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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PepsiCo, Inc. v. Bin G Glu

Case No. D2007-0490

 

1. The Parties

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

The Respondent is Bin G Glu, Taiyuan, Canada.

2. The Domain Name and Registrar

The disputed domain name <pepsirewards.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2007. On April 2, 2007, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On April 2, 2007, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on April 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2007.

The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on May 24, 2007. 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 in this administrative proceeding is PepsiCo, Inc., Purchase, New York, United States of America.

The Complainant is the proprietor of the world famous trademarks PEPSI and PEPSI-COLA. For more than a century the PEPSI-COLA name and mark, and its shortened version, PEPSI, have been continuously used to identify one of the world’s famous brands of soft drinks and soft drink concentrates. The Complainant’s PEPSI brands of soft drinks and soft drink concentrates are currently sold in virtually all countries of the world. The Complainant’s trademarks PEPSI and PEPSI-COLA have been registered in virtually every country of the world and the PEPSI trademark enjoys a strong reputation beyond the soft drinks for which the company is most famous.

The disputed domain name was registered on July 25, 2005 and is currently used to operate a website that displays a click through search engine and web portal including a variety of “popup” and “popunder” advertising. The web portal located at the disputed domain name displays a number of links, most of which are commercial in nature, such as, for example, “airline tickets,” “weight loss programs,” “credit card applications,” “dating” and “ringtones.” There are also a number of links and references featuring the Complainant’s marks. The web pages accessed from the links offer and/or advertise goods and services unrelated to the Complainant or its products or services.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

The disputed domain name is identical or confusingly similar to the Complainant’s PEPSI and PEPSI-COLA marks as it fully incorporates the PEPSI mark. The mere addition of the common term “rewards” to the PEPSI mark is of no import as the addition of an ordinary descriptive word as prefix or suffix to a world-famous mark does not detract from the overall impression of the dominant part of the name, the famous mark.

Given the notoriety and unique character of the Complainant’s PEPSI and PEPSI-COLA marks, there can be no doubt that consumers will reasonably believe that the disputed domain name is related to the Complainant. Users who search the Internet for information concerning the Complainant or its products are likely to be misdirected to the disputed domain name believing they are accessing a web site connected to or authorized by the Complainant, thus creating a likelihood of confusion.

The Respondent cannot demonstrate or establish any legitimate interest in the disputed domain name which was registered long after the Complainant had established rights in its PEPSI and PEPSI-COLA marks through extensive use. Where the Complainant’s marks are so well-known and recognized, there can be no legitimate use by the Respondent. There is no relationship between the Complainant and the Respondent giving rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant’s PEPSI mark. The disputed domain name is not, nor could it be contended to be, a name or nickname of the Respondent, nor is it in any other way identified with or related to any rights or legitimate interests of the Respondent.

The Respondent has registered and is using the disputed domain name solely for commercial gain. Upon information and belief, the Respondent derives a financial benefit from the web traffic that is diverted through the disputed domain name to the Respondent’s search engine and linking portal. The html source code of the portal reveals that the data displayed on the website is generated through a domain traffic monetization service that offers a revenue program which pays domain name owners for the traffic they direct to landing pages. Since the PEPSI and PEPSI-COLA marks are famous and the Respondent has no rights in them, the only reason why the Respondent could have wanted to register and use a domain name incorporating the PEPSI mark was that it knew of these marks and wanted to use them in order to profit from the traffic generated by the fame of the mark.

The Respondent registered and is using the disputed domain name in bad faith for commercial gain and to profit from the resulting consumer confusion. The Respondent’s bad faith registration is established by the fact that the disputed domain name fully incorporates the Complainant’s famous PEPSI mark, and was acquired long after the mark attained its fame. A blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith. The Respondent’s bad faith registration and use is further established by the fact that the Respondent has sought to profit in bad faith from the use of the disputed domain name to divert web traffic to a search engine and linking portal for profit.

