The Coca-Cola Company v. H3A H3A a/k/a
Eric Goiset
Claim Number: FA0201000104043
PARTIES
Complainant
is The Coca-Cola Company, Atlanta,
GA (“Complainant”) represented by David
J. Stewart, of Alston & Bird,
LLP. Respondent is H3A H3A a/k/a Eric Goiset, Marbella,
Malaga, SPAIN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <cocacola-usa.com>,
registered with Go Daddy Software Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge, has no known conflict in serving as Panelist in this
proceeding.
John
J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically
on January 23, 2002; the Forum received a hard copy of the Complaint on January
28, 2002.
On
January 24, 2002, Go Daddy Software Inc. confirmed by e-mail to the Forum that
the domain name <cocacola-usa.com>
is registered with Go Daddy Software Inc. and that Respondent is the current
registrant of the name. Go Daddy
Software Inc. has verified that Respondent is bound by the Go Daddy Software
Inc. 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 28, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 18, 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@cocacola-usa.com 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
February 25, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed John J. Upchurch 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 name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1.
Complainant
bases its Complaint upon its rights in the world famous trademark “COCA‑COLA.” Those rights are reflected in the numerous
registrations issued by national trademark offices around the world for the
mark, including United States Registration Nos. 238,145; 1,508,297; 1,741,955;
and 1,752,201; Canadian Registration Nos. TMDA 10433; TMDA 55268; TMA 374,173;
TMA 333,882; TMA 371,451; TMA 333,885; and TMA 362,885; and Spanish
Registration Nos. 35,930; 310,858; 310,860 to 310,869; 337,527; 341,803;
389,130.
2.
Founded in
1886, Complainant is the world’s leading manufacturer, marketer, and
distributor of non-alcoholic beverage concentrates and syrups used to produce
beverage brands. Complainant has local
operations in nearly 200 countries around the world, and its net operating
revenues exceeded $20 billion dollars in calendar year 2000.
3.
Since 1886,
Complainant has sold a unique beverage product under the trademark COCA‑COLA. Today, the COCA‑COLA trademark is one
of the most widely known and respected trademarks in the world.
4.
When
Complainant first discovered the <cocacola-usa.com>
domain name in July 2001, the name was being used to redirect Internet users to
a pornographic web site operated under the domain name
<photosexy.net>. The registrant
of the domain name was, at that time, “H3A H3A” with an address in Canada. The administrative and technical contact for
the domain name was Eric Goiset, a resident of Canada.
5.
Complainant
sent a letter to Mr. Goiset on August 1, 2001, requesting that he cease all
further use of the domain name and transfer the domain name to
Complainant. Mr. Goiset responded in an
e-mail dated August 2, 2001 that he is not the domain name registrant and
therefore cannot transfer the domain name.
Nevertheless, he provided Complainant with a new WHOIS record for the
domain name that changed the address for H3A H3A from Canada to Spain.
6.
Shortly
after receiving Mr. Goiset’s e-mail, Complainant sent a cease and desist letter
to H3A H3A at the new address in Spain.
On August 14, 2001, Complainant, after extensive investigation,
determined that both the new address and telephone number for H3A H3A in the
modified WHOIS record were false.
Complainant sent a follow-up letter to Mr. Goiset asking that he provide
any further contact information he had for the registrant. Mr. Goiset responded that he was only the
technical contact and did not have any further information about the
registrant.
7.
On October
22, 2001, Complainant sent a letter to H3A H3A via e-mail, fax and post using
the contact information contained in the then current registration record for
the domain name. The e-mail address
proved to be invalid, and the letter sent by post was returned “Address
Unknown.” The facsimile transmission of
the letter was delivered; however, Complainant’s counsel has no way of knowing
whether the facsimile was actually transmitted to “H3A H3A” (if there is such
an entity) or to a third party. To
date, Complainant’s counsel has not received any response of any kind to its
letter.
8.
Shortly
after Complainant sent its August 1 letter to Mr. Goiset, the link from the
domain name to the <photosexy.net> site was deactivated. Today, the domain name is being used to host
a site that contains the following text (in both English and French): “This domain name could become yours. It was available. We bought it. If you want
it to become yours, make us an offer. [E-mail address omitted]”
B.
Respondent
No
Response was received.
FINDINGS
Complainant
has secured thousands of registrations around the world for marks that consist
in whole or in part of the famous COCA‑COLA mark. These registrations include the following:
|
United States |
Reg. Nos. 238,145; 1,508,297;
1,741,955; 1,752,201 |
|
Spain |
Reg. Nos. 35,930; 310,858; 310,860 to
310,869; 337,527; 341,803; 389,130 |
|
Canada |
Reg. Nos. TMDA 10433;
TMDA 55268; TMA 374,173; TMA 333,882; TMA 371,451; TMA 333,885; TMA 362,885 |
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 and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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; and
(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
For
the reasons set forth above, Complainant owns valid and enforceable rights in
the mark COCA‑COLA that Complainant acquired well prior to the date on
which Respondent registered and began using the domain name. The striking similarity between <cocacola-usa.com> and the COCA‑COLA
mark is immediately apparent.
Respondent’s
<cocacola-usa.com> domain name
consists of the COCA‑COLA trademark without the hyphen, with the term
“USA” appended at the end. “USA” is a
common geographic reference. As such,
it does not serve to distinguish the domain name from the COCA‑COLA
mark. To the contrary, it only serves
to heighten potential confusion because Complainant is headquartered in the
United States and its COCA‑COLA product originated in the United
States. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that
the domain name <cmgiasia.com> is confusingly similar to Complainant’s
CMGI mark); see also Net2phone
Inc, v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the
Respondent’s registration of the domain name <net2phone-europe.com> is
confusingly similar to Complainant’s mark).
