DECISION

The Coca Cola Company v. The Holy See

Claim Number: FA0304000155454

PARTIES

Complainant is The Coca Cola Company, Atlanta, GA, USA (“Complainant”) represented by Maya Alexandri of Wilmer, Cutler & Pickering. Respondent is The Holy See, Rome, ITALY (“Respondent”) represented by Ari Goldberger of ESQwire.com Law Firm.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <cocacolalovesbaby.com>, <cocacolalovesbabies.com>, <cocacolalovesjesus.com>, <cocacolaspeakstojesus.com>, <cokelovesjesus.com>, <cokespeakstojesus.com>, <cocacolababy.com> and <cocacolababies.com> registered with I.D.R. Internet Domain Registry Ltd.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding:

Jeffrey M. Samuels, Esq., Panel Chair

Hon. Tyrus R. Atkinson, Jr., Esq., Panelist

Henry H. Perritt, Jr., Esq., Panelist

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 23, 2003; the Forum received a hard copy of the Complaint on April 28, 2003.

On April 24, 2003, I.D.R. Internet Domain Registry Ltd. confirmed by e-mail to the Forum that the domain names <cocacolalovesbaby.com>, <cocacolalovesbabies.com>, <cocacolalovesjesus.com>, <cocacolaspeakstojesus.com>, <cokelovesjesus.com>, <cokespeakstojesus.com>, <cocacolababy.com> and <cocacolababies.com> are registered with I.D.R. Internet Domain Registry Ltd. and that the Respondent is the current registrant of the names. I.D.R. Internet Domain Registry Ltd. has verified that Respondent is bound by the I.D.R. Internet Domain Registry 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 April 29, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 19, 2003 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@cocacolalovesbaby.com, postmaster@cocacolalovesbabies.com, postmaster@cocacolalovesjesus.com, postmaster@cocacolaspeakstojesus.com, postmaster@cokelovesjesus.com, postmaster@cokespeakstojesus.com, postmaster@cocacolababy.com and postmaster@cocacolababies.com by e-mail.

A timely Response was received and determined to be complete on June 2, 2003.

Complainant submitted a timely and complete Additional Submission on June 9, 2003.

Respondent submitted a timely and complete Additional Submission on June 16, 2003

On June 19, 2003, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed Jeffrey M. Samuels, the Honorable Tyrus R. Atkinson, Jr., and Henry H. Perritt, Jr. as Panelists.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant Coca-Cola alleges that it owns the federally registered marks COCA-COLA and COKE, which it has used continuously since 1886 and 1941, respectively.  Since 1994, Coca-Cola has owned and/or operated a web site at <coca-cola.com> and <cocacola.com> and, since 1997, a site at <coke.com>. These web sites are devoted to information about Coca-Cola and its products.

According to Complainant, Respondent is a "serial cybersquatter" who has registered many infringing domain names.  In addition to the disputed domain names (see Exhibit C to complaint), Respondent, Complainant contends, has registered other domain names incorporating other well-know marks, such as WASHINGTON POST, PEPSI, and McDONALD'S, followed by generic and/or descriptive matter identical to that used by Respondent in the instant matter.  (See Exhibit D to complaint for list of these other domain names.) Each of the domain names in issue displays content from one of the web sites located at the domain names <washingtonpast.com> or <thewashingtonpast.com>.  These sites, in turn, display content located at the domain name <abortioncams.com>.  Once there, internet users confront a pop-up window hawking videotapes provided by Ned Horsely, the owner of the <abortioncams.com> web site.

On February 3, 2003, Respondent sent an email to Complainant's counsel.  The email revealed that Respondent sent the email from an email address registered to "Peter Caramonica."  The email address from which Respondent sent the email is "theholysee@rome.com.  The email referred to the domain names identified in Exhibits C and D of the Complaint and contain a paragraph from the decision of the Supreme Court of the United States in Board of Education v. Barnette[1943] USSC 130; , 319 U.S. 624 (1943), followed by the following Italian sentence, "Il primo Reclamo di Emendamento di William Purdy da Thomas di Avvocato W. Straham."

Complainant's counsel represents Complainant in a lawsuit against William S. Purdy, Sr. pending in the U.S. District Court for the District of Minnesota.  In this lawsuit, captioned Coca-Cola, et al. v. William S. Purdy, Sr., plaintiffs sought injunctive relief and damages for violations of the "Anti-Cybersquatting Consumer Protection Act," 15 U.S.C. §1125(d).  On July 23, 2002, Plaintiffs obtained a temporary restraining order and preliminary injunction against Purdy.  On January 28, 2003, Purdy was held in contempt of the preliminary injunction. The disputed domain names were registered either on January 28 or 30, 2003. At the contempt hearing on February 4, Mr. Purdy invoked the Fifth Amendment when asked questions about "The Holy See," "Peter Caramonica," and the domain names set forth in the email.

Complainant alleges that the disputed domain names are substantially identical and confusingly similar to its marks, noting that each name differs from the marks only by the addition of a generic word or words. Moreover, Complainant adds, the disputed domain names are misleading because they falsely suggest sponsorship by, affiliation with, or endorsement by Complainant.

