WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

PepsiCo, Inc. v. Charlie Chang

Case No. D2007-0491

 

1. The Parties

The Complainant is PepsiCo, Inc., of New York, United States of America.

The Respondent is Charlie Chang of the Republic of Korea.

 

2. The Domain Name and Registrar

The disputed domain name <dietpepsimax.com> is registered with eNom Inc.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2007. On April 26, 2007, the Center transmitted by email to eNom Inc., a request for registrar verification in connection with the domain name at issue. On April 26, 2007, eNom Inc., transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. 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 27, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was May 17, 2007. The Respondent did not submit a formal response. Accordingly, the Center notified the Respondent’s default on May 24, 2007.

The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on June 6, 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.

The Panel notes that although there were correspondences between the parties relating to the transfer of the domain name at issue, the proceedings were not terminated or suspended.

 

4. Factual Background

4.1 The Complainant is the owner of the PEPSI and PEPSI-COLA marks. The Complainant’s PEPSI brands of soft drinks and soft drink concentrates have been sold for more than a century and are currently sold in virtually all countries in the world.

4.2 The PEPSI trademark is among the most famous marks in the world. The recognition of the PEPSI mark transcends geographical barriers, languages, cultures, and products. The PEPSI and PEPSI-COLA trademarks have also been recognized as being famous in previous UDRP proceedings (see PepsiCo, Inc. v. Diabetes Home Care, Inc. & DHC Servs., WIPO Case No. D2001-0174, the Panel found that the PEPSI mark “is one of the world’s most famous and valuable, a fact the Panel can corroborate with its knowledge ex officio.”; PepsiCo, Inc. v. “null,” aka Alexander Zhavoronkov, WIPO Case No. D2002-0562 (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).

4.3 The PEPSI-COLA mark was used for the first time for soft drinks that were invented by Mr. Caleb Bradham in North Carolina, United States of America in 1898. PEPSI, the shortened version of the PEPSI-COLA mark, was used for the first time for soft drinks in 1911. The PEPSI mark is 92 years old. A valuation of the PEPSI brand and other brands conducted by Business Week and Interbrand, one of the world’s largest branding companies, in 2006 estimated the worth of the PEPSI brand as US$12.690 billion, making it the 22nd most valuable brand in the world. Further, an October 2001 study by AC Nielsen, a leading independent marketing information company, concluded that PEPSI was the number two brand among the billion-dollar brands in the beverage category. Retail sales of PEPSI in 2001 were over US$15 billion. The PEPSI-COLA brand has previously also been ranked No. 2 on the list of the top ten grocery food brands in the United States of America, as compiled by Information Resources, Inc.

4.4 The trademarks PEPSI and PEPSI-COLA and the various logos accompanying those marks that have evolved over the last 100 years have been registered in virtually every country in the world, including the United States of America. In the United States of America alone, the Complainant owns over 100 registrations and applications for Pepsi-variant marks in connection with a wide variety of goods and services.

4.5 The Complainant has also extensively used since 1964 the name and mark DIET PEPSI in connection with a popular low-calorie variant of PEPSI with no sugar. DIET PEPSI and variations of DIET PEPSI with different flavors, such as wild cherry, vanilla and lime, have been sold and promoted extensively in the United States of America and elsewhere. The Complainant maintains a web site at “www.dietpepsi.com” which provides information concerning its DIET PEPSI products.

4.6 The Complainant has also promoted and sold since 1993 a popular low-calorie, sugar-free cola as an alternative to PEPSI and DIET PEPSI known as PEPSI MAX. The Complainant’s PEPSI MAX product has been sold throughout Europe and elsewhere around the world. As with the Complainant’s DIET PEPSI products, the Complainant has likewise sold variants of PEPSI MAX with different flavors, such as PEPSI MAX TWIST, PEPSI MAX PUNCH and PEPSI MAX CAPPUCINO.

4.7 The Complainant owns several registrations and applications for its DIET PEPSI and PEPSI MAX marks in a number of countries throughout the world, including in the United States of America, Canada, South Korea and Europe.

4.8 The Complainant carries on an intensive global advertising campaign with respect to its products in the form of advertisements in international magazines, newspapers, television, radio, outdoor signs, point-of-purchase displays, etc., and through sponsorship of major cultural and sporting events. 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 US$200 million annually.

4.9 The Complainant has continuously owned and used numerous Internet domain names for active websites, which are formatives of its PEPSI mark, including, for example, <pepsi.com>, <pepsicola.com>, <pepsico.com>, <pepsismash.com>, <pepsico.com>, <pepsiworld.com>, <pepsibusiness.com>, <pepsiretail.com>, <pepsifountain.com>, <pepsivending.com>, and <pepsicojobs.com>. The Complainant also owns and uses numerous domain names featuring its beverage product names for active web sites, including, for example the domain names <dietpepsi.com>, <pepsione.com>, <pepsiblue.com>, and <pepsitwist.com>, as well as country specific web sites such as, by way of example, “www.pepsicola.co.kr”, “www.pepsi.ca”, “www.pepsi.co.uk”, and “www.pepsimax.br”.