Respondent’s deletion of the hyphen from
COCA-COLA and addition of one in the domain name has no impact on confusion
because the “mere addition (or deletion) of a dash (‘-’) within a mark [does]
not constitute a substantive change or obviate confusion.” Terabeam Corp. v. Goldman, D2001-0697
(WIPO Aug. 24, 2001); see The Coca-Cola Co. v. Gamlebyen Invest AS,
D2000-1677, (WIPO Feb. 14, 2001) (recognition of a mark “applies whether the
trademark is rendered with or without a dash”); see also Focus Do It All
Group v. Sermbizis, D2000-0923 (WIPO Oct. 6, 2000) (“Mere differentiation
by the insertion of dashes ("-") still leaves the two [marks]
virtually identical.”); see also Transamerica Corp. v. Inglewood Computer
Servs., D2000-0690 (WIPO Aug. 20, 2000) (finding <trans-america.com>
to be “nearly identical” to mark Transamerica “in that it differs only by the
lower case ‘t’ and the inclusion of a dash after the fifth letter in the word
‘transamerica’”).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Rights or Legitimate Interests
Respondent’s registration and use of the
domain name is a blatant attempt to trade on the goodwill and fame associated
with the COCA‑COLA mark.
Respondent registered the domain name more than a century after
Complainant’s first use of its distinctive mark. Respondent has no connection or affiliation with Complainant of
any kind, nor has it at any time received a license or consent, express or
implied, to use the COCA‑COLA mark in a domain name or in any other
manner. 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).
Nevertheless, Respondent has attempted to
profit off the COCA‑COLA mark by using the domain name to redirect
Internet users to a pornographic web site (almost certainly for profit), then
by soliciting offers for the purchase of the name. Such use is not a bona fide offering of goods under Policy ¶
4(c)(i) nor is such use a fair or noncommercial use of the domain name under
Policy ¶ 4(c)(iii). See Nat’l Football League Prop., Inc., v. One
Sex Entm't. Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that Respondent
has no rights or legitimate interests in the domain names <chargergirls.com>
and <chargergirls.net> where Respondent linked these domain names to its
pornographic website); 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 Respondent registered
the domain name with the intention of selling the domain name).
Respondent
was on notice of Complainant’s exclusive rights in the COCA‑COLA mark at
the time it registered the domain name as a result of Complainant’s numerous
trademark registrations for its mark and as a result of Complainant’s prior
extensive sales, promotion, and advertising of its COCA‑COLA product
worldwide. Therefore, Respondent was
not commonly known by the domain name under Policy ¶ 4(c)(ii). See Victoria’s Secret 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).
Respondent thus can have no rights or
legitimate interests in the domain name.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
In light of the substantial fame and
notoriety of the COCA‑COLA mark, it is inconceivable that Respondent
could have registered the domain name without knowledge of Complainant’s rights
in its mark. Therefore, Respondent
registered the domain name in bad faith.
See Samsonite Corp. v.
Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that
evidence of bad faith includes actual or constructive knowledge of a commonly
known mark at the time of registration).
Evidence of bad
faith use includes an intentional attempt to “attract, for commercial gain, Internet
users to Respondent’s web site or other on-line location, by creating a
likelihood of confusion with the Complainant’s mark as to the source,
sponsorship, affiliation, or endorsement of Respondent’s web site or location
or of a product or service on Respondent’s web site or location.” Policy ¶ 4(b)(iv). Respondent’s use of the domain name is a transparent attempt to
capitalize upon the goodwill and fame associated with the COCA‑COLA mark
and falls squarely within the conduct described in the Policy. See The Coca-Cola Co. v. Spider Webs Ltd.,
FA 102459 (Nat. Arb. Forum Jan. 14, 2001) ("Respondent’s selection
and use of domain names [<coca-colalight.com>,
<coca-colalight.net>, <coca-colalight.org>,
<cocacolalight.net>, and <cocacolalight.org>] that are so widely
associated with Complainant [COCA-COLA] exhibits opportunistic bad faith,
by attempting to take advantage of Complainant’s international recognition and
goodwill").
Respondent’s initial use of the domain
name to drive Internet traffic to a pornographic website it owns constitutes a
textbook case of bad faith. Even if
Internet users recognized once they reached Respondent’s site that they had
arrived at a website that was not associated or affiliated with Complainant,
Respondent’s dilution of the COCA‑COLA mark through association with
pornographic content, and Respondent’s creation of initial interest confusion
to drive Internet traffic to its <photosexy.net> domain name,
nevertheless constitutes bad faith in violation of Policy ¶ 4(b)(iv). See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000)
(finding that the association of a confusingly similar domain name with a
pornographic website can constitute bad faith).
Respondent’s current effort to sell the
domain name to the highest bidder further constitutes a clear cut case of bad
faith registration and use under Policy ¶ 4(b)(i). See American Anti-Vivisection Soc’y v. “Infa dot Net”
Web Serv., FA 95685 (Nat. Arb.
Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even
if no certain price is demanded, are evidence of bad faith”).
For all the above
reasons, 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
be hereby granted.
Accordingly, it is Ordered that the
domain name <cocacola-usa.com>
be transferred from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: March 1, 2002
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