WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

PepsiCo, Inc. v. Henry Chan

Case No. D2004-0033

 

1. The Parties

The Complainant is PepsiCo, Inc., Purchase, New York, United States of America ("USA"). The Complainant is represented by Georges Nahitchevansky of Fross Zelnick Lehrman & Zissu, P.C. , New York, New York, USA.

The Respondent is Henry Chan of Nassau, Bahamas.

2. The Domain Names and Registrar

The Domain Names in dispute are set out in the Complaint of January 15, 2004. At that stage these comprised the following:

All domain names are registered with iHoldings.comInc.d/b/a dotregistrar.com.

A further disputed domain name was added by amendment to the Amended Complaint of February 5, 2004, namely <pepsicollection.com>. That domain name is also registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

Two further disputed domain names were added by re-amendment to the Re-Amended Complaint dated March 25, 2004, namely <pepsicareer.com> and <pepsidownloads.com>. Again, those domain names are registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The essential procedural history is as follows:

3.1 The Complaint and annexes was filed with the WIPO Arbitration and Mediation Center ("the Center") on January 16, 2004.

3.2 The Center acknowledged receipt of the Complaint on January 19, 2004, and on the same day transmitted by email a Request for Registrar Verification to iHoldings.com Inc. d/b/a DotRegistrar.com in relation to the seven domain names listed in the Complaint.

3.3 On January 21, 2004, the registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the current registrant of the domain names listed in the Complaint, and providing details for the administrative, billing and technical contact.

3.4 On the February 5, 2004, the WIPO Center determined 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").

3.5 On February 5, 2004, the Center sent to the Respondent (with copies to the Complainant, ICANN and the registrar) the Complaint and a Notification of Complaint and Commencement of Administrative Proceedings. The Administrative Proceeding formally commenced February 5, 2004. The deadline for a Response was February 25, 2004.

3.6 On February 5, 2004, the Complainant by its attorneys informed the Center that it had come to their attention that the Respondent had also registered a further domain name with the same registrar, namely <pepsicollection.com>. The attorneys submitted an Amended Complaint together with a Supplemental Exhibit, Q.

3.7 On February 6, 2004, the Center sent to the Respondent by email an amended Notification of Complaint together with the Amended Complaint.

3.8 The Respondent did not submit any Response.

3.9 On March 5, 2004, the Center sent to the Respondent by email a Notification of Respondent Default in relation to the Domain Names listed in the Amended Complaint.

3.10 On March 19, 2004, the Center appointed Anthony R. Connerty as Sole Panelist. He had submitted a Statement of Acceptance and Declaration of Impartiality and Independence as required by the Rules. The Panel finds that it was properly constituted.

Notification of the Appointment of the Administrative Panel and Projected Decision Date was sent by email to the Complainant and to the Respondent on March 19, 2004, specifying the decision date of April 2, 2004.

3.11 By email of March 22, 2004, the Complainant submitted to the Center a request that the Panel allow into the pending proceedings two further "newly registered domain names" which are said to be used to divert web traffic. The Complainant stated that the underlying facts were identical to those in the pending proceedings.

3.12 By Administrative Panel Procedural Order No. 1 of March 25, 2004, the Panel directed that the Complainant be permitted to submit a Re-Amended Complaint incorporating the two additional domain names. The Order:

(1) requested the Center to verify the registration of those additional domain names with the registrar, and

(2) stated that the Respondent would have ten calendar days from the date of the registrar's verification to file a Response to the Re-Amended Complaint, and

(3) extended the Panel's Decision date to April 20, 2004.

3.13 On March 26, 2004, the Complainant by its attorney filed the Re-Amended Complaint accompanied by Exhibit R.

3.15 On April 2, 2004, the Center sent by email to the Respondent notification that the date for filing a Response to the Re-Amended Complaint was April 12, 2004 (the Panel Order of March 25, 2004, was attached).

No such Response has been filed by the Respondent.

4. Factual Background

4.1 The Complainant is the owner of the PEPSI and MOUNTAIN DEW marks and other trademarks and domain name incorporating those two marks.

4.2 The Complainant says that for more than a century the PEPSI-COLA name and mark (and its shortened version, PEPSI) have been continuously used. The Complainant's brands of soft drinks are currently sold in most countries of the world, including the Bahamas.

