The Coca-Cola Company v. Garry Skaggs Company; Mr. Garry Skaggs

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Coca-Cola Company v. Garry Skaggs Company and Garry Skaggs

Case No. D2000-1806

1. The Parties

The Complainant is The Coca-Cola Company, a corporation organized in the State

of Delaware, United States of America (USA), with place of business in Atlanta,

Georgia, USA.

The Respondent is Garry Skaggs Company and Garry Skaggs, with address in Crandall,

Indiana, USA.

2. The Domain Name and Registrar

The disputed domain name is <cocacolacollectibles.com>.

The registrar of the disputed domain name is Tucows, Inc., with address in

Toronto, Ontario, Canada.

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a) Complainant initiated the proceeding by the filing of a complaint via e-mail,

received by the WIPO Arbitration and Mediation Center ("WIPO") on

December 22, 2000, and by courier mail received by WIPO on December 27, 2000.

Payment by Complainant of the requisite filing fees accompanied the courier

mailing. On January 3, 2001, WIPO transmitted a Request for Registrar Verification

to the registrar, Tucows, Inc. (with the Registrar’s Response received by WIPO

on January 4, 2001).

(b) On January 3, 2001, WIPO transmitted via e-mail to Complainant a request

for correction of the complaint in regard to the listing of the disputed domain

name. On January 9, 2001, WIPO received via e-mail from Complainant an amended

complaint, and on January 11, 2001, WIPO received via courier mail from Complainant

the amended complaint in hardcopy.

(c) On January 18, 2001, WIPO transmitted notification of the complaint and

commencement of the proceeding to Respondent via e-mail, telefax and courier

mail. Courier mail and fax transmission receipts indicate successful delivery.

(d) On February 1, 2001, Respondent transmitted via e-mail to WIPO a message

regarding his alleged efforts to settle this dispute with Complainant, and indicating

his wish to work out arrangements to transfer the disputed domain name to Complainant.

On February 7, 2001, WIPO transmitted an e-mail message to Respondent acknowledging

his response.

(e) In response to an e-mail inquiry of February 12, 2001, from WIPO to Complainant,

Complainant confirmed by telephone that it wished to proceed with this administrative

proceeding.

(f) On February 23, 2001, WIPO invited the undersigned to serve as panelist

in this administrative proceeding, subject to receipt of an executed Statement

of Acceptance and Declaration of Impartiality and Independence ("Statement

and Declaration"). On February 26, 2001, the undersigned transmitted by

fax the executed Statement and Declaration to WIPO.

(g) On February 28, 2001, Complainant and Respondent were notified by

WIPO of the appointment of the undersigned sole panelist as the Administrative

Panel (the "Panel") in this matter. WIPO notified the Panel that,

absent exceptional circumstances, it would be required to forward its decision

to WIPO by March 13, 2001. On February 28, 2001, the Panel received

an electronic file in this matter by e-mail from WIPO. The Panel subsequently

received a hard copy of the file in this matter by courier mail from WIPO.

(h) On February 28, 2001, the Panel contacted Complainant, Respondent and WIPO

by e-mail suggesting that the parties to the proceeding might wish to consider

a settlement of this matter in light of Respondent’s stated interest in so doing.

The Panel noted that Complainant had previously gone to some lengths to accommodate

Respondent’s repeated indications of a willingness to transfer the disputed

domain name, and indicated that any settlement arrangements should be concluded

expeditiously. By e-mail of February 28, 2001, Complainant indicated its willingness

to further explore the possibility of a settlement.

(i) On March 1, 2001, Respondent transmitted via e-mail to the Panel a message

indicating his willingness to settle this matter by transferring the disputed

domain name to Complainant, provided that arrangements for a transfer could

be made that would not require him to disclose his Tucows, Inc. password to

Complainant.

(j) Following various correspondence between the Panel, WIPO, Tucows, Inc.,

Respondent and Complainant, the Panel was satisfied that a mutually satisfactory

mechanism for resolving this matter had been found. The Panel prepared and,

on April 10, 2001, transmitted to WIPO an Agreement of Settlement, Transfer

and Termination ("Agreement of Settlement") for circulation to and

execution by the parties.

(k) On April 17, 2001, WIPO transmitted via fax to Respondent and Complainant

a copy of the Agreement of Settlement for execution. On May 15, 2001, WIPO transmitted

via fax to Respondent a copy of the Agreement of Settlement as executed by Complainant.

