DECISION

Pepsico, Inc. v. Jose Thompson d/b/a Eroster

Claim Number: FA0206000114678

PARTIES

Complainant is Pepsico, Inc., Purchase, NY (“Complainant”) represented by Georges Nahitchevansky, of Fross Zelnick Lehrman & Zissu P.C.  Respondent is Jose Thompson d/b/a Eroster, Decatur, GA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <pepsico.us>, registered with Newdentity.com d/b/a Universal Registration Services.

PANEL

The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 24, 2002; the Forum received a hard copy of the Complaint on June 25, 2002.

On July 1, 2002, Newdentity.com d/b/a Universal Registration Services confirmed by e-mail to the Forum that the domain name <pepsico.us> is registered with Newdentity.com d/b/a Universal Registration Services and that Respondent is the current registrant of the name.  Newdentity.com d/b/a Universal Registration Services has verified that Respondent is bound by the Newdentity.com d/b/a Universal Registration Services registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

On July 1, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 22, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On August 1, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The <pepsico.us> domain name is confusingly similar to Complainant’s PEPSI mark and identical to Complainant’s PEPSICO trade name.

Respondent has no rights or legitimate interests in the <pepsico.us> domain name.

Respondent registered and used the <pepsico.us> domain name in bad faith. 

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is the owner of the world-famous PEPSI mark.  The mark was first used for soft drinks in 1911 as a shortened version of the PEPSI-COLA mark that first denoted Complainant’s soft drinks in 1898. 

Complainant owns numerous world-wide trademark registrations for the PEPSI mark and related logos.  The PEPSI mark is heavily advertised to the general public in international magazines, newspapers, television, radio, out-door signs, and point-of-purchase displays.  As a result of Complainant’s extensive, continuous use of the PEPSI mark to denote its established soft drinks for over ninety-one years, the mark has become famous throughout the world. 

Complainant operates under the PEPSICO trade name, which has been in use since 1965, and owns rights in domain names that contain the trade name (e.g., <pepsico.com> and <pepsicojobs.com>).  Complainant also operates websites located at <pepsi.com>, <pepsiworld.com>, <pepsibusiness.com>, <pepsiretail.com>, <pepsifountain.com> and <pepsivending.com>. 

Respondent registered the <pepsico.us> domain name on April 24, 2002.  Respondent uses the domain name to divert Internet traffic to a website that contains links to beverage and soft drink related websites, among others.  These websites have no connection with Complainant or Complainant’s PEPSI mark.  Also, upon entering the <pepsico.us> website, the Internet user is confronted with pop-up advertisements. 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to “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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations 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.

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) 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) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered or is being used in bad faith.

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

Identical and/or Confusingly Similar

Complainant has established its rights in the PEPSI mark through world-wide trademark registration and continuous use of the mark since 1911.

Respondent’s <pepsico.us> domain name contains Complainant’s entire PEPSI mark with the addition of the “co” suffix, which is a common abbreviation for company.  A generic suffix, such as “co,” does little to detract from the dominating presence of Complainant’s famous PEPSI mark.  Therefore, Respondent’s <pepsico.us> domain name is confusingly similar to Complainant’s PEPSI mark.  See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to Complainant’s federally registered service mark, “Kelson”); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion).

Furthermore, Complainant has conducted a substantial amount of business under the PEPSICO trade name since 1965.  Therefore, Complainant has common law rights in the distinct PEPSICO trade name.  See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law); see also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the Complainant has common law rights in the mark FISHTECH which it has used since 1982).  Respondent’s <pepsico.us> domain name is identical to Complainant’s PEPSICO trade name because top-level domains, such as “.us,” are inconsequential in a Policy ¶  4(a)(i) “identical” analysis.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent did not submit a Response in this proceeding.  Also, Complainant actively protects its valuable PEPSI mark and PEPSICO trade name and has found no evidence of Respondent’s rights or legitimate interests in the <pepsico.us> domain name.  Therefore, due to the lack of an answer to Complainant’s assertions that Respondent has no rights or legitimate interests in the <pepsico.us> domain name, it may be presumed that Respondent has no such rights or legitimate interests in the domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Furthermore, because Respondent failed to submit a Response, the Panel may make all reasonable inferences in favor of Complainant.  See Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent uses the <pepsico.us> domain name as an address for a website that offers links to a variety of beverage and soft drink related websites.  The links have no specific connection to Complainant or Complainant’s PEPSI mark and PEPSICO trade name, but the links are adverse to Complainant’s business since they bear a general relation to Complainant’s products.  Therefore, Respondent is not using the <pepsico.us> domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii).  See N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website).

 

The level of notoriety and fame that Complainant’s PEPSI mark and PEPSICO trade name enjoys, due to Complainant’s popular soft drink products, creates a presumption that no one else could be commonly known by the mark or the trade name.  In fact, Respondent is not referred to as PEPSICO or <pepsico.us> and never received a license or permission by Complainant to use the PEPSICO trade name or PEPSI mark.  Moreover, Respondent does not own any trademarks or service marks that reflect the <pepsico.us> domain name.  Therefore, Respondent has no rights or legitimate interests in the <pepsico.us> domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).  See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).

Respondent’s <pepsico.us> domain name contains pop-up advertisements, which presumably benefit Respondent financially.  Also, Complainant discovered that Respondent derives profit from an affiliate system that pays for web traffic generated to specific websites.  Since Respondent’s <pepsico.us> domain name contains links to websites of entities that are known for providing commissions for click-through traffic, it is reasonable to infer that Respondent profits from use of those links.  Hence, Respondent’s commercial use of Complainant’s PEPSI mark and PEPSICO trade name in the domain name does not comport with Policy ¶ 4(c)(iv).  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied. 

Registration and Use in Bad Faith

Paragraph 4(b) of the Policy provides examples of circumstances that, when present, will satisfy the “bad faith” requirement of Policy ¶ 4(a)(iii).  Policy ¶ 4(b) states, however, that the enumerated examples are provided “without limitation.”  Thus, the Panel is permitted to look outside the scope of Policy ¶ 4(b) to the totality of circumstances in order to make a bad faith determination.  See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the UDRP is not an exhaustive list of bad faith evidence); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

Complainant’s PEPSI mark is internationally famous and is associated with Complainant’s soft drinks world-wide.  It is difficult to imagine that Respondent was unaware of Complainant’s rights in the PEPSI mark and PEPSICO trade name since Respondent uses the domain name to divert Internet traffic to alternate soft drink related websites.  Therefore, Respondent’s registration of the domain name, despite a minimum of constructive notice of Complainant’s rights, represents bad faith registration under Policy ¶ 4(a)(iii).  See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith).

Respondent uses the <pepsico.us> domain name to derive financial gain by way of pop-up advertisements and commissions through affiliate website systems.  The domain name contains Complainant’s entire trade name and is a confusing variation of Complainant’s PEPSI mark.  Therefore, Internet users may be confused as to Complainant’s association with Respondent’s <pepsico.us> website.  Thus, Respondent uses the <pepsico.us> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked the domain name to another website located at <iwin.com>, where Respondent received a portion of the advertising revenue from site by directing Internet traffic to the site; thus, Respondent used a domain name to attract Internet users, for commercial gain).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 

DECISION

Having established all three elements required under the usTLD Policy, the Panel concludes that the requested relief shall be hereby GRANTED.

Accordingly, it is Ordered that the domain name <pepsico.us> be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated: August 7, 2002

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/1363.html