Complainant further maintains that Respondent has no legitimate interest in the disputed domain names since it has never used the names as service marks or trademarks and the use of the domain names to redirect indirect users to web pages displaying content unaffiliated with Complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names.

With respect to the issue of "bad faith" registration and use, Complainant argues that Respondent's registration of domain names substantially identical and confusingly similar to Complainant's registered marks and its use of the domain names for the display of information not affiliated with Complainant quintessentially evinces bad faith.  Respondent further demonstrates bad faith, according to Complainant, by registering multiple infringing domain names, by supplying false contact information, and by capitalizing on Complainant's marks to divert internet traffic and publicize information available at abortioncams.com.

B. Respondent

In its Response, Respondent asserts that the disputed domain names are clearly not identical to Complainant's marks.  Nor, Respondent contends, are they confusingly similar. "Complainant's argument that consumers would believe that a domain name like cocacolalovesjesus.com is affiliated with Complainant is not logical, and it is entirely implausible that any consumer would even think to type such an obscure phrase in the first place."

Respondent further alleges that its use of the domain names for the purpose of making a political statement establishes its legitimate interest under paragraph 4(c)(iii) of the Policy.  In support of its "political statement" argument, Respondent notes that the email sent to Complainant's counsel expressly refers to the First Amendment, the domain names themselves carry a political parody statement directly related to the Purdy case, the top of each disputed web site contains a statement in Italian which, when translated into English, states "the Government of Washington Past Protected the Unborn," and the operator of the <abortioncams.com> site, Neal Horsley, filed a declaration stating that Respondent reaps no economic gain by pointing the disputed domain names to his web site.

According to Respondent:

Here, not only is Respondent using the Disputed Domains for the purpose of criticizing Complainant, but the criticism deals directly with helping to protect the First Amendment rights of other domain name registrants who seek to criticize corporations.  Respondent specifically registered the Disputed Domains to protest Complainant's lawsuit against Mr. Purdy.  The Disputed Domains all point to an anti-abortion web site without any indication that the web sites are authorized by Complainant.  Respondent's use of the Disputed Domains is, thus, irrefutably for the purpose of criticizing and for exercising the right of free speech.

Respondent further argues that there is no basis for finding bad faith under the applicable Policy.  In support of such assertion, Respondent reiterates its position that the disputed domain names were registered and have been used solely for the purpose of criticizing Complainant in connection with the actions taken against Mr. Purdy and contends that none of the specific bad faith elements set forth in the Policy is present.  More specifically, Respondent maintains that Respondent: (1) has not offered to sell the domain names to Complainant; (2) has not prevented Complainant from registering domain names incorporating its marks; (3) is not a competitor of Complainant; and (4) has not attempted to confuse users seeking Complainant.

Respondent also argues that its use of the fictitious name "the Holy See" is not evidence of bad faith.  It contends that those who wish to criticize large corporations prefer to shield their identities to avoid personal attacks and that Respondent was very concerned about the risks of registering the disputed domain names because, at that time, Mr. Purdy was facing the risk of jail.

With respect to its registration of multiple domain names, Respondent argues that such fact does not establish the requisite bad faith because none of the names prevents Complainant from reflecting its mark in a corresponding domain name.  According to Respondent, the domain names are completely different from Complainant's marks and Complainant has registered its marks in a corresponding domain name.

C. Additional Submissions

In its "Additional Submission," Complainant contends that Respondent's position in this matter is "an invitation to lawlessness." Three settled propositions foreclose Respondent's position, Complainant asserts.  First, combining a famous mark with a generic word or words does not alleviate the potential for confusion.

Second, the disputed domain names are not criticism or parodies.  According to Respondent, for a domain name to be "critical" or a "parody," it must itself contain some signal of its critical or parodic nature. More fundamentally, Complainant asserts that Respondent's reliance on U.S. law with respect to its First Amendment and "free speech" arguments are inapposite in this matter since Respondent is Italian and the domain names are registered with an Israeli registrar.

Third, Complainant asserts, Respondent's continued concealment of its identity is "potent evidence" of its bad faith. According to Complainant, Respondent knew of the order of the Minnesota federal district court and yet willfully and knowingly engaged in conduct that a court had declared illegal.[1]

Respondent, in its "Additional Submission," argues that this is not a case of a combination of words that any reasonable person would conclude is sponsored or associated with Complainant.  Further, Respondent maintains that, given the fact that Mr. Purdy is an anti-abortion activist, the disputed domain names are facetious and relate directly to the nature of Respondent's protest.  Finally, Respondent indicates that it registered the domain names under a fictitious name only to protect its privacy.

FINDINGS

Based upon its review of all the evidence of record, the Panel finds that: (1) the disputed domain names are confusingly similar to marks in which Complainant has rights; (2) Respondent has no rights or legitimate interests in respect of the domain names; and (3) the domain names were registered and are being used in bad faith.