4.3 Recognition of the significance of the PEPSI mark is indicated by two earlier WIPO cases which are relied upon in this respect by the Complainant: PepsiCo, Inc., v. Diabetes Home Care, Inc, WIPO Case No. D2001-0174 ("one of the world's most famous" marks) and PepsiCo, Inc. v. "null" aka Alexander Zhavoronkov, WIPO Case No. D2002-0562 (a "universally recognised" mark).

4.4 The PEPSI mark was first used in North Carolina in 1898. The PEPSI brand has been valued at over US$11 billion.

4.5 The Complainant owns over 100 registrations in the United States of America of the PEPSI mark and variants, and has at least a dozen PEPSI-variant marks registered in the Bahamas.

4.6 The Complainants' expenditure on global advertising since 1991, on the PEPSI mark has exceeded US$200 million a year.

4.7 The MOUNTAIN DEW name was first registered by the Hartman Beverage Company of Knoxville, Tennessee and was subsequently acquired by PepsiCo, Inc. in 1964. It has since been marketed continuously for almost 40 years. By the mid-1980's, the sale of Mountain Dew products in countries outside the United States exceeded 9450 million cases. One valuation puts Mountain Dew as the fourth most valuable brand in the United States.

4.8 Numerous Internet domain names for active websites based on the PEPSI and MOUNTAIN DEW marks have been continuously owned and used by the Complainant.

4.9 The Respondent has registered the following domain names which are the subject of the Re-Amended Complaint.

<thepepsichart.com>: registered March 3, 2003;
<pepsimiusic.com>: registered December 10, 2002;
<pepsiearena.com>: registered April 10, 2003;
<pepsisweep.com>: registered August 15, 2003;
<pepsinfl.com>: registered December 18, 2003;
<pepsicoliseum.com>: registered December 15, 2003;
<montaindew.com>: registered December 16, 2002;
<pepsicollection.com>: registered January 15, 2004;
<pepsicareer.com>: registered March 11, 2004
<pepsidownloads.com>: registered March 11, 2004

The last three domain names were therefore registered at the time of or after the date of the Complaint.

5. Parties' Contention

A. Complainant

The Complainant alleges that the disputed domain names should be transferred to it for the following reasons:

(1) The Complainant's Interest

5.1 The Complainant's contentions in relation to its interest in the PEPSI and MOUNTAIN DEW marks have been set out earlier.

(2) Confusingly Similar

5.2 The disputed domain names are nearly identical or are confusingly similar to the Complainant's PEPSI mark, and the addition of common terms such as "chart", "collection", "career" and "download" is of no relevance. The Complainant relies upon a number of previous WIPO decisions in support of its contention:

Sony Kabushiki Kaisha v. Kil Inja, WIPO Case No. D2000-1409 (addition of descriptive word to a world-famous mark does not detract from the overall impression of the famous mark),

America Online, Inc v. Chris Hoffman, WIPO Case No. D2001-1184 (use of short phrases with a well-known mark is still confusingly similar),

Chernow Communications, Inc. v. Jonathan D. Kimball, WIPO Case No. D2000-0119 ("...the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark.")

5.3 In relation to the use of misspelled variations of the PEPSI and MOUNTAIN DEW marks, the Complainant relies upon one of the "typo-squatting" or "typo-piracy" cases: Ultimate Electronics, Inc v. Phayze, Inc., WIPO Case No. D2002-0851.

5.4 Further, the Complainant argues that the unique character of the Pepsi and Mountain Dew marks will lead consumers to readily believe that the Domain Names are related to the Complainant.

(3) Rights or Legitimate Interests

5.5 The Complainant contends that the Respondent cannot demonstrate or establish a legitimate interest in the disputed domain names.

5.6 The Complainant relies first upon the fact that the Respondent registered the Domain Names long after the PEPSI and MOUNTAIN DEW rights were established through extensive use. The Complainant refers to a number of earlier domain name cases including Veuve Clicquot Ponsardin v. The Polygenix Group Co., WIPO Case No. D2000-0163: the world-famous Veuve Clicquot champagne has been known for some 200 years ("Maison Fondée en 1772"). There was no evidence of any relationship between the Complainant and the Respondent which could give rise to any license or permission for the Respondent to use the Veuve Clicquot name.

5.7 Second, since the Complainant's use of the PEPSI and MOUNTAIN DEW names pre-dates the use of the domain names registered by the Respondent, the burden is on the Respondent to establish a legitimate interest in the domain names: PepsiCo, Inc. v. Amilcar Perez Lista, WIPO Case No. D2003-0174: "since the adoption and extensive use by the Complainant of the trademark PEPSI pre-dates the first entry of (the disputed domain names) the burden is on the Respondent to establish the Respondent's rights or legitimate interests...A Respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable..."

