Coca-Cola Ltd. v. M. Morgan c/o M.M.
Claim Number: FA0801001138252
Complainant is Coca-Cola Ltd. (“Complainant”), represented by Peter
W. Choe, of Gowling Lafleur Henderson LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cokrewards.com>, registered with Enom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 16, 2008; the National Arbitration Forum received a hard copy of the Complaint on January 17, 2008.
On January 16, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <cokrewards.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 11, 2008 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 15, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <cokrewards.com> domain name is confusingly similar to Complainant’s MY COKE REWARDS mark.
2. Respondent does not have any rights or legitimate interests in the <cokrewards.com> domain name.
3. Respondent registered and used the <cokrewards.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Coca-Cola Ltd., is the largest manufacturer, distributor and marketer of nonalcoholic beverage concentrates and syrups in the world. In 2006, Complainant began an online rewards program, marketed under the MY COKE REWARDS mark. Customers can accumulate points by looking under caps and inside specially-marked packages of Coca-Cola beverages, and redeem their points for rewards at the <mycokerewards.com> domain name. Complainant filed for registration of the MY COKE REWARDS mark with the United States Patent and Trademark Office (“USPTO”) on September 16, 2005, and registered the mark on October 30, 2007 (Reg. No. 3,326,653).
Respondent registered the <cokrewards.com> domain name on May 9, 2006. The website that resolves from the disputed domain name lists links to unrelated third-party websites and websites related to Complainant’s products. In addition, Respondent has been ordered to transfer domain names to the trademark owners in at least two other UDRP decisions. See Opera Software ASA v. Mike Morgan, D2006-0752 (WIPO Oct. 30, 2006) (ordering transfer of the <operamini.com> domain name to the complainant); see also Lime Wire LLC v. MM (Mike Morgan), D2007-0620 (WIPO Aug. 20, 2007) (ordering transfer of the <limewirestore.com> domain name to the complainant).
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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; and
(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.
Complainant registered the MY COKE REWARDS mark with the USPTO. In Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002), the panel concluded that “[u]nder U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.” For the purposes of Policy ¶ 4(a)(i), the date of filing is used for determining when rights to the mark were established. Therefore, the Panel here finds that Complainant has established rights to the mark under Policy ¶ 4(a)(i). See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
The <cokrewards.com> domain name is confusingly similar to Complainant’s MY COKE REWARDS mark pursuant to Policy ¶ 4(a)(i) because it uses Complainant’s entire mark, only eliminating the first individual term of the mark, “my,” and removing the letter “e” from COKE. In Guinness UDV North America, Inc. v. Dallas Internet Services, D2001-1055 (WIPO Dec. 12, 2001), the panel found the <smirnof.com> domain name confusingly similar to the complainant’s SMIRNOFF mark because merely removing the letter “f” from the mark was insignificant. The Panel finds Respondent’s removal of the term “my” and the letter “e” to be similarly insignificant for distinguishing the disputed domain name from Complainant’s mark, and evidences typosquatting. Moreover, all registered domain names are required to have a top-level domain; therefore, the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the MY COKE REWARDS mark. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) ( “[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent’s use of the disputed domain name demonstrates Respondent’s lack of all rights and legitimate interests. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii), and therefore, the burden shifts to Respondent to show that it does have rights or legitimate interests in the <cokrewards.com> domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
The Panel will examine all evidence in the record to determine if Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). Because Respondent has not responded to the Complaint and therefore provided no evidence for rights or legitimate interests, the Panel may presume that Respondent has none in the disputed domain name. Nevertheless, the Panel will consider any evidence in the record under Policy ¶ 4(c). See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.”).
Furthermore, according to the WHOIS information, the registrant is “M Morgan.” This information does not indicate that Respondent is commonly known by the <cokrewards.com> domain name. And, Complainant has not indicated that Respondent was licensed or authorized to use the MY COKE REWARDS mark, therefore, the Panel infers that Respondent has not been authorized. The Panel concludes that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
The website that resolves from the disputed domain name lists links to unrelated third-party websites as well as links to websites that relate to the beverage industry. Respondent is presumably receiving click-through fees by operating this website. Thus, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or making a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has previously been ordered to transfer domain names in several other UDRP decisions. See Opera Software ASA v. Mike Morgan, D2006-0752 (WIPO Oct. 30, 2006); see also Lime Wire LLC v. MM (Mike Morgan), D2007-0620 (WIPO Aug. 20, 2007). The Panel finds that Respondent’s pattern of registering domain names and infringing on the rights of legitimate owners evidences registration and use in bad faith under Policy ¶ 4(b)(ii). See Stevens v. Modern Ltd.-Cayman Web Dev., FA 250005 (Nat. Arb. Forum May 17, 2004) (“Registration and use of a domain name to prevent Complainant from reflecting its mark in a corresponding domain name through a pattern of such conduct evidences bad faith registration and use of a domain name pursuant to Policy 4(b)(ii).”); see also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
Respondent is likely benefiting by receiving click-through fees when redirecting Internet users to third-party websites. Respondent is capitalizing on the goodwill associated with the MY COKE REWARDS mark, and causing confusion as to the source, sponsorship, affiliation, or endorsement of the website that resolves from the disputed domain name. The Panel concludes that Respondent’s commercial use of the <cokrewards.com> domain name is evidence of registration and use in bad faith under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).
Finally, the website that resolves from the disputed domain name lists links to beverage-related websites. The panel in S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) found the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business. Here, the website that resolves from the disputed domain name links Internet users to competing website. Therefore, the Panel finds that Respondent’s use also demonstrates disruption of Complainant’s business and registration and use in bad faith under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cokrewards.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 27, 2008
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