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PepsiCo, Inc. v. Ali Khan [2004] GENDND 841 (1 June 2004)

1. The Parties

The Complainant is PepsiCo, Inc., New York, New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.

The Respondent is Ali Khan, Bishops University, Sherbrooke, Quebec, Canada.

2. The Domain Name and Registrar

The disputed domain name <pepsistrawberry.com> is registered with InnerWise, Inc. d/b/a ItsYourDomain.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2004. On April 23, 2004, the Center transmitted by email to InnerWise, Inc. d/b/a ItsYourDomain.com a request for registrar verification in connection with the domain name at issue. On April 27, 2004, InnerWise, Inc. d/b/a ItsYourDomain.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 29, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2004.

The Center appointed Paz Soler Masota as the sole panelist in this matter on May 25, 2004. 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.

4. Factual Background

From the Complainant and the various Exhibits to it, the Panel has found the following:

(1) The Complainant is the legitimate owner of the worldwide well-known “PEPSI” mark, along with many other trademarks and domain names incorporating the PEPSI mark. Previous decisions of the panel have also recognized the goodwill associated to the PEPSI mark, among others: PepsiCo., Inc. v. Diabetes Home Care, Inc. & DHC Services., WIPO Case D2001-0174; PepsiCo. Inc. v. “null” aka Alexander Zhavoronkov, WIPO Case D2002-0562; or PepsiCo., Inc. v. Samtech, WIPO Case D2003-1049.

(2) The Complainant is also the legitimate owner of various domain names, for active sites, incorporating the trademark “PEPSI”, including, among others: <pepsi.com>, <wildcherrypepsi.com> and <pepsivanilla.com>.

(3) The Respondent registered the disputed domain name on June 10, 2003, therefore long after the registration of Complainant’s trademarks and domain names.

(4) The Panel has tried unsuccessfully to enter the website operated under the disputed domain name. Nonetheless, the Complainant has provided evidence enough of its contents.

5. Parties’ Contentions

A. Complainant

The Complainant contends the following:

(1) That the disputed domain name <pepsistrawberry.com> is confusingly similar to the trademarks and domain names in which it has rights, as:

(i) the disputed domain name reproduces the well-known trademark PEPSI, being the addition of the generic term “strawberry” not capable of differentiating it from the trademark. Moreover, Complainant owns and uses, among others, several fruit or flavor-related domain names such as <wildcherrypepsi.com> or <pepsivanilla.com>;

(ii) consumers, on seeing the disputed domain name, will thus reasonably believe that it is related to Complainant. Moreover, consumers who search the Internet for Complainant’s product flavors may be directed to the disputed domain name, with the consequent likelihood of confusion.

(2) That the Respondent has no rights or legitimate interests in respect of the domain name, and that it shall not be in a position to demonstrate that it is commonly known by the disputed domain name nor that it is making a legitimate or fair use of the domain name.

(3) That Complainants have not licensed nor permitted the Respondent to use their trademarks or to use them as part of the disputed domain name.

(4) Until recently, Respondent was using the disputed domain name to divert traffic to a commercial pornographic website located at “www1.clubstrawberry.com”, an assertion which Complainant has sustained by providing several printouts of web pages depicted at the cited URL, as long as pop-up advertisements triggered by that site.

(5) Recently, Respondent stopped using the disputed domain name to redirect to the mentioned pornographic site and, instead, he posted a web page depicting Complainant’s logo and PEPSICO name and mark, offering the domain name for sale. Also recently, Respondent has put the disputed domain name for sale to the general public on eBay, all these allegations being properly documented by Complainant.

(6) That the Respondent has, in light of all the abovementioned, registered the disputed domain name to capitalize on Complainant’s hard-earned and valuable goodwill.

And consequently, Complainant requests that the domain name <pepsistrawberry.com> be transferred to it.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, Complainant should show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which it 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.

A. Identical or Confusingly Similar

The disputed domain name contains verbatim the trademark “PEPSI” of the Complainant, with the mere addition of the generic term “strawberry”. The Panel considers that the mentioned addition does not provide the domain name with a distinctive character.

The addition of a generic term to an alien mark is steadily been disregarded by the panel as a sufficient means to destroy the likelihood of confusion, especially if the mark in question is well-known, as it occurs in the case at issue. Among others, see recently PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696: “The mere addition of common terms such as ‘sports’,’basketball’, ‘soccer’, ‘volleyball’, ‘rugby’ and the like to the ‘PEPSI’ mark, does not change the overall impression of the designations as being a domain names connected to the Complainant”.

