WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Coca-Cola Company v. True North Event Management
Case No. D2012-0453
1. The Parties
Complainant is The Coca-Cola Company of Atlanta, Georgia, United States of America, represented by King & Spalding, United States of America.
Respondent is True North Event Management of Southport, Connecticut, United States of America, represented by Douglas Gilmore, United States of America.
2. The Domain Name and Registrar
The disputed domain name <cocacolavending.com> (the “Domain Name”) is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 6, 2012. On March 7, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Domain Name. On March 8, 2012, GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the Domain Name.
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 Respondent of the Complaint, and the proceedings commenced on March 14, 2012. In accordance with the Rules, the due date for Response was April 3, 2012. Respondent submitted two motions on March 29, 2012. First, Respondent asked the Panel to strike and suppress from consideration one of Complainant’s annexes. With regard to this motion, the Center informed Respondent on March 29, 2012, that the Panel has sole discretion to determine the admissibility of supplemental filings. Respondent’s second motion requested a 60-day extension of the due date to submit the Response. On March 30, 2012, the Complainant opposed Respondent’s request for an extension of time. The Center extended the due date for the Response to May 4, 2012. After receiving another request from Respondent for a further extension of the Response due date, to which Complainant acquiesced, the Center set the due date for the Response to May 11, 2012. Respondent filed the Response with the Center on May 10, 2012.
The Center appointed a sole panelist in this matter on May 18, 2012. Due to a disclosure subsequently discovered, the Center issued a Procedural Order No. 1 on June 21, 2012 requesting both Parties to indicate if either would have any objection in light of this information to the panel’s continuing appointment. On June 25, 2012, Respondent responded with its objection and Complainant followed suit on June 26, 2012. Following the Parties communications, the Center proceeded to appoint an alternate panel for the dispute. The Center appointed a sole panelist in this matter on July 30, 2012. However, on August 16, 2012, the Center notified the Parties that the sole panelist had been recused from the case due to a late disclosure of a potential conflict with one of the Parties.
Finally, the Center appointed Christopher Gibson as the sole panelist in this matter on August 16, 2012. The Panel now finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant was founded in the 1880s and has been using its COCA-COLA trademark for purposes of advertising and selling its products for more than 120 years.
COCA-COLA is a world famous trademark and Complainant is the producer of one of the best-known soft drink in the world.
Complainant is the owner of numerous trademark registrations for the COCA-COLA mark in countries around the world, including the United States.
The Domain Name was registered by Respondent on January 23, 2002.
5. Parties’ Contentions
The Panel has summarized the Parties’ contentions below.
In its response to Respondent’s request for additional time to file a Response, Complainant states that it was not aware of the Domain Name registration until Complainant sought to secure the <cocacolavending.com> domain name in late 2011 when Complainant had a legitimate business need to launch a website using this Domain Name. When Complainant discovered the Respondent’s registration, Complainant contacted Respondent. Complainant contends that Respondent is not prevented from presenting its business on the Internet as this proceeding has no impact on Respondent's business domain name, <truenorthtickets.com>, which is allegedly active and in use.
Identical or Confusingly Similar
Complainant contends that the Domain Name is identical or confusingly similar to Complainant’s COCA-COLA mark. Although the Domain Name does not include a hyphen between the words “Coca” and “Cola”, Complainant urges that the Domain Name is no less confusingly similar to Complainant’s well-known COCA-COLA mark. The addition of the generic term “vending” in the Domain Name does nothing to avoid confusion. Complainant argues that <cocacolavending.com> could not refer to, or be meant to refer to, anyone other than Complainant or anything other than Complainant’s products, which are frequently dispensed through vending machines that are either authorized by Complainant or by Complainant’s authorized bottlers. Complainant argues that Respondent’s inclusion in the Domain Name of the COCA-COLA mark together with a generic term that is used in connection with Complainant’s products creates a strong likelihood of confusion as to source, sponsorship, affiliation or endorsement by Complainant or by Complainant’s authorized bottlers. Furthermore, Complainant has registered and in some instances uses similar domain names such as <cokevending.com>. For these reasons, Complainant submits that the Domain Name is confusingly similar to Complainant’s COCA-COLA mark, thereby satisfying the first element under the Policy.
Rights or Legitimate Interests
Complainant asserts that Respondent has no rights or legitimate interests in the mark COCA-COLA or the nearly identical variation, “CocaCola” without hyphen, or in “CocaCola Vending”. Complainant states that to the best of its knowledge, the Domain Name is not being used in connection with a bona fide offering of goods or services. Instead, Respondent has not even created a website for the Domain Name. Complainant submits that in accordance with paragraph 4(c) of the Policy, there are three primary factors to be considered in determining whether a respondent has rights or legitimate interests in a domain name. Complainant contends that Respondent does not satisfy any of these factors.
