WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Coca-Cola Company v. Jeanne Rae’s Collectibles

Case No: D2002-0040

The Complainant in this proceeding is The Coca-Cola Company, Atlanta, Georgia, United States of America, represented by King & Spalding, Atlanta, Georgia, United States of America.

The Respondent in this proceeding is Jeanne Rae’s Collectibles, Garden City, Michigan, United States of America.

The domain names that are the subject of this dispute are <cocacolastore.com> and <cokestore.com>. The registrar for both domain names is Network Solutions, Inc., Herndon, Virginia, United States of America..

The Complaint in this proceeding was filed with the WIPO Arbitration and Mediation Center ("the Center") in electronic form on January 17, 2002, and in hard copy accompanied by payment on January 22, 2002. The Center has concluded, and the Panel confirms, that the Complaint complies with the formal requirements of the ICANN 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"). Complainant has elected to have this proceeding considered by a three-member panel and has paid the appropriate fee therefor.

Complainant has represented that a copy of the Complaint was sent to Respondent via U.S. Mail on January 17, 2002. The Center notified Respondent of the Complaint and of the commencement of this proceeding on February 11, 2002, in accordance with paragraph 2(a) of the Rules, and provided further notification to Respondent on March 5, 2002. Respondent has not submitted a Response or otherwise participated in this proceeding.

An attorney who at one time appears to have represented Respondent’s interests related to the disputed domain names is identified in the exhibits included in the Complaint. The Panel ordered that a copy of the Complaint be sent to this attorney in order to maximize the possibility of providing Respondent with actual notice of this proceeding. Pursuant to the Panel’s Order No. 1, the Center transmitted the Complaint to this attorney by e-mail, fax, and mail on April 16, 2002, with a response due by May 6, 2002. No response was received.

The Panel finds that the Center has discharged its responsibility under paragraph 2(a) to employ reasonably available means calculated to achieve actual notice to Respondent.

On April 12, 2002, the Center appointed a three-member panel in accordance with paragraphs 6(c) and 6(e) of the Rules, comprised of David E. Sorkin (presiding), R. Eric Gaum, and Frederick M. Abbott, each of whom has submitted a signed Statement of Acceptance and Declaration of Impartiality and Independence.

No further submissions have been received. Pursuant to paragraph 15 of the Rules, the original scheduled decision date was April 26, 2002. The decision date was extended to May 16, 2002, as a result of the Panel’s Order No. 1.

The language of the Registration Agreement is English, and pursuant to paragraph 11 of the Rules, this proceeding is being conducted in that language.

Complainant is the owner and registrant of longstanding trademarks and service marks consisting of the words "Coca-Cola" and "Coke," for a wide variety of goods and services, in the United States and elsewhere. These trademarks are among the most famous trademarks in the world.

In addition to its core products, Complainant for many years has sold Coca-Cola memorabilia and collectibles through its own retail stores. In 1992, Complainant obtained a service mark registration on the Principal Register of the USPTO for the mark COCA-COLA for retail variety store services (registration number 1741955).

Complainant alleges that the disputed domain names are confusingly similar to its trademarks and service marks; that Respondent has no rights or legitimate interests in respect of the domain names; and that the domain names were registered and used in bad faith.

With regard to confusing similarity, Complainant contends that the use of its trademarks in the disputed domain names, despite the deletion of the hyphen in "Coca-Cola" in one of the names and the addition of the word "store" in both names, renders the domain names confusingly similar to Complainant’s marks.

With regard to rights or legitimate interests, Complainant states that Respondent is not an authorized reseller of Coca-Cola products, is not affiliated with Complainant, and does not have a license or other permission to use Complainant’s marks in domain names or otherwise. A letter from Respondent’s counsel, offered as an exhibit in this proceeding by Complainant, claims that Respondent is a dealer in memorabilia and collectibles who sells, among other things, Cola-Cola-related memorabilia, and that the disputed domain names were used at one time for this purpose. Complainant claims that the names "Coca-Cola" and "Coke" "have no valid use other than for authorized use in connection with Complainant’s soft drinks and related products," and that the disputed domain names imply a nonexistent affiliation between the parties.

