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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) aand EMS COMPUTER INDUSTRY (a/k/a EMS)

Case No. D2003-0696

 

1. The Parties

The Complainant is PepsiCo, Inc., Purchase, New York, United States of America, represented by Georges Nahitchevansky, Fross Zelnick Lehrman & Zissu, PC, United States of America.

The Respondents are PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), Milano, Italy.

 

2. The Domain Names and Registrar

The disputed domain names

<pepsi3d.com>
<pepsi3d.net>
<pepsiadventure.com>
<pepsiadventure.net>
<pepsiarcade.com>
<pepsiarcade.net>
<pepsiatletica.com>
<pepsiatletica.net>
<pepsibaseball.net>
<pepsibasket.com>
<pepsibasket.net>
<pepsibasketball.com>
<pepsibasketball.net>
<pepsicalcio.com>
<pepsicalcio.net>
<pepsiciclismo.com>
<pepsiciclismo.net>
<pepsicricket.com>
<pepsicricket.net>
<pepsif1.com>
<pepsif1.net>
<pepsifondo.com>
<pepsifondo.net>
<pepsifootball.net>
<pepsiformula1.com>
<pepsiformula1.net>
<pepsigame.com>
<pepsigame.net>
<pepsigames.com>
<pepsigames.net>
<pepsigiochi.com>
<pepsigiochi.net>
<pepsigolf.com>
<pepsigolf.net>
<pepsihockey.com>
<pepsihockey.net>
<pepsimanager.com>
<pepsimanager.net>
<pepsimondiali.com>
<pepsimondiali.net>
<pepsimoto.com>
<pepsimoto.net>
<pepsimotogp.com>
<pepsimotogp.net>
<pepsirugby.com>
<pepsirugby.net>
<pepsisail.com>
<pepsisail.net>
<pepsisci.com>
<pepsisci.net>
<pepsiscommesse.com>
<pepsiscommesse.net>
<pepsisimulator.com>
<pepsisimulator.net>
<pepsiski.com>
<pepsiski.net>
<pepsisoccer.com>
<pepsisoccer.net>
<pepsisport.com>
<pepsisport.net>
<pepsistrategy.com>
<pepsistrategy.net>
<pepsisuperbike.net>
<pepsitennis.com>
<pepsitennis.net>
<pepsivolley.com>
<pepsivolley.net>
<pepsivolleyball.com>
<pepsivolleyball.net>
<pepsiworldcup.com>
<pepsiworldcup.net>

are registered with Melbourne IT trading as Internet Name Worldwide.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 3, 2003 (electronic version), and September 5, 2003 (hardcopy). On September 5, 2003, the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the domain names at issue. On September 8, 9 and 10, 2003, Melbourne IT trading as Internet Name Worldwide transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 Respondents of the Complaint, and the proceedings commenced on September 15, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2003. The Respondents did not submit any response. Accordingly, the Center notified the Respondent’s’ default on October 6, 2003.

The Center appointed Kiyoshi I. Tsuru as the Sole Panelist in this matter on October 10, 2003. 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 Background

The Complainant is the manufacturer of, inter alia, the soft drink Pepsi Cola, which was first produced in North Carolina, U.S.A. in 1898 (see PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174, (March 28, 2001)). PEPSI, the shortened version of the PEPSI-COLA mark, was used for the first time for soft drinks in 1911, which renders the PEPSI mark 92 years old.

The Respondents registered the disputed domain names on March 15, 2002;, April 5, 2002,; May 24, 2002,; May 31, 2002,; July 9, 2002;, and November 2, 2002.,

 

5. Parties’ Contentions

A. Complainant

A.1. Identity or Confusing Similarity

The Complainant asserts that:

- The basis for its Complaint is its use, registration and ownership of the mark "PEPSI," and numerous other trademarks and domain names incorporating the marks "PEPSI."

- The PEPSI name and mark are world famous, and enjoy a strong reputation beyond the soft drinks for which the Complainant is most famous.

- The PEPSI brand of soft drinks and soft drink concentrates is currently sold throughout the world, including, inter alia, the United States, Italy and Australia.

- The PEPSI trademark and brand has been recognized as being famous (and cites The World’s Greatest Brands, published by MacMillan Business in 1996, as well as PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174, (March 28, 2001), and PepsiCo, Inc. v. "null," aka Alexander Zhavoronkov, WIPO Case No. D2002-0562, (July 30, 2002): stating that "one of the world’s most famous and valuable trademarks", a fact the Panel can corroborate with its knowledge ex officio," "world-famous," and also that the PEPSI trademark is "universally recognized").

- The estimated value of the PEPSI brand is $9,370 billion (U.S.).