The first factor is whether, before notice of any dispute to Respondent, “there is any evidence of the registrant’s 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.” According to Complainant, there is no evidence that Respondent used the Domain Name or was preparing to use the Domain Name in connection with a bona fide offering of goods or services. Rather, the evidence is that Respondent is in business as a ticket broker. Moreover, the Domain Name was registered in January 2002, well after Complainant had established rights in its COCA-COLA trademark. Complainant contends that Respondent’s registration of a name containing Complainant’s well-known mark does not constitute legitimate use.
The second factor is whether Respondent has been “commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights.” Complainant states that Respondent is not known and has never been known by the Domain Name. Respondent’s business is called True North Event Management and it is a ticket brokerage company having nothing to do with the vending of COCA-COLA products. Instead, the vending machines that are used to sell COCA-COLA products are either authorized by Complainant or by its authorized bottlers, such that there are no unauthorized “Coca-Cola Vending” machines and there can be no legitimate unauthorized use of the Domain Name. The COCA-COLA trademark is owned exclusively by Complainant in the United States with the products sold in nearly every country of the world. Complainant argues there is thus no legitimate use for this Domain Name by Respondent and instead he is trying to “free ride” based on the considerable goodwill associated with Complainant’s mark and profit from acquisition of the Domain Name based solely on the value of Complainant’s COCA-COLA mark.
The third factor is whether Respondent is making a “legitimate noncommercial or fair use of the domain name, without intent for commercial gain.” Complainant argues that Respondent’s use is neither legitimate nor fair. Instead, Respondent’s misappropriation of the Domain Name is an attempt to benefit from the value of the COCA-COLA mark and this does not constitute a right or legitimate interest. Respondent registered the Domain Name long after the adoption and use of the COCA-COLA trademark by Complainant, which is an extraordinarily famous mark owned exclusively by Complainant. Respondent has no right or legitimate interest in the Domain Name and the second element of the Policy is thereby satisfied.
Registration and Use in Bad Faith
Complainant contends that Respondent's bad faith in registering and using the Domain Name is demonstrated by numerous facts. Respondent's registration and use of the Domain Name meets numerous indicia of bad faith commonly accepted by courts and UDRP panels in domain name cases. Any one of the following factors by itself should be sufficient to be considered as evidence of bad faith registration or use of the Domain Name. According to Complainant, the cumulative effect of the following examples of bad faith on the part of Respondent must result in the Panel determining that the Domain Name was registered in bad faith pursuant to the Policy:
(a) The COCA-COLA trademark is exceptionally famous and Complainant's rights in the COCA-COLA trademark far predate any of Respondent's activities;
(b) There is no doubt that Respondent is aware of the famous COCA-COLA trademark since the COCA-COLA mark is one of the most recognized marks in the world today and has been in use since the 1880s;
(c) There is no logical reason for Respondent to select the Domain Name other than to trade on the Complainant’s reputation and goodwill;
(d) Respondent's apparent purpose in registering the Domain Name is to profit from the goodwill associated with the COCA-COLA trademark. The use of the COCA-COLA trademark is without the authorization or consent of Complainant, and if put into use without Complainant's authorization, would be likely to cause confusion, deceive the public, and constitute trademark infringement under the federal laws of the United States and other jurisdictions worldwide;
(e) There is no evidence in the record showing that the Domain Name was used for or could be used for anything other than to capitalize on the goodwill associated with Complainant. It is well-established that the use of a trademark by an unlicensed party as all or part of a domain name with the intention of misleading or deceiving consumers constitutes bad faith and may subject the party to equitable and monetary remedies for trademark infringement, false designation of origin, dilution, and/or violates the Anticybersquatting Consumer Protection Act.
Respondent highlights that the burden in this matter is on Complainant to satisfy each of the applicable elements of the Policy (paragraphs 4(a) (i), (ii) & (iii)). In this regard, Respondent needs not to establish any specific fact should Complainant fail to satisfactorily meet the parameters of any of the three elements and prove that each of them is present.