Additionally here, the inclusion of the term “strawberry” refers to a common ingredient of fruit-flavored beverages. As a matter of fact, the Complainant itself owns and uses domain names such as <wildcherrypepsi.com> and <pepsivanilla.com> to feature beverage products commercialized under the trademark “PEPSI”. Therefore, the combination chosen by Respondent is very likely to be understood by consumers as being a variation of the trademark “PEPSI”, and that enhances the likelihood of confusion with the mentioned trademark.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the registered trademarks of the Complainant, the requirement of the Policy paragraph 4(a)(i) being thus satisfied.

B. Rights or Legitimate Interests

There is no evidence, as Respondent has not contested the Complaint, that it has any right or legitimate interest whatsoever in respect of the disputed domain name, which incorporates the trademarks of the Complainant.

The Complainant, moreover, has alleged that they have not authorized the Respondent to use the trademarks, nor to register the domain name containing them. Therefore, on this point, Complainants prevail.

Additionally, as it shall be discussed below, Complainant has provided enough evidence to demonstrate that Respondent has used the domain name in bad faith, by trading on the goodwill associated to Complainant’s trademarks.

The Panel therefore finds that Respondent has no rights or legitimate interest in the disputed domain name, the requirement of the Policy paragraph 4(a)(ii) being thus satisfied.

C. Registered and Used in Bad Faith

The Panel has carefully analyzed the information and documentation provided by Complainant, and has concluded that the Respondent has registered and used the disputed domain name in bad faith, in ways outlined in the Policy paragraph 4b(i) and (iv).

Firstly, Respondent has intentionally attempted to attract, for commercial gain, internet users to an on-line location offering pornographic contents, by creating a likelihood of confusion with the Complainant’s well-known mark “PEPSI” as to the source, sponsorship, affiliation, or endorsement of the Respondent’s activity under the disputed domain name. Trading on an alien mark to drive traffic to a pornographic website has been consistently considered by the panel as a per se evidence of bad faith, the more likely the confusion of the public the more famous the mark at issue. Among others, see: Bayerische Motoren Werke AG v. RaveClub Berlin, WIPO Case No. D2003-0385 or Reckitt Benckiser (Belgium) S.A./N.V. v. Will Tell, a/k/a J. Sernets, WIPO Case No. DNU2001-0002, being it irrelevant for the panel whether the offer of pornographic material is direct or indirectly executed: V&S Vin&Spirit AB v. Corinne Ducos, WIPO Case No. D2003-0301. Given the famous character of Complainant’s trademark, it is doubtful that the Respondent would not have been aware of the “PEPSI” trademark when registering the disputed domain name. The Respondent would have been better served by registering an alternative domain name that would have been more appropriate for conveying the Respondent’s aims (for example, a domain name connoting sexual content). The fact that the Respondent elected to register a domain name substantially comprising the “PEPSI” trademark indicates that it was a deliberate act to mislead consumers into believing there was a connection with the Complainant.

Secondly, and even though the described use has been apparently stopped, Respondent has put subsequently the disputed domain name for sale, thus further demonstrating his lack of legitimate interest in the disputed domain name: the Respondent has been in a position, for a period of almost a year, to transfer the disputed domain name in consideration for his reasonable out-of-pocket expenses but has failed to do so. Instead, the Respondent has offered to sell the disputed domain name through an auction web site, clearly demonstrating its intention to maximize the revenues arising from the sell of the disputed domain name. The conduct of the Respondent clearly fits that of a cybersquatter, as the panel has manifested in similar cases, see among many others Ferrari –S.p.A. v. Allen Ginsberg, WIPO Case No D2002-0033: “the Respondent’s use of the domain name <maserati.org> as a link to a pornographic website is a tentative to divert internet traffic intended for the Complainant’s website to a pornographic website, and this act is conclusive of bad faith. Under these circumstances, his standing offer to sell the domain name to any third party offering a price that is high enough must also be qualified as amounting to use of the domain name in bad faith. These elements correspond to a pattern of conduct, to a general ‘cyber squatter scheme’ and constitute conclusive evidence that the name has been registered and is being used in bad faith”.

In consideration of all the above, the Panel finds that the conduct of Respondent corresponds to that outlined under Section 4(a)(iii) of the Policy.

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 <pepsistrawberry.com> be transferred to the Complainant.

Paz Soler Masota
Sole Panelist

Dated: June 1, 2004