Complainant is The Coca-Cola Company, Atlanta, Georgia, United States of America; London, United Kingdom of Great Britain and Northern Ireland, represented by HOWREY LLP, United Kingdom of Great Britain and Northern Ireland.
Respondent is Bernard Peters, New York, New York, United States of America.
2. The Domain Name and Registrar
The disputed domain name, <cocacola-lottery.com> is registered with Bottle Domains.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 28, 2007. On March 30, 2007, the Center transmitted by email to Bottle Domains a request for registrar verification in connection with the domain name at issue. On April 2, 2007, Bottle Domains transmitted by email to the Center its verification response confirming that Respondent Bernard Peters is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 19, 2007. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 1, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 21, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 22, 2007.
The Center appointed M. Scott Donahey as the sole panelist in this matter on June 1, 2007. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant holds numerous COCA COLA based trademarks. The one on which it relies in this proceeding are COCA-COLA, registered with the United States Patent & Trademark Office (“USPTO”) on January 31, 1928. Complaint, Annex 3. The mark is used in connection with beverages, and also for a variety of goods and services.
Complainant was founded in the 1880’s and has been using and advertising the mark on its products continuously since then. It is undisputed that Complainant’s mark is one of the most recognized marks in the world.
Respondent registered the domain name at issue on August 25, 2006, and Respondent must have been aware of Complainant’s mark. Complaint, Annex 1. Respondent is not a licensee of Complainant, and has not been given permission to use the mark.
The domain name at issue does not resolve to a website. Complaint, Annex 4.
Internet users have been the victims of an email scam that pretends to notify users that they have won US$ 2.5 million in the Coca-Cola lottery, and that each is one of 50 such winners worldwide. Users are asked to telephone or fax to a purported agent of Complainant. Complainant does not operate a lottery and is not affiliated in any way with the email spam campaign. This scam was reported on Internet postings in June 2006. Complaint, Annex 5.
5. Parties’ Contentions
A. Complainant
Complainant alleges that the domain name at issue is identical or confusingly similar to Complainant’s COCA-COLA mark, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the domain name at issue has been registered and is being used in bad faith. Complainant requests that the domain name at issue be cancelled.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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 directs that the complainant must prove each of the following:
(1) that 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) that the respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name consists of Complainant’s famous mark to which the common term “lottery” is appended and the gTLD suffix “.net”.It has long been held that the addition of a generic or descriptive term to a mark will not alter the fact that the domain name at issue is confusingly similar to the mark in question. Nokia Corporation v. IBCC aka Nokiagirls.com,WIPO Case No. D2000-0102 (<nokiagirls.com>); Eauto L.L.C. v. Net Me Up,
WIPO Case No. D2000-0104 (<eautomotive.com>). The use or absence of punctuation marks such as hyphens does not alter the fact that the domain name at issue is identical or confusingly similar to the trademark at issue. Chernow Communications, Inc. v. Jonathon D. Kimball,
WIPO Case No. D2000-0119 (<ccom.com> found to be identical or confusingly similarly to the mark, C-COM). The panel finds that the domain name at issue is confusingly similar to Complainant’s registered mark.
B. Rights or Legitimate Interests
The consensus view of WIPO panelists concerning the burden of establishing no rights or legitimate interests in respect of the domain name is as follows:
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.
In the present case the Complainant alleges that Respondent has no rights or legitimate interests in respect of the domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain name at issue.
C. Registered and Used in Bad Faith
Complainant's allegations fail to come within any of the four examples of bad faith registration and use set out in Paragraph 4(b) of the Policy. However, the examples in Paragraph 4(b) are intended to be illustrative, rather than exclusive. Telstra Corporation Limited v. Nuclear Marshmallows,
WIPO Case No. D2000-0003.
Telstra established that whether “inaction” could constitute bad faith registration and use could only be determined by analyzing the facts in a given case.
In the present case, Complainant’s name had acquired worldwide secondary meaning long before Respondent registered the domain name at issue. Respondent has not used the domain name at issue to resolve to a website. Respondent failed to respond to the allegations of the complaint. Respondent registered the domain name at issue within two months of the fraudulent Internet scam concerning a non-existent Coca-Cola Lottery. Under these circumstances, the Panel finds that Respondent registered the domain name in bad faith and that Respondent’s inaction constitutes bad faith registration and use.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules and the request of Complainant that the registration of the domain name at issue be cancelled, the Panel orders that the registration of the domain name <cocacola-lottery.com> be cancelled.
M. Scott Donahey
Sole Panelist
Dated: June 11, 2007
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