Respondent reviews what it regards as undisputed facts. Respondent registered the Domain Name on January 23, 2002. It is uncontradicted that at no time during this over 10 year period did Respondent ever contact Complainant for any purpose. Thus, there is no evidence, nor could there be any inference, that Respondent ever made any effort to sell the Domain Name, or anything else, to Complainant. Respondent argues that the Panel should not speculate about “the hopes and desires of any party, particularly one never seen by the Panel or Complainant.” According to Respondent, Complainant is asking this Panel to draw special factual conclusions simply because Complainant is The Coca-Cola Company and Complainant’s counsel repeatedly refers to the COCA-COLA mark as “famous”. The fact that Complainant is “famous” does not create evidence or constitute imputed intent or actions by third party. Complainant should receive no special consideration solely on the basis of celebrity status. Respondent has owned the Domain Name for over 10 years and Complainant never challenged that ownership
Respondent states it never had any communication with Complainant until receipt of Complainant counsel’s letter dated January 19, 2012. The letter stated “We would like to resolve this matter amicably”, and “To that end…” asking Respondent to contact Complainant’s attorney at a telephone number or email address both provided in the letter. Respondent never solicited Complainant to buy the Domain Name. In fact, Respondent rejected Complainant’s offer to purchase the Domain Name for a nominal amount, and then was asked by Complainant’s counsel what Respondent wanted. Despite this solicitation and invitation by Complainant for an offer, Respondent testifies he made no specific proposal or offer, and never made any demand for any dollar amount. The phone call was concluded, with Complainant’s counsel stating she would speak to her client and call Respondent back. Respondent argues that this renders false the allegations in the Complaint that Respondent offered to sell the Domain Name to Complainant, that Respondent registered the Domain Name in order to sell it to Complainant, and that Respondent exploited Complainant in order to make a profit. Respondent states that with the defeat of the points raised by Complainant through the Declaration of Ms. McCarthy, there is no evidence to establish these claims before the Panel. Even assuming the materiality and admissibility of Ms. McCarthy’s declaration, the conflicting Declaration of Mr. Incerto on behalf of Respondent renders both as conflicting. As such, there is no uncontradicted testimony before this Panel to support the allegations of Complainant in its Complaint. Again, the burden is on Complainant to meet the burden of the Policy to state a proper cause of action before this Panel.
Identical or Confusingly Similar
Respondent refers to its understanding of United States federal trademark law, arguing that no trademark has any rights or privileges separate from the goods or services to which it is used, and infringement of such trademark by any third party’s use of an identical or similar word requires that such third party’s use be “confusingly similar” as to source. Respondent further contends that a federal trademark registration confers no additional rights or privileges beyond what an owner has acquired at common law. In addition, Respondent contends that no court has ever ruled that any trademark owner owns the very words or letters for any purpose, for any use, at any time. Respondent states that the issue here is whether an allegedly infringing use by a third party of a mark amounts to use in such a manner as to result in confusion to the public as to source of origin. The Complainant does not claim any other legal violation, nor does the Policy require other than the standard of “identical or confusingly similar”, the same language used for trademark infringement in the United States. Therefore, no other standard should be considered by the Panel under this element of the Policy.
According to Respondent, Complainant acknowledges the failure of use by Respondent and further acknowledges that the Domain Name is not attached to any goods or services. Thus, Respondent argues that as a “matter of law”, there can be no “confusingly similarity”. Not only is there no actual use of the Domain Name for “confusingly similarity” to exist, but there are no goods and services to evaluate whether there could be “confusingly similarity”. Thus, Respondent contends that Complainant has defeated its own claim in its Complaint, as the failure of use by Respondent, acknowledged by Complainant, prevents the Domain Name from being found as “confusingly similar” to Complainant’s COCA-COLA mark.
Respondent refers to Complainant’s contention that the absence of a hyphen or the addition of other terms does not necessarily create a domain name that is not identical or confusingly similar to an existing mark. Respondent emphasizes, however, that the use of a hyphen or addition of other letters to a mark is still of consequence in a consideration of “confusingly similarity”. Moreover, these differences do not obviate the need for use relative to specific goods and services, as noted above. Complainant had to use a hyphen in its mark, as both words of its mark are in the public domain: both “coca and “cola” are words in the language that predate Complainant’s use in the 1880s. Complainant did not create a fanciful term not previously known, but instead joined two descriptive words known in the lexicon, and added a hyphen. The fact that Complainant’s mark is now old and may now be famous does not change history or the reality of the mark’s origin. The hyphen in COCA-COLA was initially required to have a protectable mark.
Further, Respondent states it is in the ticket business. Given this point, which is acknowledged by Complainant, Respondent contends it is unlikely any member of the public would think Complainant is in the business of selling tickets. Respondent contends, for example, that a third party owns the domain name <cocacolatickets.com> and uses it as an active website to sell tickets.
Finally, Respondent urges that Complainant’s purported concern as to confusing similarity is contradicted by its own conduct. Respondent refers to several other domain names, allegedly held by third parties, which are identical or possibly confusingly similar to the Domain Name. Respondent argues it is hard to believe that Complainant would have any concern for public confusion when these other domain names are held by third parties and attached to a live website or put up for auction on GoDaddy.
Rights or Legitimate Interests
Respondent argues that Complainant’s entire argument as to this element is based on the allegation that the Domain Name was secured solely “for commercial gain […] to secure a high price for the Domain Name in a resale transaction.” However, Respondent states there is no evidence in support of this allegation. If Complainant had clear uncontroverted evidence to establish such a position, it would not have been necessary to contact Respondent to secure Ms. McCarthy’s Declaration. Complainant could have simply filed this action without such manufactured evidence. The weakness of Complainant’s position is established by its own conduct.