- The PEPSI brand is the number two brand among the billion-dollar brands in the beverage category. The PEPSI-COLA brand has been ranked No. 2 on the list of the top ten grocery food brands in the United States.

- The trademark PEPSI and the various logos accompanying said mark that have evolved over the last 100 years have been registered in many countries in the world, including Venezuela Italy where the Respondents areis allegedly based.

- The approximate worldwide advertising and promotional expenses incurred by the Complainant since 1991 in respect of soft drink beverages sold under trademarks containing PEPSI, including the various device marks, are in excess of 200 million U.S. dollars annually.

- The following domain names have been owned and used by the Complainant, for active websites, which are formatives of its famous PEPSI mark and PEPSICO trade name, including: <pepsi.com>, <pepsico.com>, <pepsiworld.com>, <pepsibusiness.com>, <pepsiretail.com>, <pepsifountain.com>, <pepsivending.com>, and <pepsicojobs.com>, <dietpepsi.com>, <pepsione.com>, <pepsiblue.com>, and <pepsitwist.com>.

- The Respondents’ domain names are nearly identical or confusingly similar to the PEPSI mark, because they fully incorporate said mark. That the mere addition of common terms such as "sports,", "basketball" or "soccer" to the PEPSI mark is of no import (and cites PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174, (March 28, 2001,) –addition of "400" and "southern500"-,; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Kil Inja, WIPO Case No. D2000-1409, (December 9, 2000), –addition of prefixes or suffixes to a world-famous mark-; and America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184, (November 19, 2001), –addition of short phrases to well-known mark.).

- The Complainant’s long-time involvement in sponsoring and promoting various sports and sporting events make it easier for consumers to reasonably believe that Respondents’ domain names are related to Complainant, thus creating a likelihood of confusion.

A.2 Respondent’’s lack of rights or legitimate interests in respect of the domain name

The Complainant argues that:

- Its adoption and extensive use of the PEPSI mark for nearly a century predates the first use of the domain names, and that therefore it is Respondents’ burden to establish their rights or legitimate interests to the domain names (and cites See PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174 , (April 22, 2003)). .

- Respondents have no rights or legitimate interests in the domain names.

- Respondents have been granted no license, permission or other right to use any domain name incorporating Complainant’s famous "PEPSI" mark.

- Use of the acronym P.E.P.S.I. ("Partite Emozionanti Per Sportivi Italiani,", or "Leave the Histrionics for Italian Sports Fans") does not grant Respondents the right to conduct business under a domain name using Complainant’s famous PEPSI mark (and cites PepsiCo, Inc. v. "null,", aka Alexander Zhavoronkov, WIPO Case No. D2002-0562, (July 30, 2002), -a recent creation of company using the initials or acronym P.E.P.S.I. does not create rights or legitimate interests to conduct business under PEPSI mark, since that mark corresponds with another’s universally recognized trademark-,; and National’l Deaf Children’s Society’y and Ndcs Limited. v. Nude Dames, Chat, Sex, WIPO Case No. D2002-0128, (April 19, 2002)).

- Respondents are using the disputed domain names to divert traffic to <pepsisport.com>, a gaming website that allows participants to create fantasy sports teams to compete for prizes. That such site appears to be commercial and that it appears to gather personal data from participants for marketing, advertising and promotional purposes.

- Since the PEPSI mark is famous and Respondents have no rights in it, the only reason why Respondents could have wanted to register and use domain names fully incorporating the PEPSI mark was that they knew of this mark and wanted to use it in the Domain Names in order to confuse Internet users and divert them to another website for their own benefit and profit, and not for any legitimate noncommercial or fair use purpose.

A.3 Bad faith registration and use

Complainant argues that:

- Respondents have registered and are using the disputed domain names in bad faith.

- Bad faith is evidenced by Respondents’ use of the contested domain names to attract and divert web traffic to an apparently commercial sports gaming website (and cites PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174, (March 28, 2001), -where the use of domain names to capture goodwill of PEPSI mark and profit from the goodwill associated with complainant’s sponsorship of certain sporting events was found to be in bad faith).

- The fact that the Respondents have registered without authorization domain names that fully incorporate the Complainant’s famous "PEPSI" mark, despite being aware of Complainant’s rights in that mark, is in and of itself evidence of bad faith (and cites Veuve Cliquot Ponsardin, Maison Fondeée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, (May 1, 2000), -bad faith is found where a domain name "is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith,"; -and PepsiCo, Inc. v. "null," aka Alexander Zhavoronkov, WIPO Case No. D2002-0562, (July 30, 2002), -blatant appropriation of a universally recognized trademark [PEPSI] is of itself sufficient to constitute bad faith).

