DECISION

PepsiCo, Inc. v. Bimal Shah

Claim Number: FA0201000103934

PARTIES

Complainant is PepsiCo, Inc., Purchase, NY (“Complainant”) represented by Carla C. Calcagno, of Howrey, Simon, Arnold & White.  Respondent is Bimal Shah, Essex, Great Britain (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <pepsico.info>, registered with 1st Domain.net.

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 18, 2002; the Forum received a hard copy of the Complaint on January 21, 2002.

On January 22, 2002, 1st Domain.net confirmed by e-mail to the Forum that the domain name <pepsico.info> is registered with 1st Domain.net and that Respondent is the current registrant of the name.  1st Domain.net has verified that Respondent is bound by the 1st Domain.net registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On January 22, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 11, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@pepsico.info by e-mail.

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 February 18, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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 makes the following assertions:

The disputed domain name <pepsico.info> is identical to PEPSICO, a registered mark in which Complainant holds rights.  Respondent has no rights or legitimate interests in respect of the disputed domain name.  Respondent registered and used the disputed domain name in bad faith.

B. Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant is a famous multi-national company, which engages in the sale and manufacture of soft drink and snack food products throughout the world.  Since 1911, Complainant has continuously used the PEPSI and PEPSI-COLA trademarks in commerce related to its soft drink business.  Complainant has continuously used the trade name PepsiCo, Inc., in connection with its soft drink and snack food business since 1965.

Complainant registered the PEPSI trademark on the Principal Register of the United States Patent and Trademark Office as Registration No. 824,150 on February 14, 1967.  Complainant also holds registered trademarks in PEPSICO in the United Kingdom, Germany, Spain, and Japan, dating back as early as 1967.  Complainant registered the PEPSICO mark in the U.K. on May 19, 1972, as Registration No. 992,395.

Complainant sells three of the top ten soft drinks in the U.S. and accounts for about one-third of the $58 billion soft drink market.  In 1999, Complainant and its subsidiaries generated over $20 billion in total net sales.  Complainant has expended hundreds of millions of dollars in the advertisement and promotion of its products, creating substantial goodwill in its marks.

Respondent registered the disputed domain name on September 12, 2001, and has used the domain name to redirect Internet users to a website with pornographic images.  Respondent also posted a notice on its website stating that the domain name was for sale.

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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

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

Identical to and/or Confusingly Similar

Complainant has established its rights in the PEPSICO mark through registration in Germany, the United Kingdom, Spain, and Japan.  The disputed domain name is identical to Complainant’s mark.  See Chefs Collaborative v. Guest Choice Network, FA 102484 (Nat. Arb. Forum Jan. 16, 2002) (“Respondent’s <chefscollaborative.info> domain name is identical to Complainant’s [CHEFS COLLABORATIVE ] mark because it incorporates the entirety of Complainant's mark and merely adds the top-level domain ‘.info’”); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark).

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

Rights to or Legitimate Interests

Complainant has established its rights to and interests in the PEPSICO mark.  Because Respondent has not submitted a Response in this matter, the Panel may presume Respondent has no such rights or interests in the disputed 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).

Respondent’s use of the disputed domain name, which is identical to Complainant’s mark, to host pornographic material cannot be deemed a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use).

No evidence suggests that Respondent is commonly known by “pepsico” or “pepsico.info” pursuant to Policy ¶ 4(c)(ii); Respondent is only known to this Panel as Bimal Shah.  See 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); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well established use of the mark).

Further, Respondent’s apparent willingness to transfer the domain name for an unnamed price also suggests it has no rights or interests in the name.  See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name).

The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name and that Policy ¶ 4(a)(ii) has thus been satisfied.

Registration and Use in Bad Faith

Complainant urges that Respondent acted in bad faith in registering and using the disputed domain name as shown here.  Respondent’s posted offer to sell the disputed domain name permits the inference that Respondent acted in bad faith in registering and using the disputed domain name pursuant to Policy ¶ 4(b)(i).  It is insignificant that Respondent did not name a specific price for the domain name since it is apparent Respondent’s intent from the outset was to sell the domain name.  See Educational Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that a general offer of sale combined with no legitimate use of the domain name constitutes registration and use in bad faith); see also VARTEC TELECOM, INC. v. Jim Olenbush, D2000-1092 (WIPO Sept. 28, 2000) (finding bad faith registration where it was apparent from the general e-mail Respondent sent to the Complainant, in which it offered the domain name for sale, that it registered the domain in order to sell it for far more than it paid).

Further, Respondent’s use of a domain name that is identical to Complainant’s PEPSICO mark in order to display pornographic images also suggests bad faith registration and use.  See Brown & Bigelow, Inc. v. Rodela, supra, (finding that use of another’s well-known mark to provide a link to a pornographic site is evidence of bad faith registration and use); see also MatchNet plc. v. MAC Trading, supra, (finding that the association of a confusingly similar domain name with a pornographic website can constitute bad faith).

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

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief should be hereby granted.

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

Hon. Carolyn Marks Johnson, Panelist

Dated: March 4, 2002.

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