Respondent states that Complainant has not established that Respondent has made any commercial use of the Domain Name. Nor is there any evidence to establish any intent by Respondent to secure commercial gain to misleadingly divert customers. There is no evidence that any person has been misled as there is no evidence of use. In fact, there is substantial evidence that the use of the letters “cocacola” as part of a Domain Name in the sale of tickets cannot possibly be misleading or confusingly similar. Respondent refers to the website at “www.cocacolatickets.com”, which is allegedly an active site operated by a ticket broker in Atlanta, for the sale of NASCAR tickets. According to Respondent, the registrant for this domain name is not Complainant and the email address for the Administrative Contact is not related to Complainant either. Respondent urges that there are a number of uses of the letters “cocacola” as part of domain names registered by third parties, without concern by Complainant that the public will be misled.
Registration and Use in Bad Faith
Respondent contends there is no evidence that the Domain Name has been used or was registered in bad faith. Instead, there is substantial evidence to the contrary: the passage of 10 years, the need for Complainant to generate its own “evidence”, and the failure of proof as to any effort or intent by Respondent to sell the Domain Name to Complainant. As such Complainant has not met its burden. Further, Respondent’s registration was not to prevent Complainant from reflecting the mark in a corresponding name. Complainant has acknowledged registration of <cokevending.com>, and has the same designation of domain name in Australia and the United Kingdom. Complainant and Respondent are not competitors and the Domain Name was not registered by Respondent to disrupt Complainant’s business. There is no evidence that the Domain Name was registered in an intentional attempt to attract for commercial gain Internet users to Respondent’s any site by creating a likelihood of confusion with Complainant’s marks. In fact, there can be no evidence of any such confusion as Complainant has allegedly permitted the use of other domain names (e.g., <cocacolatickets.com>) by a competitor of Respondent with no apparent concern for the public welfare.
As such, Complainant has failed to meet its legal burden as to each of the elements as required by the Policy.
6. Discussion and Findings
A. Respondent‘s Procedural Requests
(i) Motion In Limine
Respondent filed a “Motion in Limine” on March 29, 2012. The Center in its communication dated March 29, 2012 indicated that the motion would be forwarded to the Panel for consideration. In the Motion, Respondent requests that Complainant’s Annex E (Declaration of Kathleen E. McCarthy), attached to the Complaint, be struck from any consideration by the Panel. This also includes an “Exhibit 1” attached to Annex E (letter of Kathleen E. McCarthy to Respondent’s president Mr. Paul T. Incerto dated January 19, 2012). Respondent urges that the content of these documents were ex parte communications between Complainant’s lawyer and an individual without the benefit of counsel. In support of this motion, Respondent states as follows:
- That Complainant and Respondent had no communication with each other in the over 10 years the Domain Name was registered. Complainant should not be permitted to have its counsel “create” evidence after a 10 year period for purposes of a hearing before this Panel, particularly when that “evidence” is the sole testimony submitted by Complainant before this Panel;
- That the first communication between the Parties was by Complainant’s law firm, communicating by letter directly with a private party, not a lawyer, requesting “We would like to resolve this matter amicably”, and “To that end…” asking Mr. Incerto to contact Complainant’s attorney at a telephone number or email address both provided in the letter;
- That nowhere in this letter did the attorney for Complainant advise Mr. Incerto to seek the advice of counsel, or to have counsel contact Complainant’s law firm;
- That when Mr. Incerto called Complainant’s attorney, as Complainant’s counsel requested and acknowledges in her declaration, Complainant’s counsel accepted the phone call and spoke with Respondent, again failing to advise Mr. Incerto to either seek the advice of counsel, or have counsel contact Complainant’s attorney;
- Complainant’s attorney acknowledges in her declaration that the purpose of Mr. Incerto’s telephone call was in response to her letter, and that Mr. Incerto in that call inquired what Complainant wanted, this without the benefit of counsel while speaking to Complainant’s counsel;
- Complainant’s counsel acknowledges in her declaration that Mr. Incerto made no demand for any dollar amount;
- Respondent avers that Mr. Incerto informed Complainant’s counsel that he did not wish to sell the Domain Name. Respondent disputes that Mr. Incerto made any unsolicited demand to sell the Domain Name, and in fact was solicited by Complainant’s counsel as to Respondent’s position;
- Respondent avers that Complainant’s counsel stated to Mr. Incerto that she would consult her client, and get back to him;
- As there is no live testimony before the Center in this matter, and as there can be no cross-examination of any witness testimony, and as the only witness for Complainant is the lawyer which testimony is based on Complainant counsel’s unilateral and unsolicited communication after 10 years with Respondent, while Respondent was unrepresented by counsel, and which communication is a letter with a stated purpose to “[r]esolve this matter amicably”, justice would require this “evidence” not be considered for any purpose. As such, the Panel should give no consideration in this matter to either counsel’s letter, or her declaration, which declaration constitutes the only testimony on behalf of Complainant, and which is from Complainant’s own lawyer in support of her client, which testimony was purportedly generated days before the filing of its Complaint before the Center from the ex parte solicitation of Respondent after 10 years.
