WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Coca-Cola Company v. Frank Rasile; Godwin Wayne

Case No. D2014-1836

1. The Parties

The Complainant is The Coca-Cola Company of Atlanta, Georgia, United States of America, represented by King & Spalding, United States of America.

The Respondents are Frank Rasile of Fremont, California, United States of America, in relation to the disputed domain names <mycokerewards.org>, <mycokereward.org>, <cocacolareward.net> and <coke-reward.net> and Godwin Wayne of Johannesburg, South Africa, in relation to the disputed domain names <cokeaward.org> and <cokerewards.net>.

2. The Domain Names and Registrars

The disputed domain names <mycokerewards.org>, <mycokereward.org>, <cocacolareward.net> and <coke-reward.net> are registered with the registrar eNom.

The disputed domain names <cokerewards.net> and <cokeaward.org> are registered with the registrar Web4Africa Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2014. On October 21, 2014, the Center transmitted by email to the registrars a request for registrar verification in connection with the disputed domain names. On October 21, 2014, the registrar eNom transmitted by email to the Center its verification response confirming that the Respondent Frank Rasile is listed as the registrant of the <mycokerewards.org>, <mycokereward.org>, <cocacolareward.net> and <coke-reward.net> disputed domain names and providing the contact details. On October 29, 2014, the registrar Web4Africa Inc.

transmitted by email to the Center its verification response confirming that the Respondent Godwin Wayne is listed as the registrant of the <cokerewards.net> and <cokeaward.org> disputed domain names and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On November 20, 2015, Web4Africa Inc. confirmed that the disputed domain name <cokerewards.net> had been placed under registrar lock. In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on November 25, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was December 15, 2014. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 16, 2014.

The Center appointed John Swinson as the sole panelist in this matter on January 8, 2015. 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 Complainant is The Coca-Cola Company, an American beverage company, which owns a number of brands, including Coca-Cola, commonly referred to as Coke. The Complainant launched a customer loyalty incentive program branded “My Coke Rewards” in 2006.

The Complainant owns numerous trade marks and service marks. It has registered trade mark rights in COCA-COLA dating from 1927, in COKE dating from 1944, in MY COKE REWARDS dating from 2005 and in MYCOKEREWARDS.COM dating from 2007. The Complainant provided evidence of the relevant trade mark registrations.

The Respondents are two individuals: Frank Rasile, of the United States of America, and Godwin Wayne, of South Africa. Neither Respondent filed a Response, and consequently little information is known about the Respondents.

The disputed domain names were registered as follows:

- <mycokerewards.org> on September 17, 2014 (website unavailable);

- <mycokereward.org> on April 2, 2014 (website unavailable);

- <cocacolareward.net> on February 20, 2014 (redirects to a search engine home page);

- <coke-reward.net> on August 1, 2014 (website unavailable);

- <cokeaward.org> on January 3, 2014 (website states the domain has expired and features PPC links relating to the Complainant and its competitors); and

- <cokerewards.net> on September 13, 2013 (website states the domain has expired and features PPC links relating to the Complainant and its competitors).

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are as follows.

Multiple Respondents

The Complainant submits that a single complaint can be brought as the same “domain name holder” has registered the disputed domain names. It submits that the “holder” of a domain name can be someone other than the registrant, citingKimberly-Clark Corporation v. N/A, Po Seer and N/A, Hu Lim, WIPO Case No. D2009-1345. The “holder” of a domain name is any person who has such an interest in the domain name that provides him or her with apparent or actual control over the domain name.

The Complainant submits that the following indicate “common control” over the disputed domain names (see, e.g., Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281):

- the WhoIs records for the disputed domain names all use the same email address for the registrant even though two personal names are given;

- the disputed domain names all infringe on Complainant’s trade marks in a similar fashion; and

- the disputed domain names either currently resolve to or have previously resolved to active websites with identical content.

Identical or Confusingly Similar

The disputed domain names are all confusingly similar to at least one of the Complainant’s trade marks (as listed in Factual Background above). Additionally, the disputed domain name <mycokerewards.org> is identical to the Complaint’s MY COKE REWARDS registered trade mark.

Rights or Legitimate Interests

The Respondents have no rights or legitimate interests in any of the Complainant’s trade marks. The Complainant submits that the Respondents are using the disputed domain names as part of a phishing scheme involving text messages and emails, which directs consumers to websites that appear to be the Complainant’s genuine websites. The Complainant has received complaints from consumers in relation to this scheme. Such use is not a bona fide offering of goods or services.

There is no evidence that the Respondents have been commonly known by the disputed domain names. There is no legal or business relationship between the Complainant and the Respondents that would give rise to any license, permission or authorization for the Respondents to use the disputed domain names.

The Respondents have not been making a legitimate noncommercial or fair use of the disputed domain names.

Registered and Used in Bad Faith

The disputed domain names were registered and are being used in bad faith. The disputed domain names were registered with full knowledge of the Complainant’s business and various trade marks. The disputed domain names are being used in relation to a promotion that is designed to make consumers (falsely) believe that they have won money from the Complainant. The Respondents’ use of the disputed domain names is intended to create confusion with the Complainant’s trade marks and to take advantage of that confusion for financial gain.

