WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Honest Tea, Inc. and The Coca-Cola Company v. Nahed El Shaweesh
Case No. D2017-0757
1. The Parties
The Complainants are Honest Tea, Inc. of Delaware, United States of America (“United States”) and The Coca-Cola Company of Atlanta, Georgia, United States, represented by Bates & Bates LLM, United States.
The Respondent is Nahed El Shaweesh of El Nasser, Gaza, Palestine.
2. The Domain Name and Registrar
The disputed domain name <honestdrink.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 13, 2017. On April 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2017. The Respondent provided Informal communications to the Center on April 23 and May 10, 2017.
The Center appointed Steven A. Maier as the sole panelist in this matter on May 18, 2017. 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.
The Complaint is brought by two Complainants. On the basis of the matters set out below, the Panel finds that the Complainants have a specific common grievance against the Respondent, and/or that the Respondent has engaged in common conduct that has affected the Complainants’ individual rights in a similar fashion; and that it would be equitable and procedurally efficient to permit both Complainants to proceed.
4. Factual Background
The Complainant Honest, Tea, Inc. is a wholly-owned subsidiary of the Complainant The Coca-Cola Company.
The Complainants severally own a significant number of trademark registrations in territories throughout the world which comprise or include the mark HONEST and are registered for goods and services including beverages. Those registrations include, for example:
- United States trademark number 4076733 for the word mark HONEST, registered on December 27, 2011 for goods and services including tea and tea-based beverages and herbal teas in Class 30 and non-alcoholic beverages containing fruit juice in Class 32.
- European Union trademark number 11965043 for the word mark HONEST, registered on December 3, 2013 for goods and services including coffee, tea and a variety of other beverages in Class 30 and beers, mineral and aerated waters, other non-alcoholic beverages, fruit beverages and fruit juices in Class 32.
The Complainants provide evidence of numerous other registrations for the mark HONEST and other trademarks including HONEST BEVERAGES and HONEST TEA registered in various territories, including the Americas, Europe, the Middle East and the Far East, for similar goods and services as set out above.
The disputed domain name <honestdrink.com> was registered on December 16, 2015.
The Respondent is an individual resident in Palestine.
According to evidence submitted by the Complainants by way of screen prints, on March 20, 2017 the disputed domain name resolved to a website at “www.honestdrink.com” which included links to drinks and drink-related products and stated that the disputed domain name was for sale.
5. Parties’ Contentions
The Complainants state that they have been in the business of developing, manufacturing and selling tea, tea-based beverages and non-alcoholic beverages containing fruit juice under the HONEST trademark since 1998. The Complainants refer to their trademark registrations. They also submit that they have used the URL “www.drinkhonest.com” since June 17, 2015 and refer to a number of other domain names comprising the term “drinkhonest”, including <drinkhonest.co.uk> and <drinkhonest.de>, which they say they have used in connection with the sale of products under the HONEST mark.
The Complainants submit that the disputed domain name is identical to a trademark in which they have rights. Specifically, they argue that the disputed domain name incorporates their trademark HONEST and related trademarks. They also point to their website at “www.drinkhonest.com” and state that disputed domain name simply inverts the terms “drink” and “honest”.
The Complainants submit that the Respondent has no rights or legitimate interests in respect of the disputed domain name. They say that they have never licensed or authorized the Respondent to use their HONEST trademarks. They contend that the Respondent started to use the disputed domain name for his website at “www.honestdrink.com” some six months after they commenced using their website at “www.drinkhonest.com” and that it is the Respondent’s intention to cause confusion to Internet users, including confusion as to the origin of the Respondent’s website. They also say that the Respondent’s website contains inaccurate information concerning beverages which is liable to tarnish the image of the Complainant’s trademarks. The Complainants contend that the Respondent’s use of the disputed domain name constitutes neither use in connection with a bona fide offering of goods or services not legitimate noncommercial or fair use.
The Complainants submit that the disputed domain name has been registered and is being used in bad faith. The Complainants repeat the contentions that the disputed domain name is confusingly similar to their HONEST trademark and to their URL at “www.drinkhonest.com”. They allege that the Respondent’s use of the disputed domain name for a website concerning beverages is clearly designed to confuse Internet users and to profit from the goodwill attaching to the Complainant’s trademarks. The Complainants also exhibit email correspondence with the Respondent including an email dated February 10, 2017 in which the Respondent states:
“Look, I am a domainer with more than 900 domains and I have my lawyer, but if you want to end the
deal I am willing to accept $1500 for it . The UDRP will cost alone $2500. So, I am willing to accept to
get back what I spend in Godaddy auction to get it, but if we will go to court then I will not even
accept $50K for it!”
