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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Pepsico, Inc. v. Domain Admin

Case No. D2006-0435

 

1. The Parties

Complainant is Pepsico, Inc., Purchase, New York, United States of America, represented by Kilpatrick Stockton LLP.

Respondent is Domain Admin, Fort Wayne, Indiana, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <pepsicolaroadhouse.com> (the “Disputed Domain Name”) is registered with Dynamic Dolphin Inc..

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2006. On April 7, 2006, the Center transmitted by e-mail to Dynamic Dolphin Inc. a request for registrar verification in connection with the domain name at issue. On April 28, 2006, Dynamic Dolphin Inc. transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative 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 Respondent of the Complaint, and the proceedings commenced on April 21, 2006. In accordance with the Rules, Paragraph 5(a), the due date for the Response was set for May 11, 2006. Respondent did not submit a response. Accordingly, the Center notified Respondent of Respondent’s default on May 15, 2006.

The Center appointed Steven Auvil as the sole panelist in this matter on May 29, 2006. 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

Complainant is the owner of the PEPSI and PEPSI-COLA marks, which were used for the first time for soft drinks in North Carolina, United States of America, in 1898. In the United States alone, Complainant owns over 100 registrations and applications for PEPSI-variant marks in connection with a wide variety of goods and services. Complainant has supplied documentation evidencing that the PEPSI trademark is a famous trademark; the PEPSI-COLA brand has been ranked No. 2 on the list of the top ten grocery food brands in the United States.

Complainant also submitted documentation evidencing that Complainant has continuously owned and used numerous Internet domain names for active web sites incorporating the PEPSI mark, including without limitation <pepsi.com>, <pepsicola.com>, <pepsico.com>, <pepsismalsh.com>, <pepsiworld.com>, <pepsibusiness.com>, <pepsiretail.com>, <pepsifountain.com>, <pepsivending.com>, and <pepsicojobs.com>.

The Disputed Domain Name was first registered with Dynamic Dolphin Inc. on November 27, 2005. Complainant submitted evidence that, on March 30, 2006, the web site associated with the Disputed Domain Name directed consumers to a search engine and linking portal advertising web sites that compete with Complainant or that are related to entertainment, travel, online dating services, concert tickets, other entertainment information or web sites that appear to offer downloading of entertainment programs.

 

5. Parties’ Contentions

A. Complainant

Though the Whois information for the Domain Name indicates that Respondent is “Domain Admin,” Complainant contends, and has provided documentation to support, that Respondent has in the past registered domain names under the name “General Delivery,” uses an address in the Cayman Islands, and has registered numerous domain names incorporating well-known trademarks and used multiple aliases when registering these domain names in order to conceal Respondent’s true identity.

Complainant contends that its PEPSI and PEPSI-COLA marks are famous and well-known. Complainant also contends that the Disputed Domain Name is confusingly similar to its well-known PEPSI and PEPSI-COLA marks.

In addition, Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name, that Respondent was not authorized by Complainant to use the PEPSI marks, and that Respondent is the PEPSI mark for commercial gain. Complainant further contends that Respondent was not using the Disputed Domain Name in connection with a bona fide offering of goods or services.

Finally, Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith because Respondent (1) registered and is using it in order to utilize Complainant’s well-known trademarks to attract Internet users to a web site for commercial gain, (2) registered the Disputed Domain Name under a fictitious name, and (3) has engaged in a pattern of registering well known trademarks under fictitious names.

Complainant is seeking transfer of the Disputed Domain Name to Complainant.

B. Respondent

Respondent did not respond to Complainant’s contentions.

 

6. Discussion and Findings

The Panel’s jurisdiction is limited to a determination whether Complainant has proved the necessary elements of a claim for transfer or cancellation of a domain name under the Policy and the Rules. The discussion and decision will be governed by the terms of the Policy.

To obtain relief, Paragraph 4(a) of the Policy requires Complainant to prove each of the following:

(1) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) that Respondent has no rights or legitimate interest in the domain name registered by Respondent; and

(3) that the domain name registered by Respondent has been registered and used in bad faith.