B. Respondents

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:

(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

The onus of proving these elements remains on the Complainant even though Respondents have not filed a Response.

A. Procedural Issues

Multiple Respondents

The Complaint has been filed against multiple Respondents. The panel in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, supra, comprehensively addresses this issue. To summarize, consolidation of respondents is appropriate where there is “common control” of various domain names. In this case, the following evidences common control:

- the WhoIs records for the disputed domain names all use the same email address;

- the similarity of the disputed domain names;

- the current inactivity of all of the disputed domain names; and

- the similarity of the previous content on the websites at the disputed domain names.

The Panel also notes that this consolidation of Respondents will be procedurally efficient. The Panel is of the view that this consolidation will not prejudice the rights of any party, and the Respondents did not file submissions to the contrary.

Failure to file a Response

The Respondents’ failure to file a response does not automatically result in a decision in favour of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondents' default.

B. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the disputed domain names are identical or confusingly similar to the Complainant’s trade marks.

As has been established by numerous previous panels, the Complainant has registered trade mark rights in COKE and COCA-COLA. The Complainant also has registered trade mark rights in MY COKE REWARDS and uses MYCOKEREWARDS.COM.

The following disputed domain names are confusingly similar to the Complainant’s COKE trade mark: <mycokerewards.org>, <mycokereward.org>, <coke-reward.net>, <cokeaward.org> and <cokerewards.net>. The additional descriptive terms “reward”, “award” and “rewards” only add to the confusion, given the Complainant’s customer loyalty program is called “My Coke Rewards”. These disputed domain names are also confusingly similar (and in the case of <mycokerewards.org>, identical) to the Complainant’s MY COKE REWARDS trade mark.

The disputed domain name <cocacolareward.net> is confusingly similar to the Complainant’s COCA-COLA trade mark. For the reasons stated above, the descriptive term “reward” only adds to this confusion.

The Complainant succeeds on the first element of the Policy.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondents have no rights or legitimate interests in respect of the disputed domain names. The Complainant is required to make out a prima facie case showing that the Respondents lack rights or legitimate interests.

The Panel finds that the Complainant has made out a prima facie case. This finding is based upon the following:

- The Respondents have not been commonly known by the disputed domain names.

- The Complainant has not authorized or licensed either Respondent to use the any of the Complainant’s trade marks.

- Neither Respondent has used, or made demonstrable preparations to use, any disputed domain name in connection with a bona fide offering of goods or services. There is currently no active website at any of the disputed domain names. In the past, the websites at the disputed domain names reproduced the Complainant’s websites and trade marks. Given the Complainant’s submissions that the Complainant has not authorized this use, and has no relationship with either Respondent, the Panel can think of no circumstances in which this reproduction could be legitimate.

The Respondents had the opportunity to demonstrate their rights or legitimate interests, but did not do so. In the absence of a Response from the Respondents, the prima facie case established by the Complainant has not been rebutted.

In light of the above, the Complainant succeeds on the second element of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and subsequently used the disputed domain names in bad faith.

The Complainant has had registered trade mark rights in COCA-COLA since 1927 and COKE since 1944. The disputed domain names were registered in 2013 and 2014. In light of the significant worldwide reputation of the Complainant and the scope of its operations, the Panel can confidently infer that the Respondents had knowledge of both the Complainant and its trade marks when they registered the disputed domain names.

Where the reputation of a complainant in a given mark is significant and the mark has strong similarities with (or is identical to) the disputed domain name, the likelihood of confusion is such that bad faith may be inferred (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 and cases cited therein). Here, the Panel concludes that the Respondents sought to make use of the Complainant’s substantial reputation and thus registered the disputed domain names in bad faith.

In the past, the websites at the disputed domain names closely reproduced the Complainant’s websites (the Complainant provided examples of its websites for South Africa and Zimbabwe). The Respondents’ websites used the Complainant’s COKE and COCA-COLA trade marks and featured the same graphical layout and colour scheme as that used by the Complainant. If a consumer found any of the Respondents’ websites, they likely would have believed that the website was operated by the Complainant.

The Panel finds that, in reproducing the Complainant’s website in the manner outlined above, the Respondents are intentionally attempting to attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Complainant’s trade marks as to the source of the website (see paragraph 4(b)(iv) of the Policy, and see, e.g., Karen Millen Fashions Limited v. Leonie Helena, WIPO Case No. D2013-0001). The Panel also finds relevant in making this conclusion the Complainant’s submission of a consumer complaint evidencing that one of the disputed domain names, <cokeaward.org>, was used in connection with a phishing scheme.

In light of the above, the Panel finds that the Complainant has succeeded on the third element of the Policy.

7. Decision

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 names <cocacolareward.net>, <cokeaward.org>, <coke-reward.net>, <cokerewards.net>, <mycokereward.org> and <mycokerewards.org> be transferred to the Complainant.

John Swinson
Sole Panelist
Date: January 21, 2015