the mark XOMTU in association with the Complainant’s products by virtue of the Complainant’s campaign and thus that the Complainant has common law trademark rights in that mark. In those circumstances, the Panel need not consider whether the mere presence of the hashtag itself in posts on social media websites would be sufficient on its own to give rise to common law trademark rights within the meaning of the Policy.
Turning to a comparison between the Complainant’s XOMTU mark and the disputed domain name, the Panel finds that the mark is alphanumerically identical to the disputed domain name, disregarding the generic Top-Level Domain (“gTLD”) “.com” as is customary in cases under the Policy.
In all of these circumstances, the Panel finds that the disputed domain name is identical to the Complainant’s trademark and accordingly that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
Paragraph 4(c) of the Policy lists several ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 consensus of previous decisions under the Policy is that a complainant may establish this element by making out a prima facie case, not rebutted by the respondent, that the respondent has no rights or legitimate interests in the disputed domain name. In the present case, the Panel is satisfied that the Complainant has established the requisite prima facie case. This is based upon its submissions that the Respondent is not known or identified by the name “Xomtu”, is not affiliated or connected with the Complainant’s business, does not offer any products or services commonly known by that name, has not acquired trademark rights for such name and is not a licensee of the Complainant or otherwise authorized by it to use the disputed domain name.
The Complainant also provides evidence demonstrating that the disputed domain name has been selected and used to reference the Vietnamese version of its “Share a Coke” campaign in order to attract Internet users seeking information relating to the Complainant’s products and services. Such use cannot in the Panel’s opinion confer any rights or legitimate interests upon the Respondent.
The Respondent has failed to reply to the Complaint and has provided the Panel with no material which might rebut the Complainant’s prima facie case. In these circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the requirements of paragraph 4(a)(ii) of the Policy have been satisfied.
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online 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”.
In the present case, the Panel is satisfied that the Complainant has made out a case of registration and use in bad faith based upon paragraph 4(b)(iv) of the Policy. The screenshot evidence produced by the Complainant demonstrates that the website associated with the disputed domain name has been used in a manner which directly targets the Complainant and its rights in the XOMTU mark. The website concerned is to the Panel’s eyes largely composed of images of the Complainant’s products. The top banner on the home page features the Complainant’s well-known stylized COCA COLA trademark along with a prominent depiction of the hashtag “#XOMTU” against a red background with darker swirl which is reminiscent of the Complainant’s corporate style and colors. This is accompanied by an image of the Complainant’s distinctive glass bottle. Such use in the Panel’s opinion creates a likelihood of confusion with such mark as to source or endorsement. The screenshot also shows a form submission feature which the Complainant says allowed entered terms to appear in an image of genuine-looking products of the Complainant. There is also a prominent advertisement for what appears to be a mobile telephony product which the Panel assumes has no relationship to the Complainant or its products but is likely to have been placed by the Respondent to generate revenue from the traffic it received from those customers of the Complainant who were attracted by the use of the XOMTU mark. In the Panel’s opinion this use of the disputed domain name targets the Complainant and those rights which it has built up in the XOMTU mark.
In the absence of any reply to the Complainant’s contentions by the Respondent, the Panel cannot conceive of any good faith explanation for the Respondent’s use of the disputed domain name in this manner. Accordingly the Panel finds that the disputed domain name has been used in bad faith.
Based on the evidence of swift adoption on social media of the XOMTU mark following the Complainant’s commencement of its campaign in May 2014, the Panel finds on balance of probabilities that the registration of the disputed domain name by the Respondent on July 6, 2014 was made in response to that campaign, with intent to target the following which the Complainant was building up under that mark and thus that the disputed domain name was also registered in bad faith.
In these circumstances, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been satisfied.
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 <xomtu.com> be transferred to the Complainant.
Andrew D. S. Lothian
Date: February 10, 2016