PepsiCo, Inc. v. Paul Swider

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PepsiCo, Inc. v. Paul J. Swider

Case No. D2002-0561

1. The Parties

The Complainant is PepsiCo, Inc. ("Pepsico"), a corporation organized and existing under the laws of the State of North Carolina, having its principal place of business in Purchase, New York, United States of America.

The Respondent is Paul J. Swider ("Swider"), an individual with an address in Shelburne, Vermont, United States of America.

2. The Domain Name and Registrar

The domain name at issue is: <pepsico.biz>, registered with Domain Bank, Inc., Bethlehem, Pennsylvania, United States of America ("Domain Bank").

3. Procedural History

A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on June 19, 2002, in electronic form. The Center received the hard copy of the Complaint on June 21, 2002. The Center acknowledged receipt of the Complaint on June 19, 2002.

On June 19, 2002, a Request for Registrar Verification was transmitted to Domain Bank. The Request was re-sent on June 24, 2002, June 27, 2002, and June 28, 2002. Domain Bank responded on July 2, 2002, confirming the registration details and its receipt of a copy of the Complaint from Complainant by certified mail. On July 3, 2002, Domain Bank reported to the Center that the domain name at issue was "locked".

A Formal Requirements Compliance Checklist was initiated by the Center on July 3, 2002, and completed July 3, 2002. The Center determined that that the Complainant was in formal compliance with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999 (the "Supplemental Rules"). The Panelist has independently reviewed the Requirements and finds that the Complainant is in formal compliance with the requirements of the Policy, the Rules and the Supplemental Rules.

The Complainant paid the required fees for a single-member Panel on time and in the required amount.

No formal deficiencies having been noted, on July 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding ("the Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, Domain Bank and ICANN), setting a deadline of July 23, 2002, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by email to the email addresses indicated in the Complaint and specified in Whois confirmations received from Domain Bank and by post/courier to the indicated postal addresses. Having reviewed the communications records in the case file, the Panelist finds that the Center has discharged its responsibility under Paragraph 2(a), Rules, "to employ reasonably available means calculated to achieve actual notice to Respondent".

On July 24, 2002, having received no formal Response from the designated Respondent, the Center transmitted to the parties a Notification of Respondent Default.

On July 26, 2002, the Center invited Richard Allan Horning to serve as the

Sole Panelist in Case No. D2002-0561 and transmitted

to him a Statement of Acceptance and Request for Declaration of Impartiality

and Independence. Richard Allan Horning’s Statement of Acceptance

and Declaration of Impartiality and Independence was received on July 29, 2002.

On July 30, 2002, the Center transmitted to the parties a Notification

of Appointment of Administrative Panel and projected decision date, in which

Richard Allan Horning was formally appointed as the Sole Panelist. The projected

decision date was August 13, 2002.

The Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Policy, Rules and the Supplemental Rules.

4. Factual Background

Complainant is the owner of the world-famous PEPSI name and mark and the PEPSICO trade name. The PEPSI-COLA mark was used for the first time for soft drinks in 1898. PEPSI, the shortened version of the PEPSI-COLA mark, was used for the first time for soft drinks in 1911. The PEPSI-COLA name and mark, or its shortened version, PEPSI, have been continuously used since those dates to identify brands of soft drinks and soft drink concentrates. Complainant’s PEPSI brand of soft drinks and soft drink concentrates is currently sold in virtually all countries of the world.

In PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO

Case No. D2001-0174, the PEPSI mark was stated to be "one of the world’s

most famous and valuable, a fact the Panel can corroborate with its knowledge

ex officio." In The World’s Greatest Brands, (MacMillan Business,

1996) PEPSI is listed as one of the most famous trademarks and brands in the

world. A recent valuation of the PEPSI brand and other brands conducted by Financial

World in 1997 estimated the worth of the PEPSI brand as $9.370 billion (U.S.).