The Complainants seek a transfer of the disputed domain name.
The Panel determines that the Respondent’s emails to the Center dated April 23 and May 10, 2017 be treated as his formal Response.
The Respondent submits that he has procedures underway to register his own trademark in Palestine. He states that he commenced these procedure in March 2017 and can produce relevant documents. He states that the disputed domain name is currently used as a GoDaddy parking page which shows random advertisements and none involving tea. The Respondent states that he acquired the disputed domain name for the purposes of a business which will sell a drink named Honest Drink, made from medicinal herbs, to be sold only in Palestine. The Respondent argues that “honest” is a generic word and that the Complainants cannot own trademark rights in it. He points to the domain name <honestdrinks.com>, which he says is owned by a party other than the Complainants in Belgium, and asks why the Complainants have not fought for that domain name.
6. Discussion and Findings
In order to succeed in the Complaint, the Complainants are required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainants have demonstrated that they have extensive registered trademark rights for the mark HONEST in connection with beverages, i.e. drinks. They have also claimed (and the Respondent has not disputed) that they have used the URL “www.drinkhonest.com” in commerce since June 2015, as a result of which the Panel finds that the Complainants have obtained some level of unregistered trademark rights in that term. The Panel considers in any event that, for the purposes of paragraph 4(a)(i) of the Policy, the disputed domain name <honestdrink.com> is confusingly similar to the Complainant’s trademark HONEST as registered for beverages.
B. Rights or Legitimate Interests
The disputed domain name consists of a combination of two “dictionary” words, i.e. “honest” and “drink”. While the Complainants have obtained some level of goodwill in the term “drinkhonest” the Panel is not of the view that the disputed domain name <honestdrink.com> is inevitably referable to the Complainants or inherently abusive. The question therefore arises of whether the Respondent registered the disputed domain name for a legitimate purpose such as those contemplated by paragraph 4(c) of the Policy, or alternatively, in the knowledge of the Complainants’ trademark rights and with the intention of taking unfair advantage of the Complainants’ goodwill.
In this case, the Panel is not persuaded that the Respondent registered the disputed domain name for any legitimate purpose. The Panel notes that the disputed domain name was registered six months after the Complainants started using the URL at “www.drinkhonest.com”. While the Respondent states that he intended to use the disputed domain name for the purpose of a legitimate drinks company in Palestine, he has provided no evidence of any preparations to develop any such business prior to having notice of this dispute. While he claims to have applied for a Palestine trademark in March 2017, this was in any event after the date of his correspondence with the Complainants referred to above. Nor does the Respondent explain why the term “honest” would have been particularly appropriate for a drink made from medicinal herbs. Bearing all the above in mind, and having regard to the contents of the Respondent’s email to the Complainants dated February 10, 2017 offering to sell the disputed domain name, the Panel concludes on balance that the Respondent registered the disputed domain name in the knowledge of the Complainants’ rights and with the intention of taking unfair advantage of the Complainants’ goodwill. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel accepts the Complainant’s evidence that the Respondent has used the disputed domain name for the purpose of a parking page which contains links to drinks and drink-related products. The Panel finds that, owing to the Complainant’s registered trademarks HONEST for drinks and its established use of the URL “www.drinkhonest.com”, the Respondent’s use of the disputed domain name is likely to confuse Internet users into believing that the disputed domain name is owned or authorized by the Complainants. Furthermore the Panel finds that the Respondent has taken unfair advantage of that confusion to profit from sponsored links on his website and to offer the disputed domain name for sale. In the circumstances, the Panel finds that, by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of his website or of a product or service on his website (paragraph 4(b)(iv) of the Policy). Alternatively the Panel finds that the Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainants or a competitor of the Complainants for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name (paragraph 4(b)(i) of the Policy). The Panel therefore concludes that the disputed domain name has been registered and is being used in bad faith.
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, <honestdrink.com>, be transferred to the Complainants.
Steven A. Maier
Date: May 22, 2017