The letter from Respondent’s counsel also includes an offer to transfer the disputed domain names to Complainant, subject to the condition that Complainant pay Respondent $1,000,000 per domain name if Complainant ever uses the domain names for commercial purposes. Complainant argues that these facts support a conclusion that Respondent lacks rights or legitimate interests in respect of the disputed domain names.

Finally, with regard to registration and use in bad faith, Complainant alleges that Respondent’s true purpose in registering the disputed domain names was to profit from the sale, rental, or transfer of the domains for valuable consideration in excess of out-of-pocket costs, and points to the abovementioned offer as evidence of this purpose. In the alternative, Complainant contends that if Respondent did at one time use the domain names for the sale of Coca-Cola memorabilia, this use should be deemed in bad faith under paragraph 4(b)(iv) of the Uniform Domain Name Dispute Resolution Policy ("the Policy"), because Respondent would have been attempting to attract potential buyers by creating a likelihood of confusion with Complainant’s marks. Complainant also offers other grounds for a finding of bad faith.

Complainant asks the Panel to order that the disputed domain names be transferred to Complainant.

Respondent has not submitted a Response in this proceeding.

Under paragraph 4(a) of the Policy, the Complainant must prove that the dispute domain names are identical or confusingly similar to trademarks or service marks in which Complainant has rights; that Respondent has no rights or legitimate interests in respect of the domain names; and that the domain names have been registered and are being used in bad faith. It is the Panel’s view that the Complainant bears the burden of proving these elements by a preponderance of the evidence.

The Panel finds that the disputed domain names <cocacolastore.com> and <cokestore.com> are confusingly similar to Complainant’s "Coca-Cola" and "Coke" marks.

The only information before the Panel concerning Respondent’s rights or legitimate interests in respect of the disputed domain names is contained in the letter from Respondent’s counsel that was provided to the Panel by Complainant. That letter states, in part, that the disputed domain names were used at one time for the sale of Coca-Cola-related memorabilia.

Respondent was provided with notice of this proceeding and an opportunity to substantiate any assertion that, prior to notice of a dispute, it made use of the disputed domain names in connection with a bona fide offering of goods or services, or to substantiate any assertion that it is presently making legitimate non-commercial or fair use of the disputed domain names. The Panel additionally ordered that Respondent’s present or former counsel be separately provided with notice of this proceeding, and it delayed rendering a determination in this matter pending a response. No response was forthcoming. The Panel is not prepared to draw an inference of rights or legitimate interests on the basis of the correspondence referred to by Complainant, which in relevant part involved a single statement by counsel with no documentary substantiation. The Panel need not determine in the abstract what result might be reached if it were presented with substantial evidence.

The Panel concludes that Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Panel finds that Respondent has used the disputed domain names in bad faith, based upon Respondent’s offer to transfer them to Complainant in exchange for a conditional promise to pay $1,000,000 per domain name, clearly an amount in excess of Respondent’s out-of-pocket costs related to the domain names. What is less obvious to the Panel, however, is whether the domain names were registered in bad faith.

If Respondent’s primary intent in registering the domain names was in fact to use them in connection with the sale of Coca-Cola memorabilia, and if at the time of registration Respondent believed that this use would be legitimate, and if this belief was reasonable under the circumstances, then the Panel would be bound to conclude that the domain names were not registered in bad faith. Cf. CRS Technology Corp. v. CondeNet, Inc., Case No. FA93547 (Nat’l Arb. Forum March 28, 2000).

On the other hand, if Respondent’s primary intent in registering the disputed domain names was the prospect of profiting from a subsequent sale or transfer to Complainant, then a finding of bad faith registration would be warranted under paragraph 4(b)(i) of the Policy.

The Panel is of the view that the evidence before it supports the latter inference concerning Respondent’s intentions, and concludes that the disputed domain names were registered and have been used in bad faith.

Having considered the submissions and all rules and principles it deems relevant, the Panel concludes that Complainant has proved the three elements set forth in paragraph 4(a) of the Policy, and orders that the disputed domain names, <cocacolastore.com> and <cokestore.com>, be transferred to Complainant.