4.10 On or about February 22, 2007, the Complainant announced that it was planning to launch in the United States of America in June 2007, a new low calorie energy drink called DIET PEPSI MAX. in or around that time, the Complainant also filed a trademark application for the mark DIET PEPSI MAX in the United States. On or about March 5, 2007, Mike Morgan registered the domain name and shortly thereafter, purported to transfer the registration to the Respondent. The Complainant alleges that Charlie Chang is an alter ego of Mike Morgan of Newfoundland, Canada.

4.11 When an Internet user types into a browser the address of the domain name, the user is connected to a click through search engine and web portal site which produces a number of links including links that use the Complainant’s marks and the Complainant’s main competitor’s marks. The user also receives a variety of “pop-up” and “popunder” advertising. The links which reproduce the Complainant’s marks do not resolve to the Complainant’s websites but instead directs the user to web pages that offer goods and services that are unrelated to the Complainant.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

5.1 The Respondent’s <dietpepsimax.com> domain name is identical or confusingly similar to the Complainant’s PEPSI, DIET PEPSI, PEPSI MAX and DIET PEPSI MAX marks.

5.1.2 The Respondent has no rights or legitimate interests in respect of the domain name. In support thereof, the Complainant relies on the following factors:

(a) The Respondent registered the domain name long after the Complainant had established rights in its PEPSI, DIET PEPSI and PEPSI MAX marks through extensive use;

(b) The Respondent only registered the domain name after the Complainant had publicly announced that it was launching the DIET PEPSI MAX product;

(c) There is no relationship between the Complainant and the Respondent giving rise to any licence, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant’s PEPSI, DIET PEPSI, DIET PEPSI MAX and PEPSI MAX marks;

(d) The domain name is not a name or a nick name of the Respondent, nor is it in anyway identified with or related to any rights or legitimate interests of the Respondent.

(e) The domain name was registered and is being used solely for commercial gain. The Respondent appears to be deriving financial benefit from the diversion of web traffic through the domain name.

5.1.3 The domain name was registered and is being used in bad faith. In this regard, the Complainant relies on the following circumstances:

(a) The Respondent is using the domain name in bad faith for commercial gain from the resulting consumer confusion that the domain name is connected with the Complainant;

(b) The domain name wholly incorporates the Complainant’s famous PEPSI, DIET PEPSI and PEPSI MAX marks long after those marks attained fame;

(c) The Respondent also registered the domain name shortly after it was announced that the Complainant was planning to launch its DIET PEPSI MAX product in June 2007;

(d) The Respondent had targeted the Complainant due to the notoriety of the Complainant’s marks and in order to capitalize on the Complainant’s goodwill;

(e) The Respondent appears to seek to profit from the domain name by diverting web traffic to a search engine and linking portal for traffic. The Respondent has no intentions of using the Complainant’s marks in respect of a bona fide offering of goods and services;

(f) The Respondent is actually a known cybersquatter, Mike Morgan. The domain name was first registered by Mike Morgan on March 5, 2007, with a postal address in, Canada. Mike Morgan was also listed as the administrative, technical and billing contact for the domain name with the same contact details. Shortly thereafter the name of the registrant was changed to Charlie Chang of the Republic of Korea. Notwithstanding the change, the registration and use of the domain name remained the same as when Mike Morgan had been listed as the registrant. Mike Morgan is, therefore, the true registrant and respondent and he changed the registrant and contact information in order to complicate the Complainant’s efforts to recover the domain name;

(g) Mike Morgan 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 he apparently derives a financial benefit (see SAFE Credit Union v Mike Morgan, WIPO Case No. D2006-0588; Reed Elsevier Inc. v Reed Elsevier Properties,Inc. v Mike Morgan, NAF Claim FA0605000709198; Ellerman Investments Limited, The Ritz Hotel Casino Limited, The Ritz Hotel (London) Limited v Mike Morgan, WIPO Case No. D2005-1321; Citigroup Inc and Diners Club International Ltd v M Morgan aka Mike Morgan, NAF Claim No. FA06090000797565; WNYC Radio v Mike Morgan, WIPO Case No. D2006-1285);

(h) Mike Morgan also has a pattern of registering domain names based on third party marks or names shortly after a mark owner has made a public announcement concerning upcoming marketing campaigns or product launches (see Anheuser-Busch Incorporated v Mike Morgan, NAF Claim No. FA 06080000785495; Opera Software ASA v Mike Morgan, WIPO Case No. D2006-0752).

B. Respondent

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

 

6. Discussion and Findings

In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:

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

(b) that the Respondent has no rights or legitimate interest in respect of the domain name; and

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

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has rights to the trademarks PEPSI, DIET PEPSI, PEPSI MAX and DIET PEPSI MAX. The evidence adduced by the Complainant amply signifies the Complainant’s rights to the same.