In view of Respondent’s failure to submit a Response, the Panel will decide this administrative proceeding on the basis of Complainant’s undisputed allegations, pursuant to Paragraphs 5(e), 14(a) and 15(a) of the Rules, and draw such inferences it considers appropriate, pursuant to Paragraph 14(b) of the Rules.

A. Identical or Confusingly Similar

The Panel acknowledges that the PEPSI trademark is a highly famous mark. See, e.g., PepsiCo, Inc. v. Diabetes Home Care, Inc. & DHC Services, WIPO Case No. D2001-0174 ([the PEPSI mark] “is one of the world’s most famous and valuable, a fact the Panel can corroborate with knowledge ex officio”); PepsiCo, Inc. v. “null,” a/k/a Alexander Zhavoronkov, WIPO Case No. D2002-0562 at paragraphs 6.12, 6.13, 6.15 (PEPSI is a “world-famous” and “universally recognized” mark); PepsiCo, Inc. v. Becky a/k/a Joe Cutroni, Nat. Arb. Forum FA0207000117014 (PEPSI and PEPSI-COLA are internationally famous marks).

Respondent does not dispute, and the Panel finds, that the Disputed Domain Name registered by Respondent is confusingly similar to Complainant’s well-known and federally-registered PEPSI and PEPSI-COLA marks. Numerous PEPSI and PEPSI-COLA marks were registered on the principal register prior to November 29, 2005, the date of Respondent’s registration of the Disputed Domain Name. However, Complainant’s rights in the PEPSI and PEPSI-COLA marks date back to as early as 1898, when the PEPSI-COLA mark was used for the first time for soft drinks. PEPSI, the shortened version of the PEPSI-COLA mark, was used for the first time for soft drinks in 1911. The PEPSI mark is therefore 92 years old, giving Complainant priority over those with competing claims to the PEPSI mark based upon later use. 15 U.S.C. § 1057(c).

This Panel finds, as a previous WIPO panel has already found, that the Disputed Domain Name is nearly identical or confusingly similar to Complainant’s PEPSI and PEPSI-COLA marks because it fully incorporates them. See PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696 (October 28, 2003) (“incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark”). Moreover, this Panel finds, as several WIPO panels adjudicating previous decisions involving well-known marks have already found, that the addition of a descriptive word (here, “roadhouse”) as a suffix to the mark does not obviate the confusing similarity between the Disputed Domain Name and Complainant’s PEPSI and PEPSI-COLA marks. See, e.g., Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Kil Inja, WIPO Case No. D2000-1409 (December 9, 2000) (addition of ordinary descriptive word as prefix or suffix to a world-famous mark such as SONY does not detract from overall impression of the dominant part of the name, the famous mark); America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184 (November 19, 2001) (use of short phrases with well-known mark still found confusingly similar to that mark).

For these reasons, the Panel concludes that the Disputed Domain Name is confusingly similar to the PEPSI and PEPSI-COLA marks, federally-registered trademarks in which Complainant has rights.

B. Rights or Legitimate Interests

Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue, Policy, Paragraph 4(c).

Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name. Respondent has not submitted any arguments or evidence in rebuttal. Nothing in the record suggests that Respondent is commonly known by the Disputed Domain Name. Respondent was not licensed by Complainant to use the marks PEPSI or PEPSI-COLA, and Respondent registered the Disputed Domain Name long after Complainant established rights in its PEPSI and PEPSI-COLA marks through extensive use. Respondent has not provided any explanation as to why the use of these famous marks in the Disputed Domain Name was legitimate. See, e.g., Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397 (December 21, 2000) (“given that Complainant’s trademark is distinctive and famous to the point where it may not be used by other persons even in fields or industries unrelated to Complainant’s activities, one would be hard pressed to find a person who may show a right or legitimate interest in a domain name containing Complainant’s trademark”). In short, there is no evidence from which the Panel could conclude that Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name.

For these reasons, in accordance with Paragraph 4(a)(ii) of the Rules, the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name.

