The Coca-Cola Company v. Mr. Goran Inge Svensson
Claim Number: FA0201000103933
The Complainant is The Coca-Cola Company, Atlanta, GA (“Complainant”) represented by David J. Stewart, of Alston & Bird, L.L.P. The Respondent is Goran I. Svensson GS Meditec AB, Ahus, SWEDEN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME(s)
The domain name at issue is <sprite.nu>, registered with .NU Domain LTD.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as Panelist in this proceeding.
Anne M. Wallace, Q.C., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on January 18, 2002; the Forum received a hard copy of the Complaint on January 25, 2002.
On January 21, 2002, .NU Domain LTD confirmed by e-mail to the Forum that the domain name <sprite.nu> is registered with .NU Domain LTD and that the Respondent is the current registrant of the name. .NU Domain LTD has verified that Respondent is bound by the .NU Domain LTD 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 January 25, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 14, 2002 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on January 31, 2002.
On February 13, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Anne M. Wallace, Q.C. as Panelist.
The Complainant requests that the domain name be transferred from the Respondent to the Complainant.
The Coca-Cola Company (“TCCC”) bases its Complaint on a claim of common law rights in the famous trademark “SPRITE” as well as the rights reflected in numerous registrations issued by national trademark offices around the world, including United States Registration Nos. 704,043; 1,334,619; 1,927,996; and 2,109,200 and Sweden Registration Nos. 111,010; 131,001; 205,775; and 253,439.
Founded in 1886, TCCC is the world’s leading manufacturer, marketer, and distributor of non-alcoholic beverage concentrates and syrups used to produce beverage brands. TCCC has local operations in nearly 200 countries around the world, and its net operating revenues exceeded $20 billion dollars in calendar year 2000.
In 1960, TCCC launched a lemon-lime soft drink product under the distinctive trademark SPRITE. Soon thereafter, SPRITE became one of the best selling soft drink products in the world.
Today, SPRITE is sold in more than 190 countries worldwide. TCCC distributed more than 400 million unit cases of SPRITE in the United States last year, and more than 3.5 million unit cases in Sweden.
A great deal of the success of the SPRITE product is attributable to the substantial international advertising and promotional efforts TCCC has engaged in to support the brand since its launch. In 2000, TCCC’s marketing expenditures for the SPRITE brand exceeded $210 million in the United States and were well in excess of $1 million in Sweden. (These numbers do not include TCCC’s substantial marketing expenditures associated with its related product, DIET SPRITE (or “SPRITE LIGHT,” as it is called in some countries)).
Through continuous use of the SPRITE mark since 1960, TCCC claims valid and enforceable common law rights in the mark. In recognition of these rights, the U.S. Patent and Trademark Office (“USPTO”) has granted TCCC numerous registrations for its SPRITE mark on the principal register, including U.S. Reg. Nos. 704,043 (SPRITE); 1,334,619 (DIET SPRITE); 1,927,996 (SPRITE & Design); and 2,109,200 (SPRITE). Each of these registrations is valid and incontestable. TCCC has further been granted registrations for its mark by the trademark offices of well over a hundred other countries, including Sweden, which has granted TCCC Reg. Nos. 111,010 (SPRITE); 131,001 (SPRITE stylized); 205,775 (SPRITE); 313,717 (SPRITE); and 253,439 (for SPRITE LIGHT).
TCCC first discovered the <sprite.nu> domain name (the “Domain Name”) in January 2000. At that time, the Domain Name was not being used for any purpose. The WHOIS database operated by the registry of the .nu top-level domain name does not provide the identity of the registrant, only the registrant’s e-mail address (which, in this case, is email@example.com). TCCC’s outside counsel in Sweden, Peter Lee of Albihns Stockholm AB, instructed Jenny Johansson, one of his firm’s employees, to send an e-mail to the registrant at this e-mail address regarding the Domain Name. Ms. Johansson sent the e-mail on January 20, 2000, and, in her e-mail, stated that she would like to get in touch with the registrant regarding the Domain Name.