The Panel’s Decision
The Panel is guided in its consideration of Respondent’s motion by the UDRP Rules, which apply to these proceedings. While the Rules do not set out a “motion in limine” procedure, they do provide helpful guidance in several provisions. The Rules provide in paragraph 15(a) (Panel Decisions) that:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In addition, paragraph 10 (General Powers of the Panel) provides in relevant part that:
“(a) The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
(b) In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
(d) The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.”
These provisions confirm that the Panel may consider the written statements and documents submitted by the Parties and conduct the administrative proceeding in a manner it considers appropriate, ensuring that the Parties are treated with equality, that each party is given a fair opportunity to present its case, and that the Panel has the authority to “determine the admissibility, relevance, materiality and weight of the evidence.” The Rules thus allow for a flexible procedure in a UDRP case. They grant discretion to the Panel to ensure that the administrative proceeding is fundamentally fair and to consider the Parties’ submissions and in so doing, gauge the admissibility, relevance, materiality and weight of any evidence.
As a first point, the Panel observes that both Parties were given adequate time to prepare and submit their statements and evidence. In particular, Respondent requested and received additional time to prepare its Response.
Secondly, the Panel considers Respondent’s request that Annex E (Declaration of K. E. McCarthy) of the Complaint and “Exhibit 1” attached to Annex E (letter of K. E. McCarthy to Mr. P. T. Incerto dated January 19, 2012) be struck from any consideration by the Panel. The Panel observes that there was no impropriety on the part of Complainant’s counsel in contacting Respondent’s president, Mr. Incerto, directly and without advising him that he might wish to seek the guidance of counsel. It is common practice that in a civil dispute concerning alleged infringement of intellectual property rights, the first contact from a lawyer to the company concerned would be addressed to a representative of that company, such as the president. There is no duty to inform that representative that he or she might wish to be represented by a lawyer. Indeed, in many UDRP cases, the parties act on their own behalf, sometimes very effectively, without involving a lawyer. Of course, once a party chooses to be represented by a lawyer, any additional contact by one party’s counsel directly to another party now represented by counsel, thereby circumventing contact through the lawyers, could in certain instances be considered improper. However, that circumstance is not alleged in this case.
The Panel can see no reason for striking Exhibit 1 to Annex E. Exhibit 1 is a letter in which Complainant’s counsel writes to inform Respondent of Complainant’s rights in the trademark COCA-COLA, asserting Complainant’s belief that the Domain Name cannot not be used without infringing Complainant’s trademark rights, and requesting that Respondent contact Complainant in an effort to settle the matter amicably. This letter is an example of a temperately-toned “cease and desist letter,” common to trademark practice.
Regarding the Declaration of K. McCarthy, although she is a lawyer acting on behalf of Complainant, she has submitted a sworn statement “under penalty of perjury.” Similarly, the Respondent’s president, Mr. Incerto, has submitted a sworn statement “under penalty of perjury.” These respective sworn declarations describe a phone conversation that took place between Ms. McCarthy and Mr. Incerto. Read together, they each provide a recounting of that phone call and can be seen as complementary, with little contradiction, but each omitting several points that the other declaration details. However, there are points of agreement: Mr. Incerto initiated the call in response to Complainant’s letter. He asked what Complainant wanted. Ms. McCarthy indicated that her client, the Complainant, wanted to use the Domain Name and wanted Respondent to transfer it to Complainant, asserting that Complainant’s COCA-COLA trademark rights were relevant. This point was also stated in Complainant’s letter to Respondent. Mr. Incerto replied that he had no intention or interest in transferring the Domain Name. Moreover, as he confirms in his declaration, he stated that the “value of any property of mine was not simply my investment.” This statement is very similar to the description in Ms. McCarthy’s declaration, where she recounted that Mr. Incerto stated “what mattered for resale was not what he paid for the domain name but what the domain name was worth.” Mr. Incerto also states that “At no time in the conversation did I make any specific proposal or demand any dollar amount for the domain.” Ms. McCarthy’s declaration does not contradict this point. Mr. Incerto indicates that Ms. McCarthy said she would speak to her client and get back to him. Ms. McCarthy’s declaration does not mention this point. There were no further contacts between the Parties prior to Complainant filing its UDRP Complaint against Respondent.
