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PepsiCo, Inc., v. Forum LLC [2005] GENDND 1628 (13 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PepsiCo, Inc., v. Forum LLC

Case No. D2005-0737

1. The Parties

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

The Respondent is Forum LLC, Roseau, Dominica.

2. The Domain Name and Registrar

The disputed domain name <pepsitunes.com> is registered with Fabulous.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2005. On July 13, 2005, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On July 14, 2005, Fabulous.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 July 26, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 15, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2005.

The Center appointed Pavan Duggal as the sole panelist in this matter on August 30, 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 Complainant in this administrative proceeding is “PepsiCo, Inc., Purchase, New York, United States of America”. The dispute in the present complaint is concerned with the registration of the domain name <pepsitunes.com>.

The world famous mark PEPSI is owned by the Complainant. For more than a century, since 1911, the PEPSI-COLA name and mark, and its shortened version, PEPSI, have been continuously used to identify one of the world’s famous brands of soft drinks and soft drink concentrates. Complainant’s PEPSI brands of soft drinks and soft drink concentrates are currently sold in many countries of the world, including the United States, Australia, and the United Kingdom. The mark PEPSI has since then been used exclusively by the Complainant. The trademarks PEPSI and PEPSI-COLA and the various logos accompanying those marks that have evolved over the last 100 years have been registered in virtually every country of the world including the United States.

The Respondent is using the domain name <pepsitunes.com> for running a website that includes sponsored links for a variety of products and services including musical concerts. The said Domain Name also triggers pop-up advertisements.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions in brief are as follows:

The Complainant has filed its Complaint on the basis of its use, registration and ownership of the PEPSI mark and numerous other trademarks and domain names incorporating the PEPSI mark.

It is contended by the Complainant that the trademarks PEPSI and PEPSI-COLA and the various logos accompanying those marks that have evolved over the last 100 years have been registered in virtually every country in the world. In the United States alone, Complainant owns over 100 registrations and applications for PEPSI-variant marks in connection with a wide variety of goods and services. The Complainant has continuously owned and used many Internet domain names for active websites, which are derivatives of its famous PEPSI mark, including, for example, <pepsi.com>, <pepsico.com>, <pepsimusic.com>, <pepsimusica.com>, <pepsismash.com>, <pepsiworld.com>, <pepsibusiness.com>, and <pepsicojobs.com>.

It has been contended by the Complainant that the Respondent’s Domain Name is nearly identical or confusingly similar to Complainant’s PEPSI mark, as it fully incorporates the PEPSI mark. It is further averred that the consumers who search the Internet for Complainant by using Complainant’s name and marks may be directed to the domain name <pepsitunes.com>, creating a likelihood of confusion.

The Complainant has also contended that the Respondent has no legitimate interests in the Domain Name. There is no relationship between the Complainant and the Respondent. Complainant has not licensed a right for the Respondent to use its famous PEPSI mark, and no other permission or consent has been granted to the Respondent to use that mark. In addition, Respondent appears to have registered and is using the Domain Name solely for commercial gain. It is further averred that the Respondent derives a financial benefit from the web traffic that is diverted through the Domain Name.

It is further contended by the Complainant that the Respondent also has registered and is using the Domain Name in bad faith. Respondent’s bad faith registration and use is established by the fact that the Respondent has sought to profit in bad faith from the Domain Name. It is also submitted that the Respondent’s bad faith is confirmed by its pattern of registering domain names containing the trademarks or mistyped version of the trademarks of third parties and then using those domain names to direct web traffic to web sites from which it appears to derive a financial benefit.

It has been stated that no other legal proceedings have been commenced or terminated in connection with or relating to the Domain Name that is subject of the Complaint.

B. Respondent

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

6. Discussion and Findings

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 rights or legitimate interests in respect of the Domain Name; and

(3) that the Domain Name has been registered and used in bad faith.