WIPO fax reports indicate successful transmission of both telefaxes to Respondent.

On April 24 and May 15, 2001, counsel for Complainant sent via fax its executed

copy of the Agreement of Settlement to Respondent.

(l) On different occasions, including by e-mail of May 15, 2001 to WIPO, Respondent

indicated that (a) he had not received a fax transmission of the Agreement of

Settlement from WIPO or Complainant, and (b) he had received a fax transmission

that was difficult to read, or difficult to print. On one occasion, he attached

an electronic version of the fax he received that was easily readable by the

Panel.

(m) On May 24, 2001, the Panel transmitted to the parties and WIPO several

options for assisting Respondent in executing a copy of the Agreement of Settlement.

The Panel requested Respondent to notify all parties as to any technical difficulties

he might be encountering.

(n) On June 19, 2001, WIPO suggested to the Panel that since it had not received

any reply to its e-mail message of May 24, 2001, it proceed to decide this matter.

The Panel concurred. On June 28, 2001, the Panel advised Complainant, Respondent

and WIPO by e-mail that it would proceed to render its determination within

fourteen (14) days. By e-mail of June 28, 2001, Respondent again advised the

Panel of his wish to settle this matter by transferring the disputed domain

name to Complainant.

The Panel has not received any requests from Complainant or Respondent regarding

further submissions, waivers or extensions of deadlines, and the Panel has not

found it necessary to request any further information from the parties. The

proceedings have been conducted in English.

4. Factual Background

Complainant has registered the trademark "COCA-COLA" in several classes

on the Principal Register of the United States Patent and Trademark Office (USPTO),

for example, reg. no. 238145, dated January 31, 1928, in International Class

32 (light beverages). Complainant has referred to several additional registrations

with registration numbers and dates of registration (Footnote

1). (Complaint, para. 12(a)).

Complainant engages in extensive advertising of its mark, and Complainant’s

mark is well known in the United States and the world.

Complainant maintains an active commercial Internet website at address (URL)

<www.cocacola.com>. This website includes an e-commerce store, and a web

page of that store is headed "Collectibles, Coca Cola stuff for everywhere!"

(Complaint, Annex K).

According to the registrar’s verification response to WIPO, dated January 4,

2001, Respondent "Garry Skaggs Company" is the listed registrant of

the domain name <cocacolacollectibles.com>. The listed Administrative

Contact is "Skaggs, Gary". The listed registrant and Administrative

Contact show the same mailing address. The record of registration for the disputed

domain name was created on September 24, 1997, and was last updated

on January 3, 2001.

"Skaggs and Taylor" is the listed registrant of the domain name <louisvillewebdirectory.com>.

The registration contact information for such domain name lists "Skaggs,

Garry" as the Administrative Contact, and the e-mail address of the registrant

as <garry@forwebs.com>. (Complaint, Annex H)

As of April 20, 1999, the disputed domain name <cocacolacollectibles.com>

was listed for sale on a website addressed by <bsd.lousivillewebdirectory.com>

for eight thousand dollars ($8,000) (id., Annex L).

As of December 5, 2000, the disputed domain name <cocacolacollectibles.com>

was used to identify a website headed "The Best Domain Names For Sale,

Forwebs.com" (id., Annex I). This website includes links to websites

selling various goods and services, as well as domain names. The website on

which domain names are offered for sale is identified by the Internet address

<bsd.louisvillewebdirectory.com>.

Complainant via counsel has sent numerous cease and desist and transfer demands

to Respondent (for example, by letter dated August 17, 2000). Respondent at

one point offered to delete the disputed domain name, and transmitted to Complainant

a copy of a fax/letter dated March 29, 2000, allegedly sent to Network Solutions

requesting that deletion. However, no such deletion took place and, on July

31, 2000, Respondent via letter from counsel notified Complainant that he rejected

the request to cease use of the disputed domain name. Said letter from Respondent’s

counsel concluded, "If your client has a special need for this Domain Name,

please let me know. I will be happy to consult with my client regarding any

proposal you may have". (Letter from William H. Bode to Bradley

A. Slustsky, dated July 31, 2000, Complaint, Annex C)

In his response to the complaint in this proceeding, Respondent claims to have

a "three car garage full" of "licensed Coca-Cola products"

which he intended to sell on a website identified by the disputed domain name.

