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PepsiCo, Inc. v. Kieran McGarry [2005] GENDND 1471 (5 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PepsiCo, Inc. v. Kieran McGarry

Case No. D2005-0629

1. The Parties

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

The Respondent is Kieran McGarry, Ocean, New Jersey, United States of America.

2. The Domain Name and Registrar

The disputed domain name <pepsiusa.com> (the “Domain Name”) is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2005. On June 16, 2005, the Center transmitted by e-mail to Go Daddy Software a request for registrar verification in connection with the Domain Name at issue. On June 18, 2005, Go Daddy Software transmitted by e-mail to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 23, 2005. In accordance with the Rules, paragraph 5(a), the due date for submitting a response was July 13, 2005. Respondent did not submit any response. Accordingly, the Center notified Respondent of his default on July 18, 2005.

The Center appointed Robert A. Badgley as the Sole Panelist in this matter on July 22, 2005. 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

The evidence submitted by Complainant, and unrefuted by Respondent, indicates that Complainant’s PEPSI mark is one of the most famous marks in the world. The mark has identified Complainant’s cola soft drink for nearly a century, and is registered around the world, including in the United States, where Respondent resides.

As of late 2003, the registrant of the Domain Name was the company Pro-Comm Solutions, which appears to have some relationship with Respondent. At that time, the Domain Name was redirected to the home page of Complainant’s competitor, the Coca-Cola Company, at “www.coca-cola.com”.

The unrebbuted allegations and evidence indicate that the following communications occurred. Complainant sent a cease-and-desist letter to the person it believed was the owner of Pro-Comm Solutions, Russell Cline. Shortly thereafter, in a telephone conversation between Complainant’s representative and Mr. Cline, the latter said that the website actually had been registered by “a friend”. Complainant requested that Mr. Cline’s friend transfer the Domain Name to Complainant. Mr. Cline said that he would respond, but never did so. However, since the Domain Name soon thereafter ceased to resolve to the Coca-Cola site, Complainant did not pursue the matter further.

Complainant subsequently discovered that the Domain Name once again was being used by Respondent to promote one of the products of Complainant’s competitor, Coca-Cola, namely, Diet Coke with Lime. Complainant e-mailed Respondent on May 5, 2005, regarding the renewed use of the Domain Name. Respondent refused to remove the offending content, and again revised the content of the website located at the Domain Name.

As of the date of the filing of the instant Complaint, Respondent was using the Domain Name to promote Diet Coke with Lime and declare that Complainant’s products have a “nasty after-taste”, give him “the diarrhea” and “will make you POOPSIE!” The site also posted the letter from Complainant’s representative asking that Respondent change the content of his website.

Complainant asserts that the fact that Respondent was the actual owner of the Domain Name at the time of Complainant’s first demand letter, discussed above, is confirmed by Respondent’s statement on the website that “we tried the legal thing over a year ago when Pepsi sent me threatening letters”. The Panel finds this unrebutted assertion credible, and therefore treats Pro-Comm Solutions, Russell Cline, and Respondent as interchangeable for purposes of this proceeding.

Since the filing of Complainant’s Complaint, Respondent’s website makes reference to the instant proceeding under the Policy, stating, among other things: “Pepsi Co is at it again, just sent me another e-mail. They filed formal complaints against me and my website.  Demanding I hand over the name to them. Looks like this could get ugly and I’ll be forced to notify media of their actions against my rights to free speech!  It sure is bogus how a big company can come along and just take something I paid for and maintained outta [sic] my own pocket .... but then again, they’d rather spend tens of thousands of dollars on lawyers, than just offer me a few bucks ?  Typical....” 

5. Parties’ Contentions

A. Complainant

Complainant’s allegations are largely captured in the Factual Background section above. Complainant seeks transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy in order to succeed:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Complainant is entitled to the relief it seeks, having established all three elements under the Policy, as discussed below.

A. Identical or Confusingly Similar

The Domain Name is comprised of Complainant’s famous mark, PEPSI, plus the geographically descriptive term “USA”. The Panel finds that the Domain Name is confusingly similar to Complainant’s mark. Numerous prior decisions under the Policy have held that the mere addition of a descriptive term to a mark (which descriptive term does not contain any pejorative content or otherwise tend to suggest disassociation from the mark) does not negate the confusing similarity between the mark and the domain name. See, e.g., C. &A. Veltins GmbH & Co. KG v. Heller Highwater Inc., WIPO Case No. D2004-0466 (domain name comprised of the complainant’s mark plus the geographical suffix USA was confusingly similar to the mark).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Respondent has not filed a response invoking any of the paragraph 4(c) “safe harbors”. As noted above, Respondent’s current website makes reference to free-speech rights, which, under some circumstances, may constitute a “legitimate interest” under the Policy.

The Panel need not, however, address the issue of whether, and under what circumstances, a respondent’s exercise of genuine free speech may defeat a claim under the Policy. This is because the Panel finds it more likely than not that Respondent is not, in fact, genuinely seeking to exercise such rights.

First, Respondent did not bother to respond to the Complaint. Second, Respondent’s initial website contained no criticism of Complainant. It was only after Complainant sent a cease-and-desist letter that such criticism appeared. Third, the Panel finds Respondent’s conduct indicative of a desire to extract payment from Complainant in excess of his out-of-pocket costs. This finding is supported, most pointedly, by Respondent’s current website, which states that Complainant would “rather spend tens of thousands of dollars on lawyers, than just offer me a few bucks”.

The Panel concludes that Respondent’s intention here was not to exercise free speech; it was, rather, to harass Complainant to the point of extracting some type of “nuisance value” -- but profitable -- payoff from Complainant. The Panel rules that Respondent lacks rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

For the same reasons as are discussed above in Section 6.B, the Panel finds that Respondent has registered and is using the Domain Name in bad faith under Policy, paragraph 4(b)(i).

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 <pepsiusa.com> be transferred to Complainant.

Robert A. Badgley
Sole Panelist

Dated: August 5, 2005