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

The evidence presented clearly establishes that Complainant, through its U.S. registrations and long use of the COCA-COLA and COKE marks, has rights in the marks.  We further conclude that the domain names are confusingly similar to Complainant's marks. 

Each of the disputed domain names incorporates in full one of Complainant's marks followed by either a generic or descriptive term or phrase. In each case, the most distinctive aspect of the domain name is the term "COCACOLA" or "COKE."  Under such circumstances, the Panel concludes that the requisite confusing similarity is established.  See Sony Kabushiki Kaisha v. Inja, Kil, Case D2000-1409 (WIPO Dec. 9, 2000) ("[n]either the addition of an ordinary descriptive word … nor the suffix `.com' detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY" and thus paragraph 4(a)(i) of the Policy is satisfied).

While Respondent contends it is "not logical" to believe consumers would believe that the disputed domain names are affiliated with Complainant, the Policy does not require proof of affiliation or of a likelihood of confusion.  Rather, the issue simply is whether the alphanumeric string constituting the domain name is confusingly similar to the mark in issue.

Rights or Legitimate Interests

Respondent does not appear to be arguing that it is using the domain names in connection with a bona fide offering of goods or services or that it is commonly known by any of the domain names and, indeed, there is no evidence that would support such findings.  Instead, Respondent argues that the domain names were registered and are being used for a "legitimate noncommercial or fair use" under paragraph 4(c)(iii) of the Policy.  It is Respondent's position that the domain names are critical of and parody Complainant. The Panel disagrees.

First, with respect to Respondent's parody argument, as noted by Complainant, a parody must convey two simultaneous and contradictory messages: that it is the original, but also that it is not the original and instead a parody.  See People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4^th Cir. 2001) (quoting L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26 (1^st Cir. 1987).  Here, as Complainant argues, the domain names contain no "irreverent" representation of Complainant or of its marks.

The Panel further notes that other panels have determined that the domain names themselves, as opposed to the content of the web sites, must signify a parodic or critical purpose in order to give rise to a protected interest under the Policy. See, e.g., Robo Enter., Inc. v. Tobiason, FA 95857 (Nat. Arb. Forum Dec. 24, 2000) (rejecting respondent's asserted rights or legitimate interest in he domain name roboenterprises-investors.com, noting that while the content of respondent's web site may enjoy First Amendment and fair use protection, those protections do not create rights or a legitimate interest with respect to a domain name which is confusingly similar to another's marks).

Respondent's reliance on the panel's decision in Wal-Mart Stores, Inc. v. wallmartcanadasucks.com, Case D2000-1104 (WIPO Nov. 23, 2000), is misplaced.  That decision stands only for the proposition that, when protest or parody is clear from the domain name itself, confusingly similarity cannot exist.

Here, no criticism of Complainant is apparent from the domain names themselves. As Respondent seems to concede, it is only when viewed in the context of the Purdy litigation that the domain names may, arguably, be considered criticism or parody.

            Moreover, even if one was to consider the issue of parody or criticism from the

perspective of the material found in the <abortioncams.com> web site[2], Respondent's

argument must still be rejected. The Panel observes that each of the names points to an

anti-abortion web site which does not mention, let alone criticize or parody, Complainant

or relate to Complainant's business.  Further, there is nothing on the web site that

expressly refers to Complainant's lawsuit against Mr. Purdy.[3]

 

Registration and Use in Bad Faith

The Panel finds that Respondent provided false contact information in the registration certificates and that such actions, even though not specifically enumerated in the Policy, may form the basis for a finding of bad faith registration and use.  See Home Director, Inc. v. Homedirector, Case No. D2000-0111 (WIPO April 11, 2000) (bad faith found, in part, on the basis of false contact information because it was used to hide respondent's identity and prevent complainant from linking respondent's actions in the matter to his action in other cybersquatting matters); Telstra Corp. Ltd. v. Nuclear Marshmallow, Case No. D2000-0003 (WIPO Feb. 18, 2000) (false contact information provided "to ensure that [respondent's] true identity cannot be determined and communication with it cannot be made" is indicative of bad faith.).

In this case, the applicable registration agreements required Respondent to provide current, complete and accurate information.  It is clear, however, that Respondent is not the Holy See and that the Holy See does not reside in a hotel in Rome.

In attempting to justify its actions, Respondent contends that it "was very concerned about the risks of registering the Disputed Domains because, at the time, Mr. Purdy was facing the risk of jail time for registering domain names incorporating marks owned by this Complainant." The Panel concludes, however, that nothing in the applicable Policy or Rules provides a basis for such argument.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.[4]

Accordingly, it is Ordered that the <cocacolalovesbaby.com>, <cocacolalovesbabies.com>, <cocacolalovesjesus.com>, <cocacolaspeakstojesus.com>, <cokelovesjesus.com>, <cokespeakstojesus.com>, <cocacolababy.com> and <cocacolababies.com> domain names be TRANSFERRED from Respondent to Complainant.

Jeffrey M. Samuels, Panel Chair

                                               

            Hon. Tyrus R. Atkinson, Jr.                                                                                                                Henry H. Perritt, Jr.

Date:  July 3, 2003

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