5.8 The Complainant contends that the Respondent "cannot demonstrate or establish any such rights or legitimate interests. There is no relation between Complainant and Respondent giving rise to any license, permission or other right by which a Respondent could own or use any domain name incorporating Complainant's PEPSI or MOUNTAIN DEW marks." Instead, says the Complainant, the Respondent has registered and is using the domain names solely for commercial gain. The Complainant says that the Respondent derives a financial benefit from the web traffic that is diverted through the disputed domain names to a search engine and linking portal. The Complainant contends that the registration of the disputed domain names was not for any legitimate non-commercial or fair use purpose.

(4) Registered and Used in Bad Faith

5.9 First, the Complainant contends that the Respondent's bad faith registration and use is established by the fact that the Respondent is using the domain names to divert web traffic to search engines and linking portals which provide links to websites used for gambling, music and movie downloads and tickets for sporting events, none of which are related to the Complainant. These offer a revenue programme that pays domain name owners for diverted traffic 50% of all revenues generated from searches, pop-ups, exit pop-ups and the like.

5.10 Second, the Complainant relies upon the Respondent's "pattern of registering domain names containing the trademark and names of third parties and then using those domain names to direct web traffic to websites from which he derives financial benefit."

The Complainant states that the Respondent has been found to have registered and used domain names in bad faith by at least five administrative panels. The Complainant refers to a number of WIPO and NAF cases in which the Respondent has registered domain names (including "typo" domain names) so as to direct web traffic to websites from which he derives a financial benefit.

Next, the Complainant relies upon the fact that the Respondent owns in excess of 25,000 domain names, many of which are based on third party names and marks, including a number of "typo" domain names. Examples include <newharrypotter.com>, <disneycredit.com>, <citibankdirect.com>, and <saksfifthavenue.com>.

Bad faith is also demonstrated, says the Complainant, by the Respondent's pattern of using multiple addresses for his domain name registrations, including addresses in Hong Kong and the Bahamas.

B. Respondent

No Response has been received from the Respondent who is therefore in default.

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

- that the domain name registered by a Respondent is identical or confusingly similar to a trademark in which the Complainant has rights;

- that the Respondent has no rights or legitimate interests in respect of the domain name; and

- that the domain name has been registered and is being used in bad faith.

In order to succeed the Complainant must establish each of those elements, which are now considered.

A. Identical or Confusingly Similar

Each of the disputed domain names substantially incorporates the primary elements of the Complainant's PEPSI and MOUNTAIN DEW marks.

Saving any explanation or argument from the Respondent, the Panel notes the Complainant's contentions and finds that the Complainant has met the requirements of paragraph 4(a)(i) of the Policy, and that the disputed domain names are confusingly similar to the Complainant's marks.

B. Rights or Legitimate Interests

The Complainant's Re-Amended Complaint sets out a wealth of argument supported by documentation in the exhibits showing the Complainant's use of the PEPSI mark since 1898, and the use of the MOUNTAIN DEW mark by the Complainant for nearly 40 years.

In the absence of a submission of any kind from the Respondent, the Panel is satisfied that the Complainant has sufficiently demonstrated that the Respondent has no rights or legitimate interest in respect of the disputed domain names for the purposes of paragraph 4(a)(ii) of the Policy, and the Panel so finds.

C. Registration and Use in Bad Faith

This is the third and final matter which the Complainant must prove. Paragraph 4(b)(iv) states that evidence of bad faith can be shown where a Respondent attempts to attract for commercial gain Internet users to an on-line location by creating the likelihood of confusion with the Complainant's mark.

Again, the Complainant sets out compelling evidence and argument in support of its contentions that the Respondent's registration and use of the disputed domain names is in bad faith: diverted web traffic used for a financial benefit; a pattern of registering domain names containing the trademarks and marks of third parties; ownership of over 25,000 domain names, many based on third party names and marks; and a pattern of using multiple addresses for domain name registrations, apparently for the purposes of concealing his identity.

Once more, in the absence of any explanation from the Respondent, the Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii) of the Policy, and the Panel finds that the bad faith registration and use has been established.

7. Decision

In accordance with paragraph 4(a) of the Policy the Panel orders that the ten disputed domain names specified in the Re-Amended Complaint be transferred to the Complainant.

Anthony R. Connerty
Sole Panelist

Dated: April 20, 2004