An individual named Göran Svensson (“Respondent”) responded to Ms. Johansson’s e-mail in a response e-mail sent on January 20, 2000. In the e-mail, Respondent provided a mobile telephone number through which he could be reached. Mr. Lee called Respondent at this number, and Respondent stated that the registrant of the Domain Name is his fourteen-year-old son, Mattias Svensson. Respondent further stated that his son registered the Domain Name to sell “graphic buttons” he creates to friends and others. Mr. Lee requested that Respondent transfer the Domain Name and, in exchange, stated that TCCC would be willing to reimburse Respondent for his legitimate out-of-pocket costs incurred in connection with the Domain Name registration. Respondent responded that this sum was not of interest to him; however, he indicated that he and his son might be willing to sell the Domain Name to TCCC for SEK 10,000 (approximately US$1,100). In a subsequent conversation, Respondent stated that he and his son were not interested in assigning the Domain Name to TCCC but that they would “rent” the Domain Name to TCCC for SEK 10,000. As justification for this amount, Respondent stated that his father’s company regularly rents domain names for this amount and more. TCCC refused Respondent’s offer.
Through subsequent research, Mr. Lee discovered that the e-mail address “firstname.lastname@example.org” is owned by GS Meditec AB, a company Respondent owns. Believing that this information confirmed TCCC’s belief that Respondent, not his son, was the true registrant of the Domain Name, Mr. Lee sent Respondent a follow-up letter on March 13, 2000 again demanding that Respondent transfer the Domain Name to TCCC. At this point, the Domain Name was still not being used for any purpose.
Mr. Lee and Respondent spoke by telephone on April 4, 2000, and Respondent refused to transfer the Domain Name. However, neither in this phone call nor in any subsequent communication did Respondent make any effort to continue his original story that his son is the Domain Name registrant.
On November 29, 2000, Respondent e-mailed Mr. Lee to inform him that he had “activated” the <sprite.nu> web site. The site to which Respondent directed Mr. Lee was in no true sense of the word “active.” Instead, the site contained references to “Internet Sprite Magazine” and purported to show a site under construction that would provide links to Internet content of interest to children. None of the links on the site were active when Mr. Lee received Respondent’s e-mail, and, upon information and belief, no links or content on the site were activated at any time thereafter.
In or about April 2001, Respondent gave up any pretense of having a legitimate reason for registering the Domain Name. He began using the Domain Name to redirect Internet users to the site for his GS Meditec business, located at the URL <software.meditec.se>. At that time, the Meditec site offered Internet links and software for physicians.
On June 13, 2001, Mr. Lee sent a follow-up letter to Respondent again requesting that he transfer the Domain name to TCCC. Respondent did not respond. Mr. Lee sent a reminder notice on August 7, 2001, but he received no response from Respondent. The Domain Name does not presently redirect users to Mr. Svensson’s site, but it opens a window which asks for user name and password and indicates that the user is being taken to <medinettsupport.nu>.
The Domain Name is Identical to the SPRITE Mark
For the reasons set forth above, TCCC owns valid and enforceable rights in the SPRITE mark which TCCC acquired well prior to the date on which Respondent registered and began using the Domain Name. The second-level name of the Domain Name is identical to TCCC’s SPRITE mark. TCCC’s Complaint therefore satisfies the first element of the ICANN Policy.
Respondent has No Rights or Legitimate Interests in the Domain Name
Respondent’s registration and use of the Domain Name is a blatant attempt to trade on the goodwill and fame associated with the SPRITE mark. Respondent registered the Domain Name more than thirty-eight years after TCCC began using its mark. Respondent has no connection or affiliation with TCCC, nor has he at any time received from TCCC a license or consent, express or implied, to use the SPRITE mark in a domain name or in any other manner.
Respondent was on notice of TCCC’s exclusive rights in the SPRITE mark as a result of TCCC’s numerous registrations for its mark in Sweden and elsewhere and TCCC’s prior extensive sales, promotion, and advertising of its mark in Sweden and elsewhere. See Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum, Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).
