The Coca-Cola Company v. Neftali Gonzalez

WIPO Arbitration and Mediation Center

ADMINISTRATIVE

PANEL DECISION

The Coca-Cola

Company v. Neftali Gonzalez

Case No.

D2001–0336

1. The Parties

(a) Complainant

is The Coca-Cola Company, a Delaware Corporation with its principal place

of business at Atlanta, Georgia, U.S.A. ("Coca-Cola").

(b) The Complainant’s

principal contact at Coca-Cola with respect to this dispute is Caroline

S. Katz, Esq., Trademark Counsel, The Coca-Cola Company, One Coca-Cola

Plaza N.W., Atlanta, Georgia 30313, U.S.A.

(c) The Complainant’s

authorized representative in this administrative proceeding is Bradley

A. Slutsky, Esq., King & Spalding, 191 Peachtree Street, Atlanta,

Georgia 30303-1763, U.S.A.

(d) Respondent,

according to Network Solutions, Inc. is Neftali Gonzalez, 2473 Field Street

#2811, Dallas, Texas 75201, U.S.A. ("Respondent").

2. Domain Name and

Registrar

(a) The domain

name at issue is as follows:

<SiempreCocaCola.com>

(The "Infringing Domain Name").

(b) The registrar

for the domain name at issue is Network Solutions, Inc. ("NSI").

3. Procedural History

(a) On March 7,

2001, the Complaint was received by the WIPO Arbitration and Mediation

Center (the "Center") by e-mail for decision in accordance with the Uniform

Domain Name Dispute Resolution Policy adopted by the Internet Corporation

for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy")

and in hard copy on March 9, 2001.

(b) The Center

verified that the Complaint satisfies the formal requirements of the Policy,

the Rules for Uniform Domain Name Dispute Resolution Policy approved by

ICANN on October 24, 1999 (the "Rules") and WIPO Supplemental Rules for

Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

(c) Payment in

the required amount has been made by the Complainant to the Center.

(d) A copy of

the Complaint, together with the cover sheet as prescribed by the Supplemental

Rules, was sent or transmitted to both the Respondent and to NSI in compliance

with the Rules on March 16, 2001.

(e) The Center

transmitted to NSI a request for registrar verification in connection

with this case.

(f) On March 14,

2001, the Center received NSI’s Verification Response, (1) confirming

that NSI had received a copy of the Complaint sent by the Complainant

in accordance with the Supplemental Rules, (2) confirming that the Infringing

Domain Name is registered with NSI, (3) confirming that NSI Service Agreement

Version 5 is in effect, (4) confirming that the Respondent is the current

registrant of the Infringing Domain Name (5) providing the full contact

details that are available in NSI’s WHOIS database for the registrant,

the technical contact and the administrative contact for the Infringing

Domain Name, and (6) stating that the Infringing Domain Name is in "Active"

status.

(g) On March 16,

2001, the Center transmitted via post/courier, facsimile and e-mail Notification

of Complaint and Commencement of the Administrative Proceeding, together

with a copy of the Complaint, to the Respondent and to the Complainant.

The Center advised that (1) the response was due by April 4, 2001, (2)

in the event of default the Center would appoint a Panel to review the

facts and to decide the case, (3) the Panel would be entitled to draw

such inferences from Respondent’s default as it considers appropriate,

(4) Coca-Cola had elected for the matter to be decided by a single panelist

who would be appointed within five days of the date the response was due,

(5) the fees for the administrative proceeding would be paid in their

entirety by Coca-Cola, (6) the Panel would decide the case within 14 days

of its appointment, and (7) the Center could be contacted at stated postal

and e-mail addresses, a stated telephone number, and a stated fax number.

(h) On April 11,

2001, the Center transmitted via e-mail a Notification of Respondent Default

to the Respondent and via e-mail to the Complainant advising that Respondent

had failed to comply with the deadline indicated in the Notification of

Complaint and Commencement of Administrative Proceeding for submission

of its Response and advising that the Center would proceed to appoint

an Administrative Panel based on the number of panelists designated by

the complainant.

(i) On April 24,

2001, the Center transmitted to the Complainant via e-mail and to the

Respondent via e-mail, Notification of Appointment of Administrative Panel

and Projected Decision Date. The notification advised that Mr. Gaynell

C. Methvin had been appointed as the single panelist, and that the decision

would be due on May 8, 2001.

(j) On April 24,

2001, the Center transmitted the file in this case via post/courier and

e-mail to the appointed panelist, Mr. Methvin.