A. Identical or Confusingly Similar

The Panel has gone through the various documents filed by the Complainant along with the Complaint and has noted the representative examples of the Complainant’s registrations for the PEPSI mark, as detailed in Exhibit I. These certificates show that the Complainant holds rights in the mark PEPSI and indeed, the PEPSI trademark and brand has been recognized as being famous. The Panel also notes the comments of the distinguished panelist in PepsiCo, Inc. v. Diabetes Home Care, Inc. & DHC Services, WIPO Case No. D2001-0174, wherein the panel found that the PEPSI mark “is one of the world’s most famous and valuable, a fact the Panel can corroborate with its knowledge ex officio.” Id.; See also, e.g., PepsiCo, Inc. v. “null,”aka Alexander Zhavoronkov, WIPO Case No. D2002-0562 at paragraphs 6.12, 6.13, 6.15 (PEPSI is a “world-famous” and “universally recognized” mark). The continuous use of the trademark PEPSI by the Complainant over the last 100 years to date and the Complainant’s continuous ownership and usage of many Internet domain names for active websites, which are derivatives of its famous PEPSI mark, including, for example, <pepsi.com>, <pepsico.com>, <pepsimusic.com>, <pepsimusica.com>, <pepsismash.com>, <pepsiworld.com>, <pepsibusiness.com>, and <pepsicojobs.com> clearly show that the Complainant has rights and legitimate interests in the mark PEPSI.

The Panel finds that the Respondent’s Domain Name is nearly identical or confusingly similar to the Complainant’s PEPSI mark, as it fully incorporates the PEPSI mark. The mere addition of a common term or phrase such as “tunes” to the PEPSI mark is of no import or significance. See, e.g., Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Kil Inja, WIPO Case D2000-1409 (addition of ordinary descriptive word as prefix or suffix to a world-famous mark such as SONY does not detract from the overall impression of the dominant part of the name, the famous mark); America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184 (use of short phrases with well-known mark still found confusingly similar to that mark).

The Panel further concludes that the domain name <pepsitunes.com> is confusingly similar to the Complainant’s mark PEPSI. The Panel agrees with the contention of the Complainant that given the unique character of the world-famous PEPSI mark, consumers, on seeing the domain name <pepsitunes.com>, will reasonably believe that it is related to the Complainant. Indeed, consumers who search the Internet for Complainant by using Complainant’s name and marks may be directed to the Domain Name, creating a likelihood of confusion. This is especially likely given Complainant’s many activities, advertisements, and promotions that include music, including its recent iTunes promotion.

For these reasons, the Panel finds that the Domain Name is identical and, at the very least, confusingly similar, to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

There is nothing on the record to show that the Respondent has any rights or legitimate interests in respect of the domain name <pepsitunes.com>. This is further evident from the fact that the Domain Name resolves to a site that includes sponsored links for a variety of products and services, including musical concerts, unrelated to Pepsi. The Domain Name also triggers pop-up advertisements. It is clear that the site is being used to generate revenue and direct Internet traffic. In addition, the Respondent has not been granted any license by the Complainant to use its name “Pepsi” nor is the Respondent related in any way to the Complainant company in any business relationship of any kind whatsoever. No other permission or consent has been granted to the Respondent for use of its famous PEPSI mark or the Domain Name in question.

There appears to be no bona fide offering of goods or services being carried out by use of the disputed Domain Name. Furthermore, the Respondent is not commonly known by the concerned Domain Name unlike the Complainant who has made a name for itself with its trademark PEPSI.

Since the Complainant’s adoption and extensive use of the PEPSI mark for nearly a century predates the first use of the Domain Name, the burden is on Respondent to establish its rights or legitimate interests in the Domain Name. See PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174. However, where, as here, the Complainant’s PEPSI mark is so well-known and recognized, there can be no rights or legitimate use by Respondent. See Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397 (“given that Complainant’s trademark is distinctive and famous to the point where it may not be used by other persons even in fields or industries unrelated to Complainant’s activities, one would be hard pressed to find a person who may show a right or legitimate interest in a domain name containing Complainant’s trademark”).

