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PepsiCo, Inc. v. LaPorte Holdings, Inc. and Pepsiemployment.com a/k/a Henry Chan [2005] GENDND 198 (31 March 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PepsiCo, Inc. v. LaPorte Holdings, Inc. and Pepsiemployment.com a/k/a Henry Chan

Case No. D2005-0087

1. The Parties

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

The Respondents are LaPorte Holdings, Inc. of Los Angeles, California, United States of America, and Pepsiemployment.com a/k/a Henry Chan of Nassau, Bahamas (“Respondent”).

2. The Domain Names and Registrars

The disputed domain names <freepepsiedge.com>, <pepsibandplugged.com>, <pepsibillionaire.com>, <pepsibillionsweepstakes.com>, <pepsieedge.com>, <pepsiextreme.com>, <pepsimisica.com>, <pepsiplayforabillion.com>, <pepsipledge.com> and <wwwpepsimundo.com> are registered with NameKing.com.

The disputed domain name <pepsiemployment.com>, is registered with iHoldings.com Inc. d/b/a DotRegistrar.com. Collectively, these 11 domain names are referred to herein as the “Domain Names.”

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 26, 2005. On January 26, 2005, the Center transmitted by email to NameKing.com and iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain names at issue. On February 11, 2005, NameKing.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.

On January 26, 2005, iHoldings.com Inc. d/b/a DotRegistrar.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 February 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 6, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 7, 2005.

The Center appointed Douglas M. Isenberg as the sole panelist in this matter on March 17, 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

Complainant states the following:

- Complainant is the owner of the world-famous PEPSI mark. For more than a century, the PEPSI-COLA name and mark, and its shortened version, PEPSI, have been continuously used to identify one of the world’s most famous brands of soft drinks and soft drink concentrates. Complainant’s PEPSI brands of soft drinks and soft drink concentrates are currently sold in virtually all countries of the world, including the United States of America and Bahamas.

- The PEPSI trademark is among the most famous marks in the world. The recognition of the PEPSI mark transcends all geographical barriers, languages, cultures and products. The trademark PEPSI enjoys a strong reputation beyond the soft drinks for which the company is most famous.

- The PEPSI trademark and brand has been recognized as being famous. In support of this statement, Complainant cites PepsiCo, Inc. v. Diabetes Home Care, Inc. & DHC Servs., WIPO Case No. D2001-0174 (the PEPSI mark “is one of the world’s most famous and valuable, a fact the Panel can corroborate with its knowledge ex officio”) and PepsiCo, Inc. v. “null,” aka Alexander Zhavoronkov, WIPO Case No. D2002-0562 (PEPSI is a “world-famous trademark” and a “universally recognized trademark”). Complainant also provided as an exhibit a page from the book The World’s Greatest Brands (MacMillan Business 1997), showing that PEPSI is considered to be one of the most famous trademarks and brands in the world.

- The PEPSI-COLA mark was used for the first time for soft drinks that were invented by Mr. Caleb Bradham in North Carolina, U.S.A. in 1898. PEPSI, the shortened version of the PEPSI-COLA mark, was used for the first time for soft drinks in 1911.

- A valuation of the PEPSI brand and other brands conducted by Business Week and Interbrand, one of the world’s largest branding companies, in 2003, estimated the worth of the PEPSI brand as $11.78 billion, making it the 23rd most valuable-brand in the world.

- An October 2001, study by AC Nielsen, a leading independent marketing information company, concluded that PEPSI was the No. 2 brand among the billion-dollar brands in the beverage category. Retail sales of PEPSI alone in 2001 were over $15 billion.

- The PEPSI brand has been ranked No. 2 on the list of the top ten grocery food brands in the United States, according to data published in 2000 by Information Resources, Inc.

- The trademarks PEPSI and PEPSI-COLA and the various logos accompanying those marks have been registered in virtually every country in the world, including the United States and the Bahamas. In the United States alone, Complainant owns more than 100 registrations and applications for Pepsi-variant marks in connection with a wide variety of goods and services, and in the Bahamas at least a dozen registrations for Pepsi-variant marks, including U.S. Reg. No. 824,151 for PEPSI-COLA, first used in 1898.

- Complainant carries on an intensive global advertising campaign with respect to its products in the form of advertisements in international magazines, newspapers, television, radio, outdoor signs, point-of-purchase displays, etc., and through sponsorship of major cultural and sporting events. The approximate worldwide advertising and promotional expenses incurred by Complainant since 1991, in respect of soft drink beverages sold under trademarks containing PEPSI, including the various device marks, are in excess of $200 million annually. The promotion and exploitation of the PEPSI mark and all related sales, advertising, and promotional activities have generated, and continue to generate, enormous sales of PEPSI products throughout the world.