He also claims to have sold "these types of products" at a flea market

booth "for close to 20 years now". He adds "Of course we will

not be selling Coca-Cola items no longer and we will be trying to find someone

to purchase our items and that really want to sell these items like we wanted

to". (Response of February 1, 2001).

The Service Agreement in effect between Respondent and Tucows, Inc. subjects

Respondent to Tucows, Inc.’s dispute settlement policy, the Uniform Domain Name

Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and

with implementing documents approved by ICANN on October 24, 1999. The Uniform

Domain Name Dispute Resolution Policy (the "Policy") requires that

domain name registrants submit to a mandatory administrative proceeding conducted

by an approved dispute resolution service provider, of which WIPO is one, regarding

allegations of abusive domain name registration (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant states that it is the holder of trademark registrations for "COCA-COLA",

that it uses that mark in commerce, and that the mark is well known (see

Factual Record supra).

Complainant alleges that the disputed domain name is confusingly similar to

its mark. Complainant indicates that the term "collectibles" is "a

generic addition to The Coca-Cola Company’s ‘Coca-Cola’ trademark, and is widely

recognized as being associated with goods used in connection with the ‘Coca-Cola’

trademark, as many Coca-Cola products, advertising materials, machines and paraphernalia

have become collector’s items."

Complainant states that Respondent has no rights or legitimate interests in

the disputed domain name. Respondent has not been authorized to use Complainant’s

mark. Although Respondent has suggested an intention to use the domain name

in connection with the sale of goods related to Complainant, in fact Respondent

has never made such use.

Complainant alleges that Respondent registered and has used the disputed domain

name in bad faith. Respondent has used the name to intentionally attract Internet

users to a website unrelated to Complainant for commercial gain, and Respondent

has offered the disputed domain name for sale for $8,000.

Complainant requests the Panel to direct the registrar to transfer the disputed

domain name to it.

B. Respondent

Respondent replied to the complaint by offering to transfer the disputed domain

name to Complainant. In his response, Respondent indicated that he had intended

to sell licensed Coca-Cola products from a website identified by the disputed

domain name.

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy (the "Policy")

adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on

August 26, 1999 (with implementing documents approved on October 24, 1999),

is addressed to resolving disputes concerning allegations of abusive domain

name registration. The Panel will confine itself to making determinations necessary

to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process

requirements be met. Such requirements include that a respondent have notice

of proceedings that may substantially affect its rights. The Policy, and the

Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"),

establish procedures intended to assure that respondents are given adequate

notice of proceedings commenced against them, and a reasonable opportunity to

respond (see, e.g., paragraph 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary

to notify the Respondent of the filing of the complaint and initiation of these

proceedings. Respondent transmitted a response to the complaint, and exchanged

a number of e-mail messages with the Panel, Complainant and WIPO regarding his

alleged interest in reaching a settlement of this matter.

Paragraph 4(a) of the Policy sets forth three elements that must be established

by a Complainant to merit a finding that a Respondent has engaged in abusive

domain name registration, and to obtain relief. These elements are that:

(i) Respondent’s domain name is identical or confusingly similar to a trademark

or service mark in which the complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain

name; and

(iii) Respondent’s domain name has been registered and is being used in bad

faith.

Each of the aforesaid three elements must be proved by a complainant to warrant

relief.

Complainant is the holder of the registered trademark "Coca-Cola"

and uses that mark in commerce (see Factual Background supra).

The "Coca-Cola" mark is well known in the United States and around

the world. Complainant’s rights in the mark arose at least as early as January

31, 1928, the date of the first registration with the USPTO submitted in this

proceeding. Complainant’s rights in the mark substantially predate Respondent’s

registration of the disputed domain name in 1997.

The disputed domain name adds the term "collectibles" to Complainant’s

well known mark (as well as the generic top level domain (gTLD) ".com").

The addition of the noun "collectibles" does not create a new mark

in which Respondent has rights. Moreover, Internet users viewing a domain name

that combines Complainant’s mark with a noun referring to desirable products

identified by it are likely to conclude that the domain name identifies Complainant

as the source of the products that offered for sale. The fact that Complainant’s

mark is well known increases the likelihood that Internet users will associate

Complainant with the disputed domain name. The Panel determines that the disputed

domain name <cocacolacollectibles.com> is confusingly similar to a trademark

in which Complainant has rights. Complainant has established the first element

necessary for a finding that Respondent has engaged in abusive domain name registration

and use.