The Respondent 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 websites from which it derives a financial benefit. Such a pattern is evident in the numerous administrative decisions finding that Respondent registered and used domain names for click through revenue in bad faith. See, e.g., Societй Air France v. Bing G Glu, WIPO Case No. D2006-0834 (transferring domain names based on the AIR FRANCE mark); Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. v. Bin G Glu, NAF Claim No. FA0605000714965 (transferring snapfihs.com); Metropolitan Life Indurance Company v. Bin G Glu c/o G Design, NAF Claim No. FA 0612000874496 (transferring metllife.com and mettlife.com); and 1-800-Flowers.com, Fresh Intellectual properties, Inc., Fanny May Confections, Inc. v. G Design, WIPO Case No. D2006-0977 (transferring several domain names based on the 1-800-FLOWERS and FANNIE MAY marks). Such a pattern of cybersquatting is strong evidence supporting a finding of bad faith.

The Respondent has also registered a number of other domain names based on third party marks or names such as the domain names <aimmutualfunds.com> and <remaxhq.com>, which are based on the marks and names AIM Mutual Funds and REMAX respectively.

B. Respondent

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

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

The Panel finds that the Complainant has established rights in its famous PEPSI and PEPSI-COLA trademarks. The Complainant can point to its extensive portfolio of registered trademarks, its lengthy use of the marks dating back to 1911 and to the fact that it is listed as number 22 on the Interbrand list of best global brands 2006.

Clearly, the disputed domain name is not identical to these trademarks, although it includes the Complainant’s trademark PEPSI in its entirety. The difference is the addition of the generic word “rewards” to the PEPSI trademark. As is customary in proceedings under the Policy, the gTLD (.com) may be discounted as it is wholly generic, leaving a comparison between PEPSI and “pepsirewards”. The Complainant’s mark is extremely well-known and indeed famous. It is well recognized in previous cases under the Policy that where such a mark is incorporated in its entirety within a domain name, the addition of one or more generic words will not distinguish that domain name from the mark (see, for example, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Kil Inja, WIPO Case No. D2000-1409). The dominant part of the disputed domain name is the Complainant’s trademark and not the word “rewards”. In these circumstances, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Complainant is required under paragraph 4(a)(ii) of the Policy to prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in a disputed domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.”

As the Respondent did not respond to the Complaint, it did not submit any evidence demonstrating rights or a legitimate interest in the disputed domain name. The Complainant asserts that where the Complainant’s marks are so well-known there cannot be any legitimate use by the Respondent. The Complainant also states that there is no relationship between the parties through which the Respondent could have obtained any right to register or use any domain name incorporating the Complainant’s trademarks. In addition, the Complainant’s submissions focus on the fact that the disputed domain name is being used by the Respondent in connection with a domain traffic monetization service.

The Respondent has chosen not to explain its conduct or to set out any rights or legitimate interests. It seems clear to the Panel, in the absence of any alternative explanation, that the Respondent selected the disputed domain name because of its association with the Complainant’s famous trademark, with a view to receiving revenue from the resulting increase in web traffic to the pay per click service which is being operated at the associated website. This could not be described as a bona fide offering of goods or services and it is clear that the Respondent’s use of the disputed domain name in this manner does not confer any rights or legitimate interests upon it. Given these circumstances, the Panel cannot conceive of any possible legitimate interest or right that the Respondent might have in the disputed domain name.

Accordingly, the Panel finds that the Complainant has proved that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant is required under paragraph 4(a)(iii) of the Policy to prove that the Respondent has registered and used the disputed domain name in bad faith.

The Complainant sets out a compelling case regarding the Respondent’s bad faith. This covers the Respondent’s use of the disputed domain name for pay per click advertising services, whereby the Respondent may profit from consumer confusion arising from the inclusion of the Complainant’s trademark in the disputed domain name, together with the Respondent’s past activities involving similar famous or well-known trademarks including AIR FRANCE, SNAPFISH and METLIFE. There is no indication of any good faith motivation on the Respondent’s part in registering and using the disputed domain name. Furthermore, the Panel cannot imagine any good faith motivation which the Respondent might have had in this regard.

Having considered the Complainant’s submissions and supporting documentary evidence, the Panel is satisfied that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of that web site, as contemplated by paragraph 4(b)(iv) of the Policy. This is further endorsed by the fact that the Respondent has clearly been engaged in this activity with regard to other well-known trademarks.

In these circumstances, the Panel finds that the Complainant has proved that the Respondent has registered and used the disputed domain name in bad faith.

7. Decision

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

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Andrew D. S. Lothian
Sole Panelist

Dated: June 7, 2007