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

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

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

Case No: D2002-0040

1. The Parties

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.

2. The Domain Names and Registrar

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..

3. Procedural History

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.

4. Factual Background

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).

5. Parties’ Contentions

A. Complainant

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.

B. Respondent

Respondent has not submitted a Response in this proceeding.

6. Discussion and Findings

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.

A. Identicality or Confusing Similarity

The Panel finds that the disputed domain names <cocacolastore.com>

and <cokestore.com> are confusingly similar to Complainant’s "Coca-Cola"

and "Coke" marks.

B. Lack of Rights or Legitimate Interests

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.

C. Bad Faith Registration and Use

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.

7. Decision

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.

David E. Sorkin

Presiding Panelist

R. Eric Gaum

Panelist

Frederick M. Abbott

Panelist

Dated: May 16, 2002

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