- Respondents’ use of the P.E.P.S.I. abbreviation for the name of its business further indicates their bad faith (and cites once again and PepsiCo, Inc. v. "null," aka Alexander Zhavoronkov, WIPO Case No. D2002-0562, (July 30, 2002), -the inference that the company name was chosen because its acronym matched Complainant’s PEPSI mark, and that domain name was chosen in the expectation that some users looking for a Pepsi website would be led to it, is "so strong as to be inescapable,", and constitutes bad faith).

- Respondents only could have registered domain names confusingly similar to Complainant’s mMark to capitalize on Complainant’s goodwill.

B. Respondents

The Respondents did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

In accordance with the Policy, pParagraph 4(a), the Complainant must prove that:

"(i) the domain name in question is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

"(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

"(iii) the domain name has been registered and is being used in bad faith."

In the administrative proceeding, the Complainant must prove that each three of these elements are present.

As the Respondents haves failed to submit a Rresponse to the Ccomplaint, the Panel may accept as true all of the allegations of the Ccomplaint. Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487, (August 12, 2002); Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009, (February 29, 2000).

A. Identical or Confusingly Similar

Having analyzed the evidence submitted by the Complainant, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademarks "PEPSI." All of the contested domain names fully incorporate the trademark "PEPSI," which is a distinctive mark. The mere addition of common terms such as "sports,", "basketball,", "soccer,", "volleyball", "rugby" and the like to the "PEPSI" mark, does not change the overall impression of the designations as being a domain names connected to the Complainant (see PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174, (March 28, 2001),; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Kil Inja, WIPO Case No. D2000-1409, (December 9, 2000),; and America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184, (November 19, 2001)).

The other difference between the contested domain names and the Complainants’ trademarks "PEPSI," is the addition of the generic top-level domains (gTLDs) ".com" and ".net" to the said domain names, which is completely without legal significance. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859, (December 4, 2000) (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300, (June 13, 2000); J.P. Morgan v. Resource Marketing, WIPO Case No. D2000-0035, (March 23, 2000)).

Numerous ICANN UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See for example the following decisions: The Nasdaq Stock Market, Inc. v. Green Angel, WIPO Case No. D2001-1010, (September 30, 2001), (citing in turn Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464, (July 27, 2000); The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., WIPO Case No. D2000-0113, (April 13, 2000); World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306, (January 24, 2001); Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615, (August 27, 2002); Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA, WIPO Case No. D2002-0504, (August 1, 2002); Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, (November 6, 2001); Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525, (January 29, 2001)).

Thus, Complainant has complied with the first requirement of the Policy.

B. Rights or Legitimate Interests

The following are examples of circumstances where Respondent may have rights or legitimate interests over a contested domain name:

"(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)).

The Respondents have not submitted any evidence showing that they have any rights or legitimate interests in the disputed domain names.

The Complainant claims that it has denied to have not granted the Respondents any license, permission or other right to use any domain name incorporating the Complainant’s trademark "PEPSI" (see PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174, (March 28, 2001)).

By the time the Respondents registered the contested domain names, i.e., March 15, 2002,; April 5, 2002,; May 24, 2002,; May 31, 2002,; July 9, 2002,; and November 2, 2002, the Complainant had been using its trademark "PEPSI-COLA" for more than 100 years (since 1898), and its trademark "PEPSI" for more than 90 years (since 1911).

Other Panels have found the "PEPSI" trademark to be famous (PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174, (March 28, 2001), and PepsiCo, Inc. v. "null,", aka Alexander Zhavoronkov, WIPO Case No. D2002-0562, (July 30, 2002)).

This Panel finds no legitimate reason for the Respondents to obtain more than seventy domain names, all of which incorporate a famous, well-publicized trademark belonging to a third party. See, mutatis mutandis, Dixons Group Plc v. Mr. Abu Abdullaah, WIPO Case No. D2000-1406, (January 18, 2001), in that: "Legitimacy" in this context presupposes that there must be some justification in the choice or adoption of a particular domain name and, in the present case, such a justification seems lacking. The Respondent’s domain name is virtually the same as the style adopted by the Complainant on its website) and the latter has been widely advertised. In view of this, it is difficult to describe the Respondent’s’ use of the disputed domain name as "legitimate.".

Therefore, there can be no bona fide offering of goods or services, when the Respondents are actually using the trademark "PEPSI" in connection to more than 70 domain names, without authorization, permit or license granted by the owner of said trademark.