The e-mail address Respondent gave to the registrar for the Domain Name -- “email@example.com” -- is clear evidence that Respondent has no rights or legitimate interests in the Domain Name. His use of this address was an obvious attempt to communicate to TCCC and others wishing to trade on the fame of the SPRITE mark that the Domain Name is available for rent or sale. Respondent’s offer to rent the Domain Name to TCCC for $1,100/year immediately after being contacted by TCCC’s counsel confirms Respondent’s true motivation for registering the name.
Respondent has made a number of attempts to make his registration of the Domain Name appear legitimate, including by claiming that his son is the Domain Name owner and by posting a mock children’s site to the Internet under the Domain Name. Neither of these efforts has succeeded. Respondent’s story that his son is the Domain Name registrant is plainly untrue because: (i) the Domain Name contact information is Respondent’s; (ii) Respondent’s son has never used the Domain Name in any manner; and (iii) the only time the Domain Name has been used for an active site was to host a site for Respondent’s business.
Respondent’s mock “Internet Sprite Magazine” web site was an obvious post hoc attempt to make his registration and use of the Domain Name appear legitimate. Respondent did not create this site until two-and-a-half years after he registered the Domain Name and four months after Mr. Lee demanded that he transfer the name to TCCC. Respondent never mentioned his intent to launch such a site to Mr. Lee in any of their many prior communications. When the content did not motivate TCCC to buy or rent the Domain Name, Respondent quickly abandoned the content and began using the Domain Name to redirect Internet traffic to his business web site. Thus, instead of evidencing rights or legitimate interests in the Domain Name, Respondent’s use of the Domain Name evidences the contrary.
Respondent Registered and has Used the Domain Name in Bad Faith
1. Respondent Registered the Mark in Bad Faith
In light of the substantial fame and notoriety of the SPRITE mark, it is inconceivable that Respondent could have registered the Domain Name without knowledge of TCCC’s rights in its mark. Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 (WIPO, May 30, 2000) (holding that respondent should have known of complainant’s rights in the “Deutsche Bank” mark because of the widespread use and fame of the mark at the time of registration); Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO, Sept. 8, 2000) (finding as evidence of bad faith Respondent’s awareness of Complainant’s famous mark at the time of registering the domain name as well as awareness of the deception and confusion that would inevitably follow if he used the domain name). Moreover, his use of the e-mail address “firstname.lastname@example.org” serves as a clear signal that he registered the Domain Name with full knowledge of TCCC’s rights and with an intent of trading on those rights in violation of ICANN Policy ¶ 4(b)(i).
Even if Respondent were to claim ignorance of TCCC’s rights, TCCC’s numerous registrations for its mark constitute constructive notice to Respondent of TCCC’s rights. See, e.g., Marriott Int’l, Inc. v Momm Amed Ia, FA 95573 (Nat. Arb. Forum, Oct. 23, 2000) (recognizing evidence of bad faith includes actual or constructive knowledge of Complainant’s use of its commonly known mark when registering the domain names); Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, Apr. 17, 2000) (same). Respondent has therefore registered the Domain Name in bad faith.
2. Respondent Has Used the Domain Name in Bad Faith
Respondent plainly registered the Domain Name to rent or sell it to TCCC. He confirmed this fact by offering to rent the Domain Name to TCCC for well in excess of his legitimate out of pocket costs associated with the name as soon as he was contacted by TCCC’s counsel. Respondent’s actions constitute a textbook case of bad faith use under the UDRP. See, e.g., ICANN Policy ¶ 4(b)(1); America Online, Inc. v. QTR Corp., FA 92016 (Nat. Arb. Forum Feb. 10, 2000) (bad faith found where registration record for domain name stated “This domain name is for sale”).