C. Registered and Used in Bad Faith

Complainant also argues that Respondent registered and used the Disputed Domain Name in bad faith. Specifically, Complainant argues that Respondent’s bad faith is reflected in the fact that: (1) Complainant’s PEPSI and PEPSI-COLA marks are well- known; (2) Respondent utilized the Disputed Domain Name incorporating the PEPSI and PEPSI-COLA marks to attract Internet users to a web site for commercial gain; (3) Respondent has engaged in a pattern of cybsersquatting activity; and (4) Respondent has engaged in efforts to conceal Respondent’s true identity.

The PEPSI and PEPSI-COLA marks are registered and Respondent is charged with constructive notice of them. See, e.g., RRI Financial, Inc. v. Ray Chen, WIPO Case No. D2001-1242 (December 11, 2001) (constructive knowledge of Complainant’s rights in trademarks is a factor supporting bad faith); eBay Inc. v. SGR Enterprises, Joyce Ayers, WIPO Case No. D2001-0259 (April 11, 2001) (“Actual or constructive knowledge of the Complainant’s rights in its trademark is a factor supporting bad faith.”); Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384 (January 3, 2002) (applying principle of constructive notice in finding bad faith).

Moreover, this Panel finds, as a previous WIPO panel has already found, that the appropriation of the well-known PEPSI mark in a domain name constitutes bad faith. See Pepsico, Inc. v. Zhavoronkov, WIPO Case No. D2002-0562 (July 30, 2002) (“blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith”). See also Veuve Cliquot Ponsardin, Maison Fondee 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”).

In addition, according to Paragraph 4(b)(iv) of the Policy, evidence of bad faith registration and use is shown when registration of a domain name occurs in order to utilize another’s well-known trademark by attracting Internet users to a web site for commercial gain. See, e.g., Am. Online, Inc. v. Tencent Commc. Corp., FA 93668 (National Arbitration Forum, March 21, 2000) (finding bad faith where the respondent registered and used the disputed domain name to attract users to a web site sponsored by the respondent). Here, the unrebutted evidence demonstrates that Respondent used Complainant’s federally-registered and well-known PEPSI marks in the Disputed Domain Name to attract Internet customers to a web page that contains links to a variety of Internet web sites that offer goods and services competitive with those of Complainant. Further, Complainant has supplied evidence that demonstrating that, through a domain traffic monetization service, Respondent earns revenue every time a user lands on a third party web site or web page through the links displayed on this web page.

The unrebutted evidence in this case also demonstrates that Respondent, using fictitious or limited contact information, has engaged in a pattern of registering domain names containing the trademarks and names of third parties and then using those domain names to direct web traffic to web sites from which it derives financial benefit. See, e.g., Shaw Industries Group, Inc., Columbia Insurance Company v. shawindustries, WIPO Case No. D2005-1037 (November 23, 2005) (transferring shawindustries.com); Wal-Mart Stores, Inc. v. walmarts, WIPO Case No. D2005-0706 (August 29, 2005) (transferring walmarts.com); Scripture Union International Council v. scriptureunion, WIPO Case No. D2004-0577 (November 1, 2004) (transferring scriptureunion.com); Government Employees Insurance Company (GEICO) v. Gico, WIPO Case No. D2004-0545 (September 7, 2004) (transferring <gigo.com>). Such a pattern of cybersquatting is indicative of bad faith. See, e.g., Societe BIC v. LaPorte Holdings, LLC, WIPO Case No. D2005-0342 (June 16, 2005) (“The Respondent has a pattern of registering and using domain names incorporating third parties’ trademarks with the intent to attract for commercial gain Internet users to its web site(s) by creating likelihood of confusion with the complainants’ trademarks . . . which is sufficient to find bad faith under the Policy”).

For these reasons, the Panel concludes that the bad faith element of the Policy is satisfied.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and Paragraph 15 of the Rules, the Panel orders that the domain name <pepsicolaroadhouse.com > be transferred to Complainant Pepsico, Inc.

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Steven Auvil
Sole Panelist

Dated: June 12, 2006