- Complainant has continuously owned and used numerous domain names for active websites, which are formatives of its famous PEPSI mark, including, for example, <pepsi.com>, <pepsico.com>, <pepsismash.com>, <pepsiworld.com>, <pepsibusiness.com>, <pepsiretail.com>, <pepsifountain.com>, <pepsivending.com> and <pepsicojobs.com>. Complainant also owns and uses numerous domain names featuring its beverage product names for active web sites, including, for example, <dietpepsi.com>, <pepsione.com>, <pepsiblue.com> and <pepsitwist.com>.

5. Parties’ Contentions

A. Complainant

The Complainant contends the following:

- Upon information and belief, respondent LaPorte Holdings, Inc. is an alter ego for Henry Chan, a notorious cybersquatter. In support of this contention, Complainant cites Krome Studios Pty, Ltd. v. LaPorte Holdings, Inc., WIPO Case No. D2004-0707 (“Horoshiy Inc., is in fact the alter ego of an individual called Mr. Henry Chan”); Société des Hôtels Méridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849 (“in reality… LaPorte Holdings, Inc., C/O Nameking, Inc., and Horoshiy, Inc. are three faces of the same person”); and Medco Health Solutions, Inc. v. Horoshyi, Inc., WIPO Case No. D2004-0625 (“the change of ownership information may well have been made in an effort to conceal the real identity of the registrant and to evade the Policy”). Further, Complainant states that, in or about 2003, Henry Chan, upon information and belief, began to transfer his portfolio of some 25,000 plus domain names to other entities such as Horoshiy, Inc. and LaPorte Holdings, Inc. Complainant states that a search of cached records obtained through Markmonitor.com and Dotregistrar.com reveals that Henry Chan was the listed owner of several domain names that were subsequently moved to and are now held in the name of LaPorte Holdings. These include, by way of example, <chuckychees.com>, <disneycredit.com>, <nflfoxsports.com>, <dressupbarbie.com>, <kmartpharmacy.com>, <citibankdirect.com>, <gapincbenifits.com>, <guccijerseys.com>, <discovorychanel.com>, <howardstrern.com>, <blumburg.com> and <abcmorningshow.com>. In further support of its contention that Pepsiemployment.com a/k/a Henry Chan and LaPorte Holdings, Inc., are one and the same Respondent, Complainant notes that all of the Domain Names point to similar-looking landing pages at Domainsponsor.com.

- This is the second time that Complainant has initiated a UDRP proceeding against the Respondent. In 2004, Complaint successfully brought a proceeding against Henry Chan involving a number of domain names based on Complainant’s PEPSI and MOUNTAINDEW trademarks, PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 (<thepepsichart.com>, <pepsimiusic.com>, <pepsiearena.com>, <pepsisweep.com>, <pepsinfl.com>, <pepsicoliseum.com>, <montaindew.com>, <pepsicollection.com>, <pepsicareer.com> and <pepsidownloads.com>).

- The Domain Names are nearly identical or confusingly similar to Complainant’s PEPSI mark, as they fully incorporate the PEPSI mark. The mere addition of common terms or phrases such as “employment,” “career,” “billionaire” and “play for a billion” to the PEPSI mark is of no import.

- Respondent cannot demonstrate or establish any legitimate interest in the Domain Names. Respondent registered the Domain Names long after Complainant had established rights in its PEPSI mark through extensive use. Indeed, Respondent registered many of the Domain Names after Complainant’s first UDRP proceeding against Respondent.

- There is no relationship between Complainant and Respondent giving rise to any license, permission or other right by which Respondent could own or use any domain name incorporating Complainant’s PEPSI mark. The Domain Names are not, nor could they be contended to be, a name or nickname of the Respondent, nor are they in any other way identified with or related to any rights or legitimate interests of the Respondent.

- Respondent has registered and is using the Domain Names solely for commercial gain. Upon information and belief, Respondent derives a financial benefit from the web traffic that is diverted through the Domain Names to a search engine and linking portal operated by Domainsponsor.com. 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 Names to profit from the traffic generated by the fame of the mark, and not for any legitimate noncommercial or fair use purpose.

- Respondent’s bad faith is confirmed by his pattern of registering domain names containing the trademarks and names of third parties and then using those domain names to direct web traffic to web sites from which he derives a financial benefit. In support of this contention, Complainant cites Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584; Société des Hôtels Méridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849; Krome Studios Pty, Ltd. v. LaPorte Holdings, Inc., WIPO Case No. D2004-0707; Lillian Vernon Corp. v. Horoshiy, Inc., WIPO Case No. D2004-0611; Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620; Medco Health Solutions, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0625; InfoSpace, Inc. v. Horoshiy, Inc., NAF Claim No. FA0406000282775; Avery Dennison Corp. v. Horoshiy, Inc., NAF Claim No. FA0406000289048; Citigroup, Inc. v. Horoshiy, Inc., NAF Claim No. FA0406000290633; ADP of North America v. Horoshiy, Inc., NAF Claim No. FA0407000304896; Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584; LTD Commodities LLC v. Henry Chan, NAF Claim No. FA0303000152617; Pioneer Hi-Bred International Inc. v. Henry Chan, NAF Claim No. FA0304000154119; Cancer Treatment Center of America, Inc. (CTCA) v. Henry Chan, WIPO Case No. D2003-0611; and Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031.