Respondent made no use of the Domain Name for more than two and one-half years. This alone is sufficient to permit and inference of bad faith. See, e.g., Perot Systems Corp. v. Hall, FA 95310 (Nat. Arb. Forum Aug. 29, 2000) (passive holding of PEROTSYS.COM for a year found to constitute evidence of bad faith); The Caravan Club v. Mrgasale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (passive holding of THECARAVANCLUB.COM for five months “permits an inference of registration and use in bad faith”); Hewlett-Packard Co. v. Martineau, FA 95359 (Nat. Arb. Forum Aug. 30, 2000) (passive holding of PHOTOSMART.ORG three and one-half months found to evidence bad faith registration and use).
When Respondent eventually did begin using the Domain Name (after receiving notice from TCCC’s counsel), the only active use he made was to redirect Internet traffic to the web site for his business. Respondent’s business has nothing to do with children or “sprites” or any other subject that could possibly justify his using the Domain Name in this manner: his business is a medical software business. Respondent’s use of the Domain Name is therefore an obvious attempt to drive Internet traffic looking for information about TCCC’s SPRITE product to Respondent’s commercial web site, for Respondent’s financial gain. Even if consumers recognize once they reach Respondent’s site that they have arrived at the wrong destination, the initial interest confusion Respondent is creating by using the <sprite.nu> domain name to drive Internet traffic to his site nevertheless constitutes bad faith in violation of ICANN Policy ¶ 4(b)(iii). See, e.g., Two Systems Enterprises Co., Ltd. v. Sonie’s Creations, AF-0911, (eResolution Sept. 7, 2001); Sony Corp. v. Times Vision, Ltd., FA 95686 ( Nat. Arb. Forum Mar. 9, 2001); see also Interstellar Starship Services Ltd. v. Epix Inc., 184 F.3d 1107, 51 USPQ2d 1535 (9th Cir. 1999).
Finally, the totality of the evidence demonstrates that Respondent began using the Domain Name, at least in part, to taunt TCCC into buying or renting the Domain Name from him. Such conduct further evidences Respondent’s bad faith use of the Domain Name and entitles TCCC to transfer of the name under the ICANN Policy.
The registration was made for Respondent’s son Mattias, who at that time also had the name <mattias-svensson.nu>. Since a 14 yr old boy holds no legal status in Sweden unless his parents okay a buy, Respondent agreed to let his own privately owned business formally make the registration. Respondent corporation also has a paid registration for his daughter Maria Svensson.
Preferably, Respondent’s son wanted the domain <sprites.nu>, but that was taken so he agreed to <sprite.nu>.
In the English dictionary SPRITE stands for:
Fairy, nymph, elf, goblin, dryad, leprechaun, brownie, gnome.
This is borne out if you check the word SPRITE in Microsoft Word by pressing SHIFT+F7.
Mattias is now 16 years old.
Respondent points out:
In Encyclopaedia Britannica, the reference to SPRITE does not refer to Coca Cola Company. Rather, is refers to red sprites and blue jets, “flashes of light that occur above thunderstorms and that are associated with normal lightning in thunderclouds.” This publication illustrates the sprite through pictures of thunderstorms.
It is obvious then, that the word SPRITE does not have any ‘drinking associations’ but instead stands for important intellectual properties- like brilliant paintings or software. If SPRITE should be a brand then it should stand for something intellectual and something that could be displayed in a graph, picture or painting like that illustrated in the Encyclopaedia Britannica. This is what Respondent’s son meant by use of the word SPRITE.
Using <google.com> as search engine and searching SPRITE on Swedish pages, Respondent found numerous activities using the name ‘SPRITE’. These included, among others, software, horses, motor vehicles, and publications. One of these was a University of Alaska site about an observation program involving Red Sprites and Blue Jets.
Coca-Cola only comes up as No.10 in this hit list, and the site contained information suggesting that “Coca-Cola is harmful to your health” – the url is http://www.idt.mdh.se/mei/colatoppen/index.phtml?sort=sprite.
Searching globally <sprite.com> is the No.1 hit. On viewing the site, Respondent says it is uncertain that it is a website published by Coca-Cola Company.
The present status of the use of the word SPRITE on Internet in Sweden and globally, shows that Coca-Cola Company does not come up on the top-10 list using <google.com>.