The domain name at issue wholly comprises the Complainant’s trademarks and is, therefore, identical to the Complainant’s trademarks. The addition of the “.com” suffix does not serve to distinguish the domain name from the mark (see Freeman v Mighty LLC, WIPO Case No. D2005-0263)

Based on the fact that the Respondent’s domain name is identical to the Complainant’s trademarks, the Panel is satisfied that the first element of paragraph 4(a) of the Policy has been proven by the Complainant.

B. Rights or Legitimate Interests

Since the Complainant’s adoption and use of its trademarks predate the first use of the domain name at issue, the burden is on the Respondent to establish any rights or legitimate interests in the domain name.

The Complainant’s trademarks are recognized worldwide and are neither generic nor descriptive. In such circumstances, the Respondent must provide convincing evidence to disprove the Complainant’s contentions. In Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397, it was held that where a mark “is distinctive and famous to the point where it may not be used by other persons even in fields or industries unrelated to the 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”.

This Panel accepts the contention that there is no relationship between the Complainant and the Respondent giving rise to any licence, permission or other right by which the Respondent could own or use any domain name incorporating the Complainant’s trademarks. This Panel also accepts the contention that the Respondent is not known by the domain name at issue.

The Complainant has also adduced evidence that the domain name is being used solely for commercial gain. In this regard it appears that the Respondent derives a financial benefit by diverting Internet traffic through the domain name to a search engine and linking portal. The use of a world famous trademark, as opposed to an unknown mark, would increase the probability of higher returns to the domain name owner. Hence, the need for the Respondent to convincingly justify its rights or legitimate interests in the domain name issue.

The failure of the Respondent to respond to the Complainant’s contentions and the evidence adduced by the Complainant leads the Panel to find that the Respondent has no rights or legitimate interests in the domain name. The Panel could find no justification, rights or legitimate interests on the part of the Respondent to the words comprising the domain name.

Based on the above circumstances, the Panel is satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.

C. Registered and Used in Bad Faith

The domain name appears to have fully incorporated the Complainant’s trademarks and was acquired long after those marks attained their fame. 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.” (See Veuve Clicquot Ponsardin v. The Polygenix Group Co., WIPO Case No. D2000-0163). In PepsiCo ,Inc.v Zhavoronkov, WIPO Case No. D2002-0562, it was also held that “blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith”.

The fact that the domain name was registered shortly after the announcement that the Complainant was planning to launch its DIET PEPSI MAX product in June 2007, is also evidence of bad faith. It is abundantly clear that the sole reason for the registration of the domain name shortly after the announcement of the product launch was to take undue advantage of the fame and notoriety of the Complainant’s trademark and the publicity surrounding the Complainant’s new product. This is evidence of bad faith in its rawest form. The panels in NBC Universal Inc., Universal City Studios LLLP v Junka Kwon, WIPO Case No. D2004-0764 (<nbcuniversal.com>) and London Metal Exchange Limited v Syed Hussein (<lmeholdings.com>), WIPO Case No. D2000-1388, also found bad faith in similar circumstances where the respondents had registered domain names combining the names of the merged entities shortly after announcements of the mergers were made.

Bad faith registration and use of the domain name is also established by the fact that the domain name is being used to divert Internet traffic to a search engine and linking portal. This Panel agrees that the Respondent’s use of the Complainant’s trademarks to advertise websites that compete with or which are unrelated to the Complainant is not a bona fide offering of goods or services or a legitimate non-commercial or fair use of the domain name, but an act of bad faith (See Societe des Hotels Meridien v. La Porte Holdings, Inc.,WIPO Case No. D2004-0849).

The Complainant has also adduced sufficient evidence for the Panel to make it appear likely that Mike Morgan, using the name of 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 web sites from which Mike Morgan derives a financial benefit (see paragraph 5.1.3(g) above for the list of such cases). Such a pattern is additional evidence supporting a finding of bad faith (See Societe BIC v. LaPorte Holdings, LLC, WIPO Case No. D2005-0342). Regardless of whether the Respondent and Mike Morgan are one and the same, based on the grounds herein it would appear that the domain name was originally registered by Mike Morgan in bad faith. Paragraph 4(b)(i) of the Policy has been interpreted as treating acquisition as the same as registration for the purposes of supporting a finding of bad faith registration (See Ciccone v. Parisi, WIPO Case No. D2000-0847). Moreover, given the notoriety of the Complainant’s trademarks, it would be inconceivable that the Respondent was not aware of the Complainant’s trademarks when he acquired the registration of the domain name.

Accordingly, the Panel is also satisfied that the third element of paragraph 4(a) of the Policy has been satisfactorily proven by the Complainant.

 

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 <dietpepsimax.com> be transferred to the Complainant.

Syed Naqiz Shahabuddin
Sole Panelist

Dated: June 21, 2007