The Panel determines that, under these circumstances, Annex E (Declaration of K. E. McCarthy) of the Complaint will not be stricken from the record. The Panel is capable of assessing the relevance, materiality and weight of this evidence, along with the Declaration of Mr. Incerto submitted on behalf of Respondent. Similar declarations by opposing parties (or lawyers acting on behalf of one party) have been submitted by literally hundreds of parties in hundreds of UDRP cases. The Panel is experienced in reviewing such documentary evidence, bearing in mind the inherent limitations of the UDRP as a dispute-settlement procedure in which no in-person hearing is held.
(ii) Request to Disregard Prior UDRP Precedent in Cases Involving Complainant
Respondent requests that the Panel give no consideration to Complainant’s collection of UDRP “precedent” cases before WIPO, as such precedent is prejudicial, discriminatory and immaterial to the present matter. While Complainant’s personal history and precedential success before the Center with an apparent 32 for 32 success record is impressive, this legal precedent should not inure to the prejudice and detriment of Respondent. There are few entities who could claim such a success before any tribunal, but such an impressive legal array of accomplishment should have no bearing on this matter. Complainant should not benefit from its prior and longstanding success under the UDRP, just as Respondent would not expect special consideration before this Panel based upon the fact that Respondent has never been the subject of any prior claim or dispute under the UDRP. Further, none of Complainant’s precedent involves 10 years of silence, with Complainant’s counsel making the first contact between the parties to manufacture the only testimony in the case for Respondent, with such testimony created a mere 46 days before filing their UDRP Complaint. There is no precedent for that.
Further, while Respondent acknowledges with respect the phenomenal accomplishments of Complainant and its iconic status, that success and the attendant financial and social power that properly accompany such success, should not overwhelm the rights of Respondent who is not as well-known or accomplished, and candidly is just one person operating a ticket business in Southport, Connecticut. Therefore, Respondent would respectfully request that these accomplishments of Complainant, which afford them the opportunity of having world class legal representation, not prejudice Respondent having an opportunity to stand equally with Complainant before this Panel. This by necessity would require no consideration of Complainant’s legal precedent under the UDRP. A party who comported itself on the Internet to have never had a claim under the UDRP should stand equally with one who has need of UDRP procedure regularly.
The Panel’s Decision
The Panel again refers to the Rules for guidance. Paragraph 15(a) of the Rules provides that the Panel shall decide this case “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Nothing in this paragraph limits the ability of the Panel to look to prior UDRP cases for potentially relevant guidance. Similarly, paragraphs 10(a) and (b) of the Rules specify that the “Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules,” and that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.” Again, there is no prohibition barring the Panel from referring to prior UDRP cases. Further, both Complainant and Respondent are free to make reference to prior UDRP cases as they argue their respective positions, and there are accessible and free online resources concerning the UDRP that make it possible for any party to benefit by seeking information about the Policy and guidance from prior decisions.
Respondent contends that Complainant should not benefit from its prior and longstanding success under the UDRP, and that Complainant’s success should not overwhelm the rights of Respondent who is just operating a ticket business in Southport, Connecticut. The Panel as it decides this case will do so in accordance with the “the Policy, these Rules and any rules and principles of law that it deems applicable.” In so doing, the Panel will weigh Respondent’s arguments and consider Respondent’s evidence in a manner that ensures the Parties are treated with equality.
Unlike certain national legal systems in which a principle of stare decisis may create an obligation on courts to honor past decisions, the Policy does not establish any principle of binding precedent. This lack of binding precedent, however, has not prevented UDRP panels from considering prior cases for their possible guidance. Any number of previous UDRP decisions can be viewed as providing relevant examples or some degree of guidance. A broader understanding of the use of “precedent” in this context might be referred to as “persuasive” or “soft” precedent. At its most basic, the exercise of considering whether a prior decision is persuasive focuses on whether a set of circumstances in a previous case (including the facts, rules of decision and reasoning for decision) are sufficiently similar and compelling to justify an assimilation of the two events. The prior case may influence the outcome in a later case, based on factual similarities between the two cases; alternatively, the same principle may suggest a contrary or different decision due to key factual or legal differences. A well-written and reasoned decision can exert more powerful precedential influence, just as a poorly reasoned decision offers little help. Based on this analysis, the Panel disagrees with Respondent’s statement that fairness in this case “by necessity would require no consideration of Complainant’s legal precedent before WIPO.” Instead, all of the above factors are taken into account by the Panel when considering any prior UDRP case raised by either party. The Panel will use this reasoned approach, as it normally does in any UDRP case, when considering any prior decisions raised by Complainant or Respondent.