SPRITE is used as an acronym for scientific purposes and in describing properties in software (Like quick-time-movie that is well known) and in animation software.
Respondent also had a friend in school who got an Austin Sprite car from his father on graduation.
Respondent submits that the word SPRITE – was not invented by Coca-Cola Company. It is much older and stands in all dictionaries for items belonging to the intellectual property side and not to food and drinking.
The Webb content at <sprite.nu> has not at any time referred to Coca-Cola Company or the “Sprite” refresher. The registration refers to class 30 in Sweden and 32 in the US: “Frusen konfekt, sorbet och preparat för tillverkning därav.” (in Swedish) – i.e. ‘food stuffs” only– not all classes.
Anyone may brand a car “Sprite”.
Anyone may brand a boat “Sprite”.
Anyone may brand a software “Sprite”.
Anyone may brand his paintings “Sprite”.
Anyone may brand his plane “Sprite”.
Anyone may brand his www “sprite” if he is not in the food-beverage business.
What is unlawful is to brand food or drinks “Sprite”.
Respondent says the statements from Mr Lee are not a complete description of what took place. They omit some important aspects, all to give the impression that Respondent wants to blackmail Coca-Cola Company. Respondent points out:
For: Nonalcoholic, maltless soft drinks and preparations for making same – namely fruit, flavoured drinks, root beer and ginger ale – In class 45. [As registered Sept 6 1960]
Respondent put his Webb content for <sprite.nu> ‘behind password’ as a response to Mr Lee’s never ending letters.
I find that the Respondent’s domain name is identical to Complainant’s SPRITE trademark, but that Respondent has established a right or legitimate interest in the domain name and Respondent did not act in bad faith. That being the case, Complainant’s claim cannot succeed.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 and/or Confusingly Similar
Complainant holds rights in the trademark SPRITE. The domain name in question is <sprite.nu>. With the exception of the extension .nu, the domain name is identical to Complainant’s mark.
Rights or Legitimate Interests
It is clear from the evidence that Complainant does not hold exclusive rights in SPRITE. It does have exclusive rights in relation to the uses for which it has registered trademarks, but the word SPRITE itself is a generic word. For example, the evidence before me establishes that SPRITE is a generic term in the computer software industry, that it is a scientific term for flashes of light during a thunderstorm, and that it is commonly known to be a word to describe a fairy, nymph or elf. There is also evidence before me that the word SPRITE is used in other trademarks in connection with other business ventures outside of Complainant’s use of the mark for soft drinks.
I accept Respondent’s evidence that Respondent’s intention in registering the domain name was to acquire it for use of his son. The initial intention of the Respondent’s son was to sell “graphic buttons” which he makes. This would be a legitimate use in the circumstances. The word SPRITE as used in the domain name is intended as a reference to the scientific term. Respondent created the web site, Internet Sprite Magazine, to offer to children the easy retrieval of Internet information on school subjects like chemistry, physics, biology, and medicine. While the content is currently behind a password, this is nevertheless a legitimate fair use of the domain name. There is no evidence that Respondent has intended to misleadingly divert consumers or to tarnish Complainant’s trademark. In the circumstances, therefore, Respondent has established a right or legitimate interest in the domain name. Complainant fails on the second element.
Registration and Use in Bad Faith
While it is not necessary to decide this question, I have reviewed the evidence and find that the domain name was not registered by Respondent in bad faith. While there were discussions about transfer of the name for a consideration, Respondent did not initiate those discussions. Complainant did. Furthermore, intention of the Respondent was to acquire the name for his son, not to acquire it for the purpose of transferring to Complainant for in excess of its out of pocket expenses. There is no evidence of a pattern of such conduct. There is no evidence that Respondent sought to disrupt the business of a competitor. Respondent is not a competitor of Complainant. There is no evidence that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site. Lastly, there is no other evidence that would establish bad faith in the circumstances. Complainant fails on this element as well.
The Complaint of The Coca-Cola Company is hereby dismissed.
Anne M. Wallace, Q.C., Panelist
Dated: February 27, 2002
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