The trademark PEPSI and the various logos accompanying said mark that have evolved over the last 100 years have been registered in virtually every country in the world. Complaint, Exhibit F.

Complainant carries on an intensive global advertising campaign in respect of 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. Complainant annually spends in excess of $200 million on worldwide advertising and promotional activities in respect of soft drink beverages sold under PEPSI trademarks.

Complainant has continuously owned and used numerous domain names for active websites, which are formatives of its famous PEPSI marks and PEPSICO trade name, including <pepsi.com>, <pepsico.com>, <pepsiworld.com>, <pepsibusiness.com>, <pepsiretail.com>, <pepsifountain.com>, <pepsivending.com>, and <pepsicojobs.com>. Complainant’s principal website can be found at <www.pepsico.com>. See Complaint, Exhibit G.

Respondent registered the domain name <pepsico.biz> on March 27, 2002 (Complaint, Annex A).

At the time of the submission of the dispute to the Panelist, there was no website associated with the domain name <pepsico.biz>.

5. Parties’ Contentions

A. Complainant

Complainant contends that Respondent has registered a domain name which is nearly identical to and confusingly similar to the service marks and trademarks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.

B. Respondent

Respondent has not contested the allegations of the Complaint.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panelist as to the principles the Panelist is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have experience with similar disputes, to the extent that it would assist the Panelist in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panelist shall look to rules and principles of law set out in decisions of the courts of the United States.

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

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

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

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

The Panelist finds that domain name at issue is either identical or confusingly

similar to the registered trademarks of Complainant. Hewlett-Packard Company

v. Cupcake City, NAF Case No. NAF0002000093562; America Online, Inc.

v. Avrasya Yayincilik Danismanlik Ltd., NAF Case FA0002000093679; Marriott

International, Inc. v. John Marriot, NAF Case No. FA0002000094737; Identigene,

Inc. v. Genetest Laboratories, WIPO Case

No. D2000-1100; Seiko Epson Corporation v. Distribution Purchasing &

Logistics Corp., NAF Case No. FA0003000094219; AT&T Corp. v. CME

Inc., WIPO Case No. D2001-1060; Microsoft

Corporation v. Global Net 2000, Inc, WIPO

Case No. D2000-0554; America Online, Inc. v. East Coast Exotics,

WIPO Case No. D2001-0661; EFG Bank

European Financial Group SA v. Jacob Foundation, WIPO

Case No. D2000-0036; The Chancellor, Masters and Scholars of the University

of Oxford v. DR Seagle t/a Mr. Oxford-University, WIPO

Case No. D2001-0746; The Chancellor, Masters and Scholars of the University

of Oxford v. CQ, WIPO Case No. D2001-0920.

Given the virtual identity between Complainant’s PEPSICO mark and the domain

name at issue likelihood of confusion must be presumed. Chernow Communications,

Inc. v. Jonathan D. Kimball, WIPO Case

No. D2000-0119; Shirmax Retail Ltd. v. CES Marketing Group, Inc.,

eResolution Case No. AF0104.

Courts have recognized that consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or mark. In Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998) the Ninth Circuit stated that "A customer who is unsure about a company’s domain name will often guess that the domain name is also the company’s name….[A] domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base." That expectation would be frustrated were Respondent permitted to take advantage of his cybersquatting.

Complainant has alleged and Respondent has failed to deny that he has no legitimate

interest in respect of the domain name at issue. Alcoholics Anonymous World

Services, Inc. v. Lauren Raymond, WIPO

Case No. D2000-0007; Ronson Plc v. Unimetal Sanayai ve Tic. A.S.,

WIPO Case No. D2000-0011. Respondent is

not commonly known by the domain name at issue, and has not acquired trademark

or service mark rights in the domain name. The Panelist finds that Respondent

has no rights or legitimate interest in the domain name.

The question thus arises whether the domain name at issue has been registered and is being used in bad faith. Paragraph 4(b) of the Policy sets forth "in particular but without limitation" circumstances which "shall be evidence of registration and use of a domain name in bad faith". Those circumstances are:

(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.

