WIPO Arbitration and Mediation CenterADMINISTRATIVE PANEL DECISIONThe Coca-Cola Company v. Keren, ChenCase No. D2008-18521. The PartiesThe Complainant is The Coca-Cola Company, of the United States of America, represented by Valea AB, of Sweden. The Respondent is Keren, Chen, of Israel, represented by Nadav Argov, of Israel. 2. The Domain Name and RegistrarThe disputed domain name < קוקהקולה.com [xn--8dbabb9a0dbb.com]> is registered with 007Names, Inc. 3. Procedural HistoryThe Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 1, 2008. On December 2, 2008, the Center transmitted by email to 007Names, Inc. a request for registrar verification in connection with the disputed domain name. On December 2, 2008, 007Names, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 4, 2008. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 the Respondent of the Complaint, and the proceedings commenced on December 10, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 30, 2008. The Response was filed with the Center on December 26, 2008. The Center appointed Jonathan Agmon as the sole panelist in this matter on January 16, 2009. 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 BackgroundThe Complainant owns the rights to the COCA-COLA trademark throughout the world. The COCA-COLA mark is regarded as one of the most recognized brands in the world and is a famous trademark. The products under the COCA-COLA trademark are sold in over 200 countries and exceed 1.4 billion servings per day. The COCA-COLA mark is registered as a trademark extensively throughout the world with a first registration obtained as early as 1893 in the United States. In Israel the COCA-COLA mark in Hebrew – קוקה-קולה (logo) was registered as a trademark in March 1955. The mark קוקה-קולה in Hebrew in block letters was registered as a trademark in February 1969. The mark COCA-COLA and its equivalent in Hebrew קוקה-קולה has been associated with the Complainant in Israel for many years.1 The mark COCA-COLA and its equivalent in Hebrew קוקה-קולה are without doubt famous in Israel. These marks are widely recognized as originating from the Complainant. The disputed domain name is an internationalized domain name (“IDN”) with the Punycode text of <xn--8dbabb9a0dbb.com>. An IDN is a domain name that includes non-traditional characters, such as for example, non-Latin characters. Thus, the Punycode domain name <xn--8dbabb9a0dbb.com> resolves to the disputed Unicode domain name <קוקהקולה.com>. The Respondent is an individual who registered the disputed domain name <קוקהקולה.com> on September 21, 2005. The disputed domain name < קוקהקולה.com [xn--8dbabb9a0dbb.com]> is not active. 5. Parties’ ContentionsA. ComplainantThe Complainant argues that the disputed domain name <xn--8dbabb9a0dbb.com> is equivalent to the disputed Unicode domain name it resolves to - <קוקהקולה.com>. The Complainant further argues that the disputed domain name is identical to Complainant’s registered trademark for COCA-COLA in Hebrew קוקה-קולה because it contains the entire Hebrew portion of the mark. The Complainant further argues that the disputed domain name is identical to Complainant’s registered trademark for COCA-COLA in Hebrewקוקה-קולה because it contains the entire Hebrew portion of the mark; and that because the disputed domain name is identical with Complainant’s trademark קוקה-קולה, a reasonable Internet user in Israel would assume that the domain name is associated with the Complainant’s mark. The Complainant further provided that the word “קוקה-קולה” in the disputed domain name is confusingly similar to the Complainant’s trademark COCA-COLA because of the phonetic equivalent of the Complainant’s trademark COCA-COLA and the transliteration of קוקה-קולה into Latin script. The Complainant further argues that the Respondent has no rights or legitimate interests in the domain name <קוקהקולה.com> based on the Complainant’s continuous and long prior use of its mark COCA-COLA and its Hebrew equivalent קוקה-קולה. The Complainant further argues that it has not licensed or otherwise permitted the Respondent to use its trademark. There is no relationship between the parties which would justify the registration of the disputed domain name by the Respondent and there is nothing in the records that suggests that the Respondent is commonly known by the <קוקהקולה.com> disputed domain name. The Complainant further argues that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant argues that by registering the disputed domain name <קוקהקולה.com> the Respondent is preventing the Complainant from reflecting their famous mark קוקה-קולה in a corresponding domain name under the gTLD “.com”. B. RespondentThe Respondent argues that the disputed domain name is not identical or confusingly similar to a trademark in which the Complainant has rights. The Respondent argues that the disputed domain name <קוקהקולה.com> is not identical to the Complainant’s trademark קוקה-קולה because it does not include a hyphen between the word “קוקה”and the word “קולה”. The Respondent further argues that many beverage companies use the word “cola” (קולה) in their marks, since the word stands for a beverage that is made of Cola (Kola) nuts. The word “Coca” (קוקה) is the name of a plant whose extracts are also used in the Coca-Cola beverage, thus both words are descriptive words and belong in the public domain. From this the Respondent argues it flows that the hyphen in the middle of the trademark makes clear that it is a two word mark. The Respondent argues that the Complainant has rights in the “two word mark” with hyphenקוקה-קולה but not in the “one word” קוקהקולה. The Respondent further argues that since there are no vowels in the Hebrew language, the word “קוקהקולה”may be read and pronounced in many different phonetic variations producing a sound very different than “Coca-Cola”, which can be read and pronounced in English in only one manner. For example: Kook-Ha-Ko-Le, Kwa-ka-Kwa-La, Kav-Ke-Koo-Le, are all possible pronunciations for the Hebrew letters קוקהקולה. The Respondent argues that if one were to separate the word “קוקהקולה” into two or more words with meaning in Hebrew, קוקה-קולה would be one of a number of possibilities. However, the combinations: קוק-הקולה (possible translation: “cook the roaster”), קו-קה-קו-לה (possible translation: “her power”, “her line”) and קוק-הקו-לה (possible translation: “cocaine the line for her”) all are a series of words in Hebrew that have meaning. Even the combination קוקה-קולה may be translated into: “her cocaine, her voice”. All of these are divisions of the letters “קוקהקולה” into two words or a number of words in Hebrew that have meaning, and there are more possible combinations of the sort than presented here. Thus, the Respondent argues that it is possible that a person visiting the “www.