It was held in Ford Motor Company v. International Newcastle, WIPO Case No. DBIZ2002-0185, that where the complainant asserts that the respondent has no rights or legitimate interests and where the respondent fails to contest such supported assertions, the panel is entitled to infer that respondent has no such rights or interests. It had further cited the cases 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, as authorities to support the same.

In Cancer Treatment Centers of America, Inc. (CTCA) v. Henry Chan, WIPO Case No. D2003-0611, also it was held that once lack of legitimate rights or interests has been alleged by a complainant, the respondent is obliged to adequately address this issue. It was also held that this finding is supported by various means which are available to a respondent under the Policy to show legitimate rights or interests, on a balance of probabilities. The panel in that case relied on MatchNet plc. v. MAC Trading, WIPO Case No. D2000-0205, wherein: “The Panel, as permitted by paragraph 14(b) of the Rules, draws the inference from the Respondent’s failure to respond to this administrative proceeding, that the Complainant is correct in its assertion that the Respondent has no rights or legitimate interest in the domain name” and finds that the Complainant has established prima facie that the Respondent lacks rights or legitimate interests and therefore has successfully met its second burden, under Policy, paragraph 4(a)(ii). ”

Thus, on the basis of the material available on the record, the Panel comes to the conclusion that the Respondent has no rights or legitimate interests in respect of the domain name <pepsitunes.com>.

C. Registered and Used in Bad Faith

From a perusal of the documentation on the record of the case, it is apparent that the Respondent appears to have registered and is using the Domain Name solely for commercial gain. Respondent derives a financial benefit from the web traffic that is diverted through the Domain Name. The Respondent’s registrar “specializes in generating . . . revenue from the domain traffic through a variety of pay per click (PPC) and CPA Affiliate Programs and the web traffic is diverted through the Domain Name to a search engine and linking portal operated by hitfarm.com. (Domain Name servers are ns1.hitfarm.com and ns2.hitfarm.com).” As noted in a prior UDRP decision, hitfarm.com appears to be a pay-for-traffic web engine that pays compensation to domain name owners for pop-up ads. See Volvo Trademark Holding AB v. Michele Dinoia, WIPO Case No. D2004-0911. Moreover, the website located at the Domain Name offers “Sponsored Results,” as detailed in Exhibit M, which suggests that “Respondent receives compensation for the listings and links that it includes in its search results and/or for hits on the sites Respondent references.” Since the PEPSI mark is famous and Respondent has no rights in it, the only reason why Respondent could have wanted to register and use a domain name incorporating the PEPSI mark was that it knew of this mark and wanted to use it in the Domain Name in order to profit from the traffic generated by the fame of the mark, and not for any legitimate noncommercial or fair use purpose.

The Respondent is in default to respond in this proceeding thereby failing to invoke any element or circumstance which could indicate the good faith nature of his registration and use of the Domain Name.

Further, the Panel finds that the Respondent has been involved in prior UDRP cases. There is no doubt in the Panel’s mind as to Respondent’s continuing pattern of bad faith registration and use, given Respondent’s registration and use of numerous domain names based on third party trademarks. See Hilton Group plc v. Forum LLC, WIPO Case No. D2005-0244 (LADBROKE/ LADBROKES/LADBROKES POKER); The Coryn Group, Inc. v. Forum LLC, National Arbitration Forum (NAF) Case No. FA473209 (APPLE VACATIONS), Sotheby’s v. Forum LLC, NAF Case No. FA409449 (SOTHEBY’S); Woodfield Licensing Corp. v. Forum LLC, NAF Case No. FA405064 (WOODFIELD SUITES); Starwood Hotels & Resorts Worldwide, Inc. v. Forum LLC, NAF Case No. FA406631 (STARWOOD). It is clear that the Respondent is registering domain names including third party trademarks in order to create revenue for itself.

The Panel is, therefore, of the opinion that the registration and use of the disputed Domain Name by the Respondent was made in bad faith. The Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.

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 <pepsitunes.com> be transferred to the Complainant.

Pavan Duggal
Sole Panelist

Dated: September 13, 2005