PEPSI is widely advertised and known in the United States and internationally.

Under these circumstances it must be presumed that Respondent was aware of the

mark when he registered the <pepsico.biz> domain. "[I]t is not possible

to conceive of a plausible circumstance in which the Respondent could legitimately

use the domain name", and "[i]t is also not possible to conceive of

a plausible situation in which the Respondent would have been unaware of this

fact at the time of registration". Telstra Corporation Ltd. v. Nuclear

Marshmallows, WIPO Case No. D2000-0003;

see also Deutsche Lufthansa A.G. v. Jin Wang Huh, WIPO

Case No. D2001-1226; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation

v. Distribution Purchasing & Logistics Corp., WIPO

Case No. D2000-0464.

Respondent’s registration, without authorization, of a domain name that is

identical to Complainant’s famous PEPSI mark and PEPSICO trade name is in and

of itself evidence of bad faith. Veuve Cliquot Ponsardin, Maison Fondée

en 1772 v. The Polygenix Group Co., WIPO

Case No. D2000-0163; [the use of a domain name which "is so obviously

connected with such a well-known product … by someone with no connection with

the product suggests opportunistic bad faith"] PepsiCo, Inc. v. RaveClub

Berlin, NAF Case No. FA0111000101819 [bad faith may be found where "based

on the fame of Complainant’s PEPSI mark it would be very difficult for Respondent

to show that it had rights and legitimate interests in the disputed domain name

<pepsistuf.com>.

Respondent’s failure to provide correct or operative addresses to Domain Bank,

in connection with his registration of the domain name at issue, creates an

inference of Respondent’s bad faith registration which has not been rebutted.

Deutsche Lufthansa A.G. v. Jin Wang Huh, WIPO

Case No. D2001-1226; Telstra Corporation Ltd. v. Nuclear Marshmallows,

WIPO Case No. D2000-0003.

Prior Panel decisions support the proposition that Respondent’s passive holding

of the domain name registration can amount to "use" in bad faith;

actual affirmative use of the domain name is not required. Policy Paragraphs

4(b)(i)-(iii); Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO

Case No. D2000-0003; see also Deutsche Lufthansa A.G. v. Jin Wang Huh,

WIPO Case No. D2001-1226; McNeil Consumer

Brands Inc. v. Mirweb Solutions, WIPO

Case No. D2000-0612. Respondent has registered and is holding a domain name

corresponding almost exactly to a coined, arbitrary term that has no meaning

apart from Complainant’s products. Registration and passive holding of a domain

name corresponding to a famous, arbitrary trademark that has no meaning apart

from identifying the complainant’s product is evidence of bad faith use of the

domain name. Pharmacia & Upjohn Company v. Moreonline, WIPO

Case No. D2000-0134; August Storck KG v. Tony Mohamed, WIPO

Case No. D2000-0196.

Respondent’s bad faith is also evidenced by Respondent’s attempt to secure payment from Complainant for the return of the domain name. On April 2, 2002, Respondent contacted Complainant’s representative via e-mail and offered to sell the domain name to Complainant for "any offer over $7,500" as "compensation for procurement and transfer costs". Complaint, Exhibit H. Although Respondent claimed that he had registered the domain name for a new portal site called "Peep See Co Dot Biz", and that he was allegedly unaware of Complainant’s use of the PEPSICO trade name, Respondent made it clear that unless a payment was made, Complainant would have to expend "time and effort" in obtaining the return of the domain name.

7. Decision

For all of the foregoing reasons, the Panelist decides that the domain name registered by Respondent is identical or confusingly similar to the trademarks and service marks in which the Complainant has rights, that Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent’s domain name has been registered and is being used in bad faith.

Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panelist requires that the registration of the domain name <pepsico.biz> be transferred to the Complainant.

Richard Allan Horning

Sole Panelist

Dated: August 9, 2002

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