As has been recited in many UDRP decisions, in order to succeed in its claim, Complainant must demonstrate that the three elements enumerated in paragraph 4(a) of the Policy have been satisfied. These are that:
(1) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the Domain Name; and
(3) Respondent has registered and is using the Domain Name in bad faith.
B. Identical or Confusingly Similar
The Panel finds that Complainant has well-established rights in the world famous and highly distinctive COCA-COLA trademark. This fame reflects the underlying strength of Complainant’s trademark and its broad scope of protection as a well-known mark. The UDRP Rules in paragraph 3(b)(viii) specify that a Complainant should “[s]pecify the trademark(s) or service mark(s) on which the complaint is based and, for each mark, describe the goods or services, if any, with which the mark is used.” Complainant has done this in its Complaint and has submitted as evidence a number of copies of its United States trademark registrations for its COCA-COLA mark.
The Panel further finds that the Domain Name is confusingly similar to Complainant’s COCA-COLA trademark. Respondent has made reference to United States federal trademark law in its arguments concerning the first element of the Policy. However, Respondent’s contentions in this regard are inapposite. In demonstrating confusing similarity under the first element of the Policy, there is no need for there to be actual use of a disputed domain name. According to WIPO’s Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), this first element “serves essentially as a standing requirement.” The WIPO Overview 2.0 provides in relevant part that:
“The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.”
The Panel observes that the Domain Name incorporates Complainant’s mark in it’s entirely except for the omission of the hyphen, while adding the descriptive word “vending”. The result is that the Domain Name is highly suggestive of a connection to Complainant, its brand and its operations. Respondent has argued that not only is there no actual use of the Domain Name for confusingly similarity to exist, but there are no goods and services to evaluate whether there could be confusingly similarity. However, the goods and services associated with Complainant’s COCA-COLA trademark are well-known and Complainant’s trademark registrations, as illustrated by those submitted in evidence in this case, cover a very broad and diverse array of goods, services, and related items – everything from plates, cups and drinking glasses, to Christmas ornaments, to thermal insulated containers for beverages. The word “vending” added to Complainant’s COCA-COLA trademark in the Domain Name is descriptive of the commercial channel through which Complainant’s products are often sold and is suggestive of a connection to Complainant and its operations. It would be reasonable to assume that Complainant and the Domain Name are somehow connected or associated. Moreover, as noted above, Complainant’s marks are among the most famous and distinctive marks in the world. Thus, it is fair to say that virtually any use of any string that incorporates these marks by anyone other than Complainant is going to lead to confusion in the minds of consumers.
For these reasons, Respondent’s argument that the mark COCA-COLA and the Domain Name are different and not confusingly similar is difficult to accept, particularly given the obvious connection between Complainant and Coca-Cola products sold commonly through vending machines. Finally, as noted above in the WIPO Overview 2.0, the confusing similarity test under the UDRP does not require a showing of confusion arising from actual use. Instead, the test involves typically “a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.” Based on this analysis, the Panel finds that the Domain Name is confusingly similar to Complainant’s well-known COCA-COLA trademark.
Because the Domain Name is confusingly similar to the COCA-COLA trademark of Complainant, the Panel considers that Complainant has satisfied paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Panel finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. Complainant has alleged that Respondent is not commonly known by the Domain Name, nor made legitimate noncommercial or fair use of it. The Panel observes that Respondent is not affiliated or related to Complainant in any way, nor from the available record is Respondent generally known by the Domain Name or authorized by Complainant to use Complainant’s trademarks. Instead, Respondent is known as True North Event Management and is a ticket brokerage company, which operates a website linked to the domain name <truenorthtickets.com>. Respondent has no connection to the vending of Coca-Cola products. Complainant has emphasized, moreover, that the vending machines used to sell Coca-Cola products are either authorized by Complainant or by its authorized bottlers, such that there are no unauthorized Coca-Cola vending machines.
Respondent in its Response contends that Complainant’s entire argument as to this second element is based on the allegation that the Domain Name was secured solely “for commercial gain […] to secure a high price for the Domain Name in a resale transaction.” The Panel disagrees. As detailed above, Complainant has raised a number of points in support of a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. Respondent, however, has failed to raise a single point that would suggest Respondent has any right or legitimate interest in the Domain Name, despite having held its registration for over 10 years. In the absence of any other plausible explanation and on balance, the Domain Name incorporating Complainant’s entire COCA-COLA trademark with the added word “vending” appears to play deliberately on Complainant’s mark. Respondent has referred to several unrelated domain names that are purportedly registered by third parties and incorporate Complainant’s COCA-COLA trademark. This reference to other domain names is immaterial to the case before the Panel and, in any event, the Panel has insufficient evidence to draw any conclusion about such unrelated domain names and the propriety of any use of Complainant’s trademarks by a third party.
