DECISION

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.

Registration and Use in Bad Faith

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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