The second element of a claim of abusive domain name registration is that the

Respondent has no rights or legitimate interests in respect of the domain name

(Policy, paragraph 4(a)(ii). The Policy enumerates several ways in which

a respondent may demonstrate rights or legitimate interests:

"Any of the following circumstances, in particular but without limitation,

if found by the Panel to be proved based on its evaluation of all evidence presented,

shall demonstrate your rights or legitimate interests to the domain name for

purposes of Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations

to use, the domain name or a name corresponding to the domain name in connection

with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly

known by the domain name, even if you have acquired no trademark or service

mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name,

without intent for commercial gain to misleadingly divert consumers or to tarnish

the trademark or service mark at issue." (Policy, paragraph 4(c)) .

Respondent has asserted rights in the disputed domain name as a matter of fair

use. He claims to be entitled to use the name in connection with the sale of

legitimate Coca-Cola products. This sole panelist recently served on a panel

that considered in some detail the right of a domain name registrant to use

a mark in a domain name in connection with the third party resale of genuine

products (Footnote 2). Whether such

use is "fair" depends on a number of factors, including the extent

to which the domain name registrant has taken steps to disclaim an affiliation

with the trademark holder. In the present proceeding, the Respondent has not

used the disputed domain name in connection with the resale of genuine products,

and has not in any way disclaimed an affiliation with Complainant. Respondent

has instead offered the disputed domain name for sale, and used it to attract

Internet users to a website wholly unrelated to Complainant’s products. In these

circumstances, Respondent has not established a fair use right in the disputed

domain name.

Respondent has failed to establish rights or legitimate interests in the disputed

domain name. Thus, Complainant has established the second element necessary

to prevail on its claim that Respondent has engaged in abusive domain name registration.

The Policy indicates that certain circumstances may, "in particular but

without limitation," be evidence of bad faith (Policy, para. 4(b)). Among

these circumstances are: (1) that the domain name has been registered or acquired

by a respondent "primarily for the purpose of selling, renting, or otherwise

transferring the domain name registration to the complainant who is the owner

of the trademark or service mark or to a competitor of that complainant, for

valuable consideration in excess of [respondent’s] documented out-of-pocket

costs directly related to the domain name" (id., para. 4(b)(i));

and (2) that a respondent "by using the domain name, … [has] intentionally

attempted to attract, for commercial gain, Internet users to [its] 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 of a product or service on [its] web site or location"

(id., para. 4(b)(iv)).

Respondent has offered the disputed domain name for sale for $8,000 on a website

which he operates. Respondent had no right to sell and profit from the sale

to any person of Complainant’s well-known trademark. The Panel determines such

offer for sale constitutes bad faith within the meaning of paragraph 4(b) of

the Policy.

Respondent has used the disputed domain name to direct Internet users to a

website that offers domain names for sale, and includes links to products and

services for sale. Respondent has intentionally used Complainant’s mark to attract

Internet users to a commercial website by confusing Internet users as to Complainant’s

sponsorship of or affiliation with his website. This constitutes bad faith within

the meaning of paragraph 4(b)(iv) of the Policy.

Complainant has established the third and final element necessary for a finding

that the Respondent has engaged in abusive domain name registration and use.

The Panel will therefore request the registrar to transfer the domain name

<cocacolacollectibles.com> to the Complainant.

7. Decision

Based on its finding that the Respondent, Garry Skaggs Company and Garry Skaggs,

has engaged in abusive registration and use of the domain name <cocacolacollectibles.com>

within the meaning of paragraph 4(a) of the Policy, the Panel orders that

the domain name <cocacolacollectibles.com> be transferred to the Complainant,

The Coca-Cola Company.

Frederick M. Abbott

Sole Panelist

Dated: July 11, 2001

Footnotes:

1. Complainant has not provided evidence of these registrations in the form

of copies of certificates of registration or of database records so as to allow

the Panel to more fully set forth the nature of its registrations at the USPTO

(such as by reference to registration class, and whether the marks are in the

form of words, or a combination words and designs). Such information is often

relevant to determination of facts in administrative proceedings under the Policy

and Rules. (back to text)

2. See General Electric Company v. Japan, Inc., WIPO

Case No. D2001-0410, decided June 14, 2001. (back to text)

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