B. Respondent

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

6. Discussion and Findings

As an initial matter, the Panel must decide whether all of the Domain Names are registered by a single registrant, as the Rules do not expressly permit a single complaint to be filed against multiple registrants (see paragraph 3(b)(v), which refers to “the Respondent”) (emphasis added)). “However, situations may arise in which multiple domain name holders should be equated with one domain name holder… so that a complaint against more than one domain name holder should be allowed.” Washington Mutual, Inc. v. Phayze Inc., Peter Carrington and Party Night, Inc., WIPO Case No. D2003-0283. Here, given the allegations made by Complainant – that each of the Domain Names contains Complainant’s PEPSI mark, that websites associated with each of the Domain Names are similar, that Complainant has prevailed in a previous UDRP complaint against Henry Chan, and that prior UDRP decisions have found LaPorte Holdings and Henry Chan to be the same entity – combined with the lack of a response in this case, the Panel concludes that LaPorte Holdings, Inc. and Pepsiemployment.com a/k/a Henry Chan are one in the same entity.

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and (iii) the Domain Names have been registered and is being used in bad faith. Policy, Paragraph 4(a).

A. Identical or Confusingly Similar

Given the numerous trademark registrations cited by Complainant^, its use of the PEPSI-COLA mark for 107 years, its use of the PEPSI mark for 94 years, and the significant sums of money Complainant has spent on the PEPSI brand, it is apparent that Complainant has trademark rights in the PEPSI mark. In addition, at least two previous panels have found the PEPSI mark to be famous. PepsiCo, Inc. v. Diabetes Home Care, Inc. & DHC Servs., WIPO Case No. D2001-0174 (<pepsi400.com> and <pepsisouthern500.com>); and PepsiCo, Inc. v. “null,” aka Alexander Zhavoronkov, WIPO Case No. D2002-0562 (<pepsi.biz>).

As to whether the Domain Names are identical or confusingly similar to Complainant’s PEPSI mark, the relevant comparison to be made is with the second-level portion of the Domain Names only (i.e., “freepepsiedge”, “pepsibandplugged”, “pepsibillionaire”, “pepsibillionsweepstakes”, “pepsieedge”, “pepsiextreme”, “pepsimisica”, “pepsiplayforabillion”, “pepsipledge”, “wwwpepsimundo” and “pepsiemployment”), as it is well-established that the top-level domain name (i.e., “.com”) should be disregarded for this purpose. See, e.g., The Forward Association, Inc., v. Enterprises Unlimited, NAF Claim No. FA0008000095491 (“[N]either the beginning of the URL (http://www.), nor the TLD (.com) have any source indicating significance. Those designations are merely devices that every Internet site provider must use as part of its address”); see also United States Patent and Trademark Office’s Trademark Manual of Examination Procedures (3d ed.) § 1215.02 (“neither the beginning of the URL (‘http://www.’) nor the TLD have any source-indicating significance”).

None of the Domain Names is identical to a trademark in which Complainant has rights, as each of the Domain Names consists of the words “pepsi” plus additional word(s) or letters, whereas Complaint has provided evidence only of its rights to marks consisting solely of the word “PEPSI”.

However, Complainant need prove only that the Domain Names are “confusingly similar” to a mark in which Complainant has rights. The addition of additional word(s) or letters is insufficient to avoid confusion, as the cases cited by Complainant correctly conclude. 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 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); and PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033.

Further, in particular reference to the domain name <wwwpepsimundo.com>, the Panel notes that the use of the “www” at the beginning of this domain name actually increases the similarity between the domain name and Complainant’s trademark. See Reuters Limited v. Global Net 2000, Inc, WIPO Case No. D2000-0441 (“The letters ‘www… have no distinguishing capacity in the context of domain names. In fact, in the context of domain names, the letters ‘www’ have the effect of focusing particular attention on the word succeeding them…”).

Further, the Panel agrees with Complainant’s contention that consumers, on seeing the Domain Names, will reasonably believe that they are related to Complainant.

Therefore, Complainant has proven that each of the Domain Names is confusingly similar to Complainant’s PEPSI mark, and Complainant has proven the first of the three elements required by the Policy.

B. Rights or Legitimate Interests

Complainant has stated that there is no relationship between Complainant and Respondent giving rise to any license, permission or other right by which Respondent could own or use any domain name incorporating Complainant’s PEPSI mark. Complainant further observes that Respondent registered the Domain Names long after Complainant had established rights in its PEPSI mark through extensive use and that Respondent registered many of the Domain Names after Complainant’s first UDRP proceeding