The Coca-Cola Company & COCA-COLA AMATIL (AUST.)
PTY LIMITED v. PLUTO DOMAIN SERVICES PVT. LTD.
Claim Number: FA0902001247734
Complainant is The Coca-Cola Company & COCA-COLA
AMATIL (AUST.) PTY (“Complainant”),
represented by Annette Rubinstein, of Phillips Ormonde & Fitzpatrick Lawyers,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <cocacolaamatil.com>, registered with Lead Networks Domains Pvt. Ltd.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 15, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 20, 2009.
On March 4, 2009, Lead Networks Domains Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <cocacolaamatil.com> domain name is registered with Lead Networks Domains Pvt. Ltd. and that Respondent is the current registrant of the name. Lead Networks Domains Pvt. Ltd. has verified that Respondent is bound by the Lead Networks Domains Pvt. 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 March 6, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 26, 2009 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@cocacolaamatil.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
An Additional Submission was received from Complainant on March 30, 2009, which was determined to be timely and complete under the National Arbitration Forum’s Supplemental Rule 7.
On April 3, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louie E. Condon 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 <cocacolaamatil.com> domain name is confusingly similar to Complainant’s COCA-COLA mark.
2. Respondent does not have any rights or legitimate interests in the <cocacolaamatil.com> domain name.
3. Respondent registered and used the <cocacolaamatil.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Coca-Cola
Company, began manufacturing and marketing non-alcoholic bevarages and
concentrates in 1886, and currently has operations in 200 countries. Complainant has registered its COCA-COLA
trademark with numerous governmental trademark authorities worldwide, including
the Indian trademark authority (Reg. No. 11,059 issued January 25, 1943). Complainant, COCA-COLA AMATIL (AUST.) PTY
LIMITED, has been a licensee of the mark since 1996.
Respondent registered the <cocacolaamatil.com> domain name on September 24, 2004. The disputed domain name resolves to a pay-per-click website that includes links for Complainant’s competitors.
Respondent has also been the respondent in other UDRP
proceedings wherein the disputed domain names were transferred from Respondent
to the respective complainants in those cases.
See, e.g., Pentair Water Pool and Spa, Inc. v. PLUTO DOMAIN
SERVICES PRIVATE LIMITED, FA 1243395 (Nat. Arb. Forum Mar. 11, 2009); see also Marriott Int’l, Inc. v. PLUTO
DOMAIN SERVICES PRIVATE LIMITED, FA 1243378 (Nat. Arb. Forum Mar. 4, 2009).
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.
The Panel finds that Complainant’s registration of the COCA-COLA mark with the Indian trademark authority and other governmental trademark authorities worldwide constitutes sufficient evidence of Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Complainant contends
that the <cocacolaamatil.com>
domain name is confusingly similar to its COCA-COLA mark despite: (1) the
removal of the hyphen; (2) the addition of the word “amatil;” and (3) the
addition of the generic top-level domain “.com.” The Panel finds that none of the alterations
carry sufficient meaning under Policy ¶ 4(a)(i) so as to thwart a finding of
confusing similarity. Therefore, the
Panel finds that the disputed domain
name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See
Katadyn N. Am. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant sets forth a prima facie case supporting its allegations, as it has here, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See 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); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
The record does not include any evidence that suggests
Respondent is commonly known by the disputed domain name. The WHOIS information lists Respondent as “PLUTO DOMAIN SERVICES PVT. LTD.,” and
Respondent has failed to allege authorization to use Complainant’s mark. Indeed, Complainant specifically contends
that Respondent lacks such authorization.
Therefore, the Panel finds that Respondent is not commonly known by the
disputed domain name under Policy ¶ 4(c)(ii).
See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3,
2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the
WHOIS information and other evidence in the record); see also Reese v. Morgan, FA
917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not
commonly known by the <lilpunk.com> domain name as there was no evidence
in the record showing that the respondent was commonly known by that domain
name, including the WHOIS information as well as the complainant’s assertion
that it did not authorize or license the respondent’s use of its mark in a
domain name).
The disputed domain name resolves to a website that displays commercial links to third parties, including Complainant’s direct competitors, which the Panel presumes profits Respondent via the receipt of some type of referral fee. The Panel aligns itself with previous UDRP precedent in finding that such a use fails as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has also been the respondent in other UDRP
proceedings wherein the disputed domain names were transferred from Respondent
to the respective complainants in those cases.
See, e.g., Pentair Water Pool and Spa, Inc. v. PLUTO DOMAIN
SERVICES PRIVATE LIMITED, FA 1243395 (Nat. Arb. Forum Mar. 11, 2009); see also Marriott Int’l, Inc. v. PLUTO
DOMAIN SERVICES PRIVATE LIMITED, FA 1243378 (Nat. Arb. Forum Mar. 4,
2009). The Panel finds that Respondent
has therefore engaged in a pattern of bad faith registration and use under
Policy ¶ 4(b)(ii). See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028
(WIPO Jan. 22, 2005 (finding that “Respondent
has registered the disputed domain name, <aria.com>, to prevent
Complainant from registering it” and taking notice of another Policy proceeding
against the respondent to find that “this is part of a pattern of such
registrations”); see also Westcoast Contempo
Fashions Ltd. v.
Respondent’s disputed domain name resolves to a website designed
to profit from of diverting Internet users to Complainant’s competitors in
return for referral fees. The Panel
therefore finds that Respondent has engaged in bad faith registration and use
under Policy ¶ 4(b)(iii) because Respondent has created actual or potential
disruption to Complainant’s business. See EBAY,
Inc. v. MEOdesigns, D2000-1368 (WIPO
The Panel also finds that Respondent has engaged in bad
faith registration and use under Policy ¶ 4(b)(iv) by intentionally creating a
likelihood of confusion for commercial gain as to Complainant’s affiliation
with Respondent’s disputed domain name and corresponding website. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum
June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv)
where the respondent was diverting Internet users searching for the complainant
to its own website and likely profiting); see
also
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <cocacolaamatil.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: April 14, 2009
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