קוקהקולה.com” site would not necessarily believe that it belongs to the Coca-Cola Company. The Respondent further argues that the Respondent has legitimate interests in respect of the disputed domain name because Complainant has waited more than 3 years before bringing the Complainant and that during this time the Respondent has invested time and effort in the development of a site in the disputed domain name. The Respondent further argues that the Complainant’s failure to act during this period of time constitutes considerable delay and demonstrates that the Respondent’s interest in the disputed domain name does not fall from that of the Complainant. Finally, the Respondent argued that the disputed domain name has been registered and is being used in good faith. The Respondent argued that it is willing to commit not to use this disputed domain name for any purpose that may cause harm to the interest of the Complainant, and not to use the disputed domain name for any commercial use that competes with the Complainant’s business or use the disputed domain name for any site that refers to the Complainant’s interests, including for any party that speaks against the Complainant’s business, either commercially or politically or in any other way. 6. Discussion and FindingsA. Identical or Confusingly SimilarParagraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant argued that the disputed domain name <xn--8dbabb9a0dbb.com> is one and the same to the domain name it is resolved into <קוקהקולה.com>, which is identical to the Complainant’s registered trademark. The disputed domain name only differs from the registered trademark due to the lack of hyphenation. The lack of hyphenation can be disregarded since such difference does not change the reading or the shape of the mark and consumers would not likely observe the lack of hyphenation. Such difference does not create a phonetic impact and produces only a slight visual difference. Previous panels have held that the use of hyphenation is a minor difference generally not sufficient to avoid likelihood of confusion between a disputed domain name and the complainant’s trademark. See Carrefour SA contre Laretoucherie, WIPO Case No. D2003-0587, considering that there was a likelihood of confusion between “le polygone d’or” and “polygone-or”; See also Victoire de Castellane v. Pascal Berend, WIPO Case No. D2007-1863; Toilets.com, Inc. v. Port-A-John, WIPO Case No. D2007-1497 stating that “the deletion or addition of one letter (here a hyphen) is an insignificant change for the purposes of Policy paragraph 4(a)(i), Universal City Studios, Inc. v. HarperStephens, WIPO Case No. D2000-0716”. Previous panels have found that the Punycode domain names and the translated Unicode domain names are equivalent. See FUJITSU Limited v. tete and Lianqiu Li, WIPO Case No. D2006-0885, where the Panel found the <xn--zqsv0e014e.com> domain name to be an exact reproduction of Complainant’s Chinese trademark in a domain name. See also Monografías.com S.A., Fernando Julián Negro v. Nick Lozikov / Moniker Privacy Services, WIPO Case No. D2008-0140. The encoding used by the IDN is a system enabling the use of internationalized domain names in various scripts that are supported by Unicode. The burden of translation of the IDN rests with the browsing or resolving application (such as an Internet browser). Using Punycode the browser application will translate the Punycode text into the non-ASCII characters that are then shown and used. Likewise, if the user employs non-ASCII characters the Punycode will translate those into the Punycode text.2 Some Internet browsers include Unicode to Punycode conversion, while others require a plug-in. The translation is invisible to the user. The user can only see the Punycode translation which is shown in the resulting address bar of the requested web site. The result is that when the Punycode text is put into the address window of the browser, it is translated into the Unicode text and vice versa. In this case a user can enter the Punycode <xn--8dbabb9a0dbb.com> and the browser would translate it into the disputed Unicode domain name <קוקהקולה.com>. Therefore, the <קוקהקולה.com> domain name is one and the same with its Punycode translation <xn--8dbabb9a0dbb.com>. It also flows from the above that the disputed domain name is therefore identical to the Complainant’s registered trademarks in Israel. In addition, the term “קוקהקולה” has no meaning in the Hebrew language and is a transliteration of the English sound of the COCA-COLA trademark. The disputed domain name is phonetically the same and would generate in the eyes of the Israeli consumer an association with the Complainant. In Israel, the term “קוקהקולה” is equivalent to the English words COCA-COLA. It is used in Israel with and without a hyphen. Even if the hyphen or the space is redacted most or nearly all Internet users would recognize both words to be one and the same. When comparing the disputed domain name with the trademark in which the Complainant has rights, the suffix “.com” is typically excluded from consideration because it is a functional part of the domain name address. See Belo Corp v. George Latimer, WIPO Case No. D2002-0329. The Panel therefore finds that the disputed domain name <קוקהקולה.com [xn--8dbabb9a0dbb.com]> is identical to the Complainant’s trademark. B. Rights or Legitimate InterestsOnce the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)). In the present case the Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights. The Panel finds the Complainant has established such prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the COCA-COLA trademark. Respondent’s argument that it has legitimate interests in respect of the disputed domain name because the Complainant has waited more than 3 years before bringing the Complainant is unavailing. It has been held that the doctrine of laches does not properly apply to this Policy proceedings and that the Policy is aimed at avoiding confusion in the future as to the source of the goods. See Tax Analysts v. eCorp, WIPO Case No. D2007-0040 citing E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 “the Policy does not contemplate a defense of laches, which is inimical to the Policy’s purposes” and Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (4th ed. 2005) §31: 10, p. 31-35 and cases cited therein (in common law, the defense of laches bars the recovery of damages incurred before the filing of a lawsuit; this does not apply to injunctive relief in a trademark action that seeks to avoid future confusion in the marketplace). In addition, the Respondent failed to bring any evidence showing that it has invested time and effort in the development of a website associated with the disputed domain name. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad FaithThe Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii). Since the Respondent is residing in Israel where the Complainant is extensively using and displaying the Hebrew version of their COCA-COLA mark,קוקה קולה , and given the fame of the COCA-COLA mark, it is inconceivable that the Respondent was not aware of the Complainant’s rights to the COCA-COLA trademark in Israel. By knowingly choosing the disputed domain name which is comprised entirely of Complainant’s famous trademark less a hyphen, the Respondent has registered the disputed domain name in bad faith. See Kabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi, Ltd.) v. Click Consulting, Ltd., WIPO Case No. D2007-0809, stating that: “This Panel concurs with previous WIPO UDRP decisions holding that incorporating a widely-known trademark as a domain name is a clear indication of bad faith in itself, even without considering other elements. As decided before, ‘knowledge of a corresponding mark at the time of registration of the domain name suggests bad faith’. Caixa D´Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464; Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441.” The Respondent’s argument that it is willing to commit that, in the future that it will not use this disputed domain name for any purpose that may cause harm to the interest of the Complainant serves against it. This argument makes it clear that the Respondent is and was aware of the Complainant’s rights. See Toyota Motor Sales U.S.A., Inc. v. Tony Mwangi, WIPO Case No. D2003-0623. The Respondent is not actively using the disputed domain name. A number of panels have already provided that “passive holding” can qualify as bad faith use. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The Telstra Panel, however, provided that additional circumstances are required to show bad faith use: “That is to say, the circumstances identified in paragraphs 4(b)(i), (ii) and (iii) can be found in a situation involving a passive holding of the domain name registration. Of course, these three paragraphs require additional facts (an intention to sell, rent or transfer the registration, for paragraph 4(b)(i); a pattern of conduct preventing a trade mark owner’s use of the registration, for paragraph 4(b)(ii); the primary purpose of disrupting the business of a competitor, for paragraph 4(b)(iii)). Nevertheless, the point is that paragraph 4(b) recognises that inaction ([e.g.] passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith.” In the present case, the following circumstances are, in combination, sufficient to show bad faith use of the disputed domain name: (i) that the Complainant’s trademark is famous; (ii) that the Respondent wishes to make use of the disputed domain name for a commercial purpose; (iii) that the Respondent sought to take advantage of typographical errors made by Internet users who are seeking the Complainant’s commercial website; See Playboy Enterprises International Inc. v. SAND WebNames - For Sale, WIPO Case No. D2001-0094; and (iv) that the Respondent has no feasible commercial use of the disputed domain name which would not cause injury to the rights of the Complainant’s in the COCA-COLA trademark.3 See McDonald’s Corporation v. Easy Property, WIPO Case No. D2006-1142. It is therefore the finding of the Panel that the Respondent registered and is using the disputed domain name in bad faith. 7. DecisionFor all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <קוקהקולה.com [xn--8dbabb9a0dbb.com]> be transferred to the Complainant. Jonathan Agmon Dated: January 30, 2009 1 The Hebrew characters קוקה-קולה are read from right to left. In some browsers and other applications who do not support the Hebrew language the words would appear such that the word can only be read properly from right to left. 2 Punycode is a computer code that enables the translation of a Unicode string into the more limited character set used on the Internet, as defined in various RFCs. 3 The Respondent provided that it does not wish to harm any of the commercial interests of the Complainant, nor make any noncommercial use nor use the disputed domain name for any site that refers to the Complainant's interests, including for any party that speaks against the Complainant’s business, neither commercially nor politically nor in any other way, which leaves it to commercial uses which it defines as “commercial use that competes with the complainant’s business”.
: https://xn--c1ad2agd.xn--p1ai/intlaw/udrp/2008/d2008-1852.html
: |
|
|