For all these reasons, the Panel finds that Respondent has no rights or legitimate interests with respect to the Domain Name under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Finally, the Panel finds that Complainant has established bad faith registration and use under paragraphs 4(a)(iii) and 4(b) of the Policy based on the following factors, which persuade the Panel in this particular case:
- With respect to registration of the Domain Name, the Panel finds that Complainant has established a prima facie case that Respondent registered the Domain Name in bad faith. The Coca-Cola Company is one of the largest and best known companies in the world, selling hundreds of millions of cases of its products in the United States and around the world. It has multiple trademark registrations for its COCA-COLA trademark in the United States and around the world. Complainant’s COCA-COLA mark is one of the most famous and highly distinctive marks in the world and Complainant’s strong legal rights in the COCA-COLA trademark far predate Respondent’s registration of the Domain Name in 2002. There is no doubt that Respondent was and is aware of the famous COCA-COLA trademark – Respondent acknowledges this. There is no plausible or logical legitimate reason for why Respondent registered the Domain Name and Respondent did not put forward any. Respondent has incorporated Complainant’s COCA-COLA mark, absent the hyphen, along with the word “vending” in the Domain Name. The result is that the Domain Name is highly suggestive of a connection to Complainant, its brand and its operations, which creates confusing similarity. In the face of this obvious connection, Respondent gives no reason at all – despite submitting a lengthy Response – for why it chose to register the Domain Name. The Domain Name has nothing to do with Respondent’s own name and business, True North Event Management and ticket brokering, respectively. A direct and simple explanation for why it chose to register the Domain Name, in the face of Complainant’s allegations, might have provided the Panel with some basis for assessing whether Respondent’s registration was not in bad faith, despite the evidence that the vending machines used to sell Coca-Cola products are either authorized by Complainant or by its authorized bottlers, such that there are no unauthorized Coca-Cola vending machines. However, Respondent has provided no reason. The Panel therefore concludes that Respondent sought to register the Domain Name because of its association with Complainant, Complainant’s reputation and Complainant’s business.
- Regarding use of the Domain Name in bad faith, it is undisputed that the Domain Name does not resolve to an active website. However, the passive holding of a domain name can in certain limited circumstances be evidence of use in bad faith. This dispute presents such a special case of passive holding in bad faith. See Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (“it must be recalled that the circumstances identified in paragraph 4(b) are ‘without limitation’ - that is, paragraph 4(b) expressly recognises that other circumstances can be evidence that a domain name was registered and is being used in bad faith”). Building on the points listed in the paragraph above, Complainant’s COCA-COLA trademark is one of the most famous and highly distinctive marks in the world. The use of the COCA-COLA trademark in the Domain Name is without the authorization or consent of Complainant. There is no evidence in the record showing that the Domain Name was used for or could be used for anything other than to capitalize on the goodwill associated with Complainant. Any attempt to actively use the Domain Name would inevitably lead to a likelihood of confusion to the source, sponsorship, affiliation, or endorsement of Respondent’s website among users of the Internet who would inevitably be led to believe that such a site would be owned by, controlled by, established by or in some way associated with Complainant. The name and business activities of Respondent are completely unrelated to the Domain Name and Complainant has made out a prima facie case that Respondent does not have any rights or legitimate interests in the Domain Name. To the extent that Respondent refers to domain names apparently registered by third parties and incorporating Complainant’s trademark as justification for its own registration of the Domain Name, these comparisons are immaterial to the case before the Panel and do not excuse Respondent’s own decisions. Indeed, because a third party might be violating Complainant’s rights, this serves as no excuse for Respondent. Finally, despite submitting a lengthy Response, Respondent has not put forward one single reason for having chosen to register the Domain Name. Instead, Respondent has focused on the point that it did not make an offer to sell the Domain Name to Complainant’s counsel. As discussed above, the Panel has reviewed the respective declarations of Ms. McCarthy and Mr. Incerto. Accepting Respondent’s point as true, the Panel nonetheless disagrees with Mr. Incerto’s declaration when he stated, in respect of the Domain Name, that “the value of any property of mine was not simply my investment.” To the contrary, the UDRP in paragraph 4(b)(i) makes clear that any attempt to sell a domain name meeting the first two elements of the Policy for “valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name” is evidence of bad faith registration and use under the Policy.
Taking into account all of the above, it is not possible for the Panel to conceive of any plausible actual or contemplated active use of the Domain Name by Respondent that would not be illegitimate, such as by being a passing off, or an infringement of Complainant’s brand and strong rights under trademark law. Therefore, in the circumstances outlined above this Panel is satisfied that the passive holding of the Domain Name amounts to a use of the Domain Name in bad faith by Respondent.
In the view of this Panel, Complainant has therefore made out a sufficient case to satisfy the third element in paragraph 4(a) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <cocacolavending.com>, be transferred to Complainant.
Dated: August 27, 2012