“Refresh Yourself.”
Who said that UDRP decisions were all the same and that they were dull? D2020-0054 offers the opportunity to prove the contrary and, at the same time, to get away from the gloomy news.
Have a Coca-Cola, original, Zero, Light, Life, Vanilla, Cherry, Lemon, or Green Tea, and if by any chance, there is a Coca-Cola Energy (to be consumed in moderation) in your refrigerator, that would be perfect! The decision concerns, among others, <Coke.energy>, <Coca-cola.energy> and <Cocacola.energy> (WIPO, D2020-0054, The Coca-Cola Company v. Alberto S. Somohano a/k/a Alberto Soler, Alberto Soler-Somohano, WHO, Roberto Soler , March 15, 2020).
Could the Coca-Cola company miss the sunrise period? I acknowledge that the latter was much earlier (from December 2, 2014, to January 31, 2015) to the launch of the product (October 2019). Nevertheless, at a time when a significant part of the world population absorbs energy drinks, it would have been judicious to participate in the sunrise period and to secure these two domain names in the event where the company would, one day, perhaps, launch a product based on caffeine, taurine or guarana. After the failure of Coca-Cola BlāK (2006-2008), was the Coca-Cola company not going to try to reconquer the juicy energy drinks market which it had dominated with supremacy for decades? Anyhow, it was necessary to participate energetically in this sunrise period. The same was valid for the domain name <the-coca-cola.company> ( sunrise period from December 31, 2013 to March 8, 2014).
Surprisingly, the Coca-Cola company did not worry about the registration of these domain names – however identical to the brands of the group – in due time, that is to say in 2013-2014 (.company) and 2014-2015 (.energy). Unexpectedly, Coca-Cola had not bothered to register the domain names <Coke.energy>, <Coca-cola.energy> and <Cocacola.energy> before filing the trademark application for COCA-COLA ENERGY (US 88385628), on April 15, 2019. As a result, the domain names were registered a month later, on May 18, 2019. Specialists in the brand protection and domain names are aware that the registration of the domain names is highly recommended before or, at the latest, simultaneously with the filing of trademarks. The hypothesis relating to the need to maintain the confidentiality of the COCA-COLA ENERGY project is plausible. Indeed, the registration of domain names would have immediately resulted in a media wave speculating on the plans of Coca-Cola, several months before the launch of the product (October 2019). However, the risk was high, it happened, and Coca-Cola was deprived of supposedly valuable domain names for the marketing team.
That said, Coca-Cola had enough time to get the domain names transferred before October. The UDRP procedure that gave rise to decision D2020-0054 only lasted two months, between the date of the complaint (January 13, 2020) and that of the decision (March 15, 2020). It is unlikely that Coca-Cola was not aware of these domain names. If this is the case, Coca-Calo should especially seek advice from IP Twins intellectual property lawyers who, thanks to their Detective tool, can produce daily reports on domain names likely to infringe its trademark rights. In any case, it was entirely possible – and we would even have strongly prescribed to go this way – to file a UDRP complaint immediately after the registration of the domain names, and not eight months later. What a pity!
All the domain names included in the UDRP complaint have been transferred:
- <alwayscoca.com>;
- <coladecoca.com>;
- <the-coca-cola.company>;
- <cocacoca-energy.com>;
- <coca-cola.energy>;
- <cocacola.energy>; and
- <coke.energy>.
I haven’t told you about the respondent yet: a certain Alberto S. Somohano. Since 2011, he has filed several American trademarks, including COLA DE COCA (US 88768262), on January 21, 2020, a week after the UDRP complaint. He also owns many other domain names, including <coca.life> and <coca.energy> which, by the way, could have been included in the UDRP complaint with a chance of success since in this case, the .life and .energy top-level domains would have been taken into account in the analysis of the risk of confusion between the signs:
- COCA-COLA LIFE / <coca.life>;
- COCA-COLA ENERGY / <coca.energy>.
In its decision D2020-0054, the third-party decision-maker specified that Mr. Somohano was not represented. It is appropriate to emphasize this again.
The respondent considered, to begin with, that the third-party decision-maker designated by the Arbitration and Mediation Center of the World Intellectual Property Organization had no jurisdiction in case of a dispute relating to a trademark issue between two American parties. Indeed, Mr. Somohano filed on opposition to the COCA-COLA ENERGY trademark before the USPTO. Regardless, recalls the third-party decision-maker, the existence of an administrative procedure does not preclude its jurisdiction.
On the merits, the respondent argued that the terms “coca” and “cola” were generic and, therefore, incapable of appropriation, so that he could legitimately use them to register domain names designating sodas and, register trademarks such as COLA DE COCA (sic). To this argument, the third-party decision-maker replied that the USPTO has long recognized the complainant’s trademark rights.
Also, the defendant argued that by not including in this procedure other domain names registered by him (eg: coca.life and coca.energy), the complainant had waived its right to seek transfer of the domain names. The third-party decision-maker replied:
“The Policy and Rules do not set a time limit for bringing a complaint after discovering a domain name registration that potentially violates the Policy, nor do the Rules require the consolidation of complaints regarding multiple domain names.”
Finally, the respondent asked the panelist to rule that Coca-Cola’s complaint was abusive (reverse domain name hijacking). Unsurprisingly, this request was dismissed.
The new top-level domains offer as many opportunities for trademark owners and the cybersquatters. Just take a look to some decisions (more or less recent) rendered under the auspices of the World Intellectual Property Organization:
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This trend should encourage brand owners to consider preventive registrations seriously. Indeed, it is not conceivable that a brand owner abandons to third parties the control of identical domain names, which would suggest to the consumer that the site in question comes from a reliable source. Also, it should be borne in mind that the cost of registering a domain name (even a new gTLD) remains lower than all the expenses necessary for the completion of a UDRP procedure.