The P.E.P.S.I. acronym, which supposedly stands for "Partite Emozionanti Per Sportivi Italiani,", or "Leave the Histrionics for Italian Sports Fans" is identical to the Complainant’s trademark "PEPSI." The dots that separate every letter forming the word "PEPSI" are irrelevant, particularly since said dots are not reproduced in the disputed domain names. The Respondents have not proved to be the owners ofshown any right to the said acronym and thus are not entitled to use the Complainant’s trademark "PEPSI" as incorporated into such acronym or otherwise. See PepsiCo, Inc. v. "null,", aka Alexander Zhavoronkov, WIPO Case No. D2002-0562, (July 30, 2002), -where a recent creation of company using initials or acronym P.E.P.S.I. does not create right or legitimate interest to conduct business under PEPSI mark, since that mark corresponds with another’s universally recognized trademark-, and National Deaf Children’s Society and Ndcs Limited v. Nat’l Deaf Children’s Soc’y and NDCS Ltd. v. Nude Dames, Chat, Sex, WIPO Case No. D2002-0128, (April 19, 2002).

The Respondents have not provided any evidence showing that they have been commonly known by any of the contested domain names. In fact, it has been the Complainant who has been commonly known by the trademark "PEPSI" for more than 90 years, a trademark which is normally often associated to with sports and sporting events, like the ones described in the contested domain names (e.g. "basketball,", "soccer,", "volleyball", "rugby," etc.).

The Respondents are misleadingly diverting Internet users to a gaming Wwebsite, which appears to be commercial. This Panel has found no legitimate, noncommercial, bona fide or fair use of the contested domain names, which in turn resolve to the above mentioned gaming site.

The second requirement set forth in the Policy has thus been fulfilled.

C. Registered and Used in Bad Faith

According to the Policy, paragraph 4(b), the following circumstances shall be evidence of registration and use in bad faith:

"(i) circumstances indicating that you have registered or you have acquired the domain name 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location."

(Paragraph 4(b) of the Policy)

The Complainant has proved that the Respondents have intentionally attempted (and apparently succeeded) to attract, apparently for commercial gain, Internet users to Respondents’ wWebsite, by creating a likelihood of confusion with the Complainant’s trademark (Policy, Paragraph 4(b)(iv)). See PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174, (March 28, 2001), -where the use of domain names to capture goodwill of PEPSI mark and profit from the goodwill associated with complainant’s sponsorship of certain sporting events was found to be in bad faith. It is difficult to believe that any party would undergo the difficulties and expenses relating to the registration of more than seventy domain names, all of which encompass the trademark "PEPSI," and then have such domain names resolve to a electronic gaming facility, in order to conduct a non-commercial operation. Thus, commercial use is presumed.

The Panel agrees with the decision rendered in Veuve Cliquot Ponsardin, Maison Fondéee en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, (May 1, 2000), in that bad faith is found where a domain name "is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith.".

The third requirement of the Policy has been therefore fulfilled.

 

7. Decision

For all the foregoing reasons, in accordance with Pparagraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names listed herein below be transferred to the Complainant:

<pepsi3d.com>
<pepsi3d.net>
<pepsiadventure.com>
<pepsiadventure.net>
<pepsiarcade.com>
<pepsiarcade.net>
<pepsiatletica.com>
<pepsiatletica.net>
<pepsibaseball.net>
<pepsibasket.com>
<pepsibasket.net>
<pepsibasketball.com>
<pepsibasketball.net>
<pepsicalcio.com>
<pepsicalcio.net>
<pepsiciclismo.com>
<pepsiciclismo.net>
<pepsicricket.com>
<pepsicricket.net>
<pepsif1.com>
<pepsif1.net>
<pepsifondo.com>
<pepsifondo.net>
<pepsifootball.net>
<pepsiformula1.com>
<pepsiformula1.net>
<pepsigame.com>
<pepsigame.net>
<pepsigames.com>
<pepsigames.net>
<pepsigiochi.com>
<pepsigiochi.net>
<pepsigolf.com>
<pepsigolf.net>
<pepsihockey.com>
<pepsihockey.net>
<pepsimanager.com>
<pepsimanager.net>
<pepsimondiali.com>
<pepsimondiali.net>
<pepsimoto.com>
<pepsimoto.net>
<pepsimotogp.com>
<pepsimotogp.net>
<pepsirugby.com>
<pepsirugby.net>
<pepsisail.com>
<pepsisail.net>
<pepsisci.com>
<pepsisci.net>
<pepsiscommesse.com>
<pepsiscommesse.net>
<pepsisimulator.com>
<pepsisimulator.net>
<pepsiski.com>
<pepsiski.net>
<pepsisoccer.com>
<pepsisoccer.net>
<pepsisport.com>
<pepsisport.net>
<pepsistrategy.com>
<pepsistrategy.net>
<pepsisuperbike.net>
<pepsitennis.com>
<pepsitennis.net>
<pepsivolley.com>
<pepsivolley.net>
<pepsivolleyball.com>
<pepsivolleyball.net>
<pepsiworldcup.com>
<pepsiworldcup.net>

 

---

 

Kiyoshi I. Tsuru
Sole Panelist

Dated: October 28, 2003