The Coca-Cola
Company v. Spider Webs Ltd
Claim Number: FA0111000102459
PARTIES
Complainant is Coca-Cola Company, Atlanta, GA (“Complainant”) represented by Bradley A. Slutsky, of King & Spalding. Respondent is Spider Webs, Ltd., Houston, TX (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <coca-colalight.com>, <coca-colalight.net>, <coca-colalight.org>, <cocacolalight.net>, and <cocacolalight.org>, registered with Network Solutions, Inc.
PANEL
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 16, 2001; the Forum received a hard copy of the Complaint on November 19, 2001.
On November 20, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <coca-colalight.com>, <coca-colalight.net>, <coca-colalight.org>, <cocacolalight.net>, and <cocacolalight.org> are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 26, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 17, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@coca-colalight.com, postmaster@coca-colalight.net, postmaster@coca-colalight.org, postmaster@cocacolalight.net, and postmaster@cocacolalight.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On December 31, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following allegations:
The disputed domain names <cocacolalight.net> and <cocacolalight.org> are confusingly similar to Complainant’s marks. The disputed domain names <coca-colalight.com>, <coca-colalight.net>, and <coca-colalight.org> are identical to Complainant’s marks. Respondent has no rights or legitimate interests in respect of the disputed domain names. Respondent registered and used the disputed domain names in bad faith.
B. Respondent did not submit a Response in this proceeding.
FINDINGS
Complainant registered its COCA-COLA LIGHT trademark in Part A of the Register of the Trademark Registry, Patent Office of Great Britain and Northern Ireland on March 25, 1983 as Registration No. 1,192,881. Complainant also holds registered trademarks in COCA-COLA LIGHT in 40 other countries.
Complainant registered its COCA-COLA trademark on the Principal Register of the United States Patent and Trademark Office on January 31, 1928 as Registration No. 238,145. Complainant has continuously used the COCA-COLA mark in commerce in the United States since 1886. Complainant also holds registered trademarks in COCA-COLA in 41 other countries.
Respondent registered the disputed domain names on September 22, 1999, and has used the sites to redirect users to another site, <spintopic.com>, which has no apparent connection to the disputed domain names. Respondent has registered nearly 2,000 Internet domain names including 300 domain names that contain either company names or famous trademarks. E. & J. Gallo Winery v. Spider Webs Ltd., 129 F.Supp. 2d 1022, 1035 (S.D.Tex. 2001). Respondent offers many of these names for sale on its website and through the online auction sites. See id.
DISCUSSION
Paragraph
15(a) of the Rules instructs this Panel to “decide a complaint on the basis of
the statements and documents submitted in accordance with the Policy, these
Rules and any rules and principles of law that it deems applicable.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(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 or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical to
and/or Confusingly Similar
Complainant has
demonstrated its rights in the COCA-COLA and COCA-COLA LIGHT marks within the
meaning of Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that
the mark be registered in the country in which a Respondent operates. It is sufficient that a Complainant can
demonstrate a mark in some jurisdiction).
The disputed domain names are identical to Complainant’s COCA-COLA LIGHT mark. The omission of the hyphen between COCA and COLA and spaces between COLA and LIGHT are insignificant to the “identical” determination. See Chi-Chi’s Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to Complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark); see also InfoSpace.com v. Tenenbaum Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name <info-space.com> is identical to Complainant’s INFOSPACE trademark”).
Similarly, the addition of “.com,” “.org,” and “.net” to the disputed domain names does not significantly affect the names for the purpose of determining whether they are identical to Complainant’s marks. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain “.com” after the name POMELLATO is not relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights to or
Legitimate Interests
Complainant has established that it has rights to and legitimate interests in the marks contained in their entirety within the domain names in issue. Respondent has not shown such rights and Respondent’s failure to submit a Response in this proceeding permits the Panel to conclude that Respondent has no rights or legitimate interests in the disputed domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
By using the
disputed domain names to redirect Internet users to Respondent’s site,
Respondent has not made a bona fide offering of goods or services within the
meaning of Policy ¶ 4(c)(i). See Big Dog Holdings, Inc. v. Day, FA 93554
(Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was
diverting consumers to its own website by using Complainant’s trademarks); see
also Hewlett-Packard Co. v. High
Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000)
(finding no rights or legitimate interests where the Respondent registered the
domain name with the intention of selling the domain name).
No evidence in the record suggests that Respondent is commonly known by any of the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. & D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any right or interest it may possess).
Finally, it cannot
be said that Respondent is making a legitimate noncommercial or fair use of the
domain names, without intent for commercial gain to misleadingly divert
consumers pursuant to Policy ¶ 4(c)(iii).
See AltaVista v. Krotov,
D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct
users to other, unconnected websites does not constitute a legitimate interest
in the domain name); see also Kosmea
Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the
domain name where Respondent had an intention to divert consumers of
Complainant’s products to Respondent’s site by using Complainant’s mark).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied, and that Respondent has no rights or legitimate interests in respect of the disputed domain names.
Registration and
Use in Bad Faith
Complainant urges that the Respondent registered and used the disputed domain names in bad faith and the evidence in the record permits this inference. By registering several domain names comprised of Complainant’s marks, Respondent has demonstrated a pattern of behavior calculated to prevent Complainant from obtaining domain names reflecting its marks. This behavior is evidence of bad faith under the Policy. See YAHOO! Inc. v. Syrynx, Inc., D2000-1675 (WIPO Jan. 30, 2001) (finding bad faith pattern pursuant to Policy ¶ 4(b)(ii) in Respondent's registration of two domain names incorporating Complainant's YAHOO! mark); see also Caterpillar Inc. v. Miguel Miyar Jr., FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct).
Further, Respondent’s selection and use of domain names that are so widely associated with Complainant exhibits opportunistic bad faith, by attempting to take advantage of Complainant’s international recognition and goodwill. See America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that ICQ mark is so obviously connected with Complainant and its products that the use of the domain names by Respondent, who has no connection with Complainant, suggests opportunistic bad faith); see also Singapore Airlines Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) (“The domain name “singaporeairlines.com” is so obviously connected with a well-known airline that its very registration and use by someone with no connection to the airline suggests opportunistic bad faith. Indeed, it is hard to imagine a more blatant exercise in ‘cybersquatting’”).
Accordingly, the
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.
Accordingly, it is Ordered that the <coca-colalight.com>, <coca-colalight.net>, <coca-colalight.org>, <cocacolalight.net>, and <cocacolalight.org> domain names be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 14, 2001.
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