4. Factual Background;

Parties’ Contentions

a. The Trademarks

The Complaint (¶¶ 12(a)

- 12(l)) is based on various trademarks Coca-Cola registered in the U.S.

Patent and Trademark Office ("USPTO") and elsewhere around the

world.

Coca-Cola’s trademarks,

products and services include:

Mark

Reg. No.

Date

Country

Description of Goods/International Class of Goods

Coca-Cola

238145

01/31/28

USA

All goods in Class 32 (light beverages)

Coca-Cola

1508297

10 /11/88

USA

Bath robes, belts (clothing), bibs not of paper, blouses,

bodices, body suits, bow ties, clothing, coats, diaper covey, dress

bodices, dress shields, exercise pants, gloves (clothing), hats, jackets

(clothing), jeans, jogging pants, jumpers (shirt fronts), leggings,

leotards, linen (body), neckties, night gown, pants, pyjamas, scarfs,

scarves, shirts, shorts, shoulder wraps, skirts, sleep shirt, sleepers,

socks, suspenders, sweaters, swimsuits, t-shirts, tops, underclothing,

underwear, vests

Coca-Cola

1741955

12/22/92

USA

Retail variety store services

Coca-Cola

1752201

02/16/93

USA

Signs, non-luminous and non-mechanical (of metal),

musical diorama, wastebaskets, dish cloths, kitchen linens (made of

textiles), napkins, placemats and table runners, toy banks.

Siempre Coca-Cola

1511939

03/31/94

Argentina

32

Siempre Coca-Cola

57942/C

0/03/95

Bolivia

32

Siempre Coca-Cola

418400

12/16/93

Chile

32

Siempre Coca-Cola

156216

02/28/94

Columbia

32

Siempre Coca-Cola

85863

02/09/94

Costa-Rica

32

Siempre Coca-Cola

3002/94MIC

09/02/94

Ecuador

32

Siempre Coca-Cola

79119

08/11/96

Guatemala

32

Siempre Coca-Cola

61248

03/28/95

Honduras

32

Siempre Coca-Cola

441774

09/09/93

Mexico

32

Siempre Coca-Cola

26601CC

09/06/94

Nicaragua

32

Siempre Coca-Cola

70316, 70315

08/23/95

Panama

32, 35

Siempre Coca-Cola

166983

12/16/93

Paraguay

32

Siempre Coca-Cola

2166

10/29/93

Peru

32

Siempre Coca-Cola

33237

08/04/93

Puerto Rico

32

Siempre Coca-Cola

158

05/20/97

El Salvador

32

Siempre Coca-Cola

1752906

12/05/95

Spain

32

Siempre Coca-Cola

262720

03/24/95

Uruguay

32, 35, 38

Always Coca-Cola

1867757

12/13/94

USA

32, 35, 38

b. The Complaint

Coca-Cola in support

of its position asserts the following:

"12 (a) Since

long prior to Respondent’s registration of the domain name, Complainant

has continuously owned and used the name and mark "Coca-Cola"

in connection with its products and services. Large numbers of Complainant’s

"Coca-Cola" marks are registered with government authorities

in the United States and around the world. . .

(b) Since

long prior to Respondent’s registration of the domain name, Complainant

has continuously owned and used the name and mark "Siempre Coca-Cola"

in connection with its products and services. "Siempre"

is Spanish for "always" and the "Siempre Coca-Cola"

mark is used by The Coca-Cola Company in lieu of its "Always

Coca-Cola" mark in Spanish-speaking countries. Large numbers

of Complainant’s "Siempre Coca-Cola" marks are registered

with government authorities in numerous countries including Argentina,

Bolivia, Chile, Columbia, Costa-Rica, Ecuador, Guatemala, Honduras,

Mexico, Nicaragua, Panama, Paraguay, Peru, Puerto Rico, El Salvador,

Spain, and Uruguay.

(c) Since

long prior to Respondent’s registration of the domain name, Complainant

has continuously owned and used the name and mark "Always Coca-Cola"

in connection with its products and services...It has also been registered

and is in use in numerous countries around the world, including, Australia,

Benelux, Brazil, China, France, Germany, Spain and other countries

throughout Europe, Latin America and Asia.

(d) The Coca-Cola

Company’s right to use the "Coca-Cola" and "Always

Coca-Cola" marks registered with the USPTO as alleged above have

become incontestable under 15 U.S.C. § 1065 and 1115, and the certificates

of registration thereof constitute "conclusive evidence"

of "the validity of the registered mark[s] and of the registration

of the mark[s], of the registrant’s ownership of the mark[s], and

of the registrant’s exclusive right to use the registered mark[s]

in commerce on or in connection with the goods or services specified

in the registration." 15 U.S.C. § 1115.

