The Coca-Cola Company v. Mr. Goran Inge
Svensson
Claim Number: FA0201000103933
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@sprite.nu 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.
RELIEF SOUGHT
The Complainant
requests that the domain name be transferred from the Respondent to the
Complainant.
PARTIES’ CONTENTIONS
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
for.rent@swipnet.se). 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 “for.rent@swipnet.se” 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 -- “for.rent@swipnet.se” -- 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 “for.rent@swipnet.se” 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.
None
FINDINGS
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.
DISCUSSION
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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