(e) During

the fiscal year ending in September 2000, The Coca-Cola Company spent

almost 200 million U.S. dollars to advertise and promote the "Coca-Cola"

and "Always Coca-Cola" trademarks in connection with its

products and services for the United States, and in excess of $2 million

U.S. dollars to advertise and promote the "Siempre Coca-Cola"

trademark in connection with its products and services in the above

listed countries.

(f) During

the fiscal year ending in September 2000, The Coca-Cola Company sold

hundred of millions of cases of its products under and in connection

with the "Coca-Cola" and "Always Coca-Cola" trademarks

throughout the United States, and almost ten million cases of its

products under and in connection with the "Coca-Cola" and

"Always Coca-Cola" trademarks throughout the United States,

and almost ten million cases of its products under and in connection

with the "Siempre Coca-Cola" trademarks in the above listed

countries.

(g) By virtue

of The Coca-Cola Company’s long use, widespread advertising and enormous

sales," "Always Coca-Cola" and "Siempre Coca-Cola"

trademarks have come to symbolize the goodwill and reputation built

by the Coca-Cola Company over many years, are widely recognized as

being among the most famous trademarks in the world, and represent

goodwill of extraordinary value.

(h) The Complainant

also owns, has registered, and uses a domain name that includes the

"Coca-Cola" trademark at "www.CocaCola.com".

A true and correct copy of the printout of the WHOIS database search

conducted on March 6, 2001, showing Complainant’s registration of

this domain name is attached as Annex D. A true and correct

copy of the printout of the home page of Complainant’s site is attached

as Annex E.

(i) Respondent

owns, has registered, and is using the domain name at <www.SiempreCocaCola.com>

for a website that mirrors the home page of "Dr. Pepper,"

a competitor of Complainant. The sole content on Respondent’s website

is a "Dr. Pepper" beverage can. When the user clicks on

the can it places the entire "Dr. Pepper" website into a

frame so that the URL continues to reflect <SiempreCocaCola.com>,

even when the user browses to internal "Dr. Pepper" pages.

None of Respondent’s website’s content is original to the Respondent

nor is it affiliated with or authorized by The Coca-Cola Company.

A true and correct copy of the printout of the <www.SiempreCocaCola.com>

site as it appeared on or about March 6, 2001 is provided as Annex

F (it is appended electronically as a Powerpoint file). A true

and correct copy of the printout of the "www.DrPepper.com"

website as it appeared on March 6, 2001 is provided as Annex G

(it is appended electronically as a Powerpoint file). We note that

Respondent operates an additional mirror site of the "Dr. Pepper"

website at "www.texasarcade.com/com/drpepper.html".

(j) Until

several months ago, Respondent’s website mirrored the website of "Pepsi,"

another of Complainant’s competitors. A true and correct copy

of the printout of the <www.SiempreCocaCola.com> website as

it appeared on or about August 2000 is provided as Annex H

(it is appended electronically as a Powerpoint file).

(k) The domain

name at issue, <SiempreCocaCola.com>, consists of the entire

"Coca-Cola" trademark and trade name of Complainant, with

the addition of the word "Siempre" prior thereto. As stated

above, "Siempre" is Spanish for "always", and

"Always Coca-Cola" is one of the most famous trademarks

of The Coca-Cola Company and is in widespread use all over the world.

The Coca-Cola Company uses the "Siempre Coca-Cola" trademark

in Spanish-speaking countries, primarily in Latin America, as detailed

above. In light of this extreme similarity between Respondent’s <SiempreCocaCola.com>

domain name and The Coca-Cola Company’s "Coca-Cola," "Always

Coca-Cola" and "Siempre Coca-Cola" trademarks, as well

as The Coca-Cola Company’s domain name <CocaCola.com>, Respondent’s

registration and use of the domain name creates a strong likelihood

of confusion as to source, sponsorship, application, or endorsement

of the Respondent’s website and of the "Dr. Pepper" product

by The Coca-Cola Company.

(l) The Respondent’s

lack of rights in the domain name and its bad faith in registering

and using it are demonstrated by numerous facts. Specifically, Complainant

submits the following evidence:"

c. Remedies Requested

As for relief, Coca-Cola

requests at Paragraph 13:

In accordance

with Paragraph 4(b)(i) of the Policy, for the reasons described in

Section V above, the Complainant requests the Administrative Panel

appointed in this administrative proceeding issue a decision that

the contested domain name <SiempreCocaCola.com> be transferred

to Complainant.

d. Respondent’s

Answer

Respondent has filed

no answer, or any other document, with the Center.

5. Discussion and

Findings

Paragraph 4 of the

Policy directs that Coca-Cola must prove, with respect to the domain name

in issue, each of the following:

(i) The domain

names in issue are identical or confusingly similar to the Coca-Cola

trademark, and

(ii) Respondent

has no rights or legitimate interests in respect of the domain names,

and

(iii) The

domain names have been registered and are being used in bad faith.

Paragraph 4(b) of the

Policy sets out four illustrative circumstances which, for purposes of Paragraph

4(a)(iii) above, shall be evidence of the registration and use of a domain

name in bad faith.

Paragraph 4(c) of the

Policy sets out three illustrative circumstances which, if proved by respondent,

shall demonstrate respondent’s rights or legitimate interests to the domain

name for purposes of Paragraph 4(a)(ii) above.

a. Identity or

Confusing Similarity

Coca-Cola urges, and

has the burden of proving, that the domain name in dispute is either identical

to, or confusingly similar to, the Coca-Cola trademarks. Respondent’s failure

to respond does not relieve Coca-Cola of its burden of proof on this element

or on either of the other two elements of Paragraph 4(a) of the Policy.

However, Respondent’s failure to deny any of Coca-Cola’s averments permits

this panel to take Coca-Cola’s averments as true and to draw appropriate

inferences.

On its face, the domain

name in issue incorporates the term "Coca-Cola" and/or "Siempre Coca-Cola".

Identity to Coca-Cola’s trademarks is clear. In light of the truth and controlling

nature of the facts set forth in the Complaint, paragraph 12(a) - (l), the

Panel finds that the domain name in issue is confusingly similar to the

Coca-Cola trademarks.

b. Rights or Legitimate

Interests

On this record, no

challenge has been leveled with respect to (1) the validity of any Coca-Cola

trademarks or service marks, (2) Coca-Cola’s rights in those marks with

respect to Coca-Cola services and goods, (3) the global fame and goodwill

associated with those marks, or (4) any fact averred by Coca-Cola as to

promotion of the marks, use of the marks, and total sales of services and

goods under the marks. Accordingly, such facts are found to be true.

No challenge has been

leveled with respect to Coca-Cola’s averments as to registrant’s conduct.

In light of the foregoing,

it is found that this record demonstrates that Respondent has no rights

or legitimate interests vis-a-vis <SiempreCocaCola.com>.

c. Registration

and Use in Bad Faith

Registration of the

domain name in issue in bad faith is a matter of the appropriate inferences

to draw from circumstantial evidence. Each is to be proved by Coca-Cola.

The facts asserted

by Coca-Cola in support of its position that Respondent’s registration was

in bad faith are found in the Complaint in paragraph 12(l). These facts

are incorporated herein by reference and are found to be true. As such,

these uncontroverted facts demonstrate that Respondent has registered the

domain name <SiempreCocaCola.com> in bad faith.

d. Paragraph 4.c

Factors

With respect to the

domain name in issue, by failing to respond to the Complaint, Respondent

has failed to prove any of the three circumstances set out in Paragraph 4(c) of

the Policy, viz.:

(i) before

any notice to Respondent of the dispute, Respondent’s use of or preparations

to use the domain name were in connection with a bona fide offering

of goods or services,

(ii) Respondent

or a related entity has been commonly known by the domain name, and

(iii) Respondent

is making legitimate noncommercial or fair use of the domain name

in issue, "without intent for commercial gain to misleadingly divert

consumers or to tarnish the trademark or service mark at issue."

As averred by Coca-Cola

and properly inferred from the undisputed facts as to Respondent’s conduct,

each of these three factors must be resolved in favor of Coca-Cola.

6. Decision

The panel has jurisdiction

of this dispute. Respondent has received notice of the commencement of this

proceeding, the Policy, the Complaint, and the consequences of Respondent’s

default. Respondent has been afforded due process.

With respect to the

request for transfer of the domain name at issue, the Panel decides that

Coca-Cola has carried its burden of proving (a) the domain name in issue

here is identical to or confusingly similar to the Coca-Cola mark, (b) Respondent

has no rights and no legitimate interests in respect of the domain name

in issue, and (c) the domain name in issue has been registered and used

in bad faith by Respondent. Accordingly, the Panel requires that the registration

of the domain name <siempreCocaCola.com> be transferred to Coca-Cola.

Gaynell

C. Methvin

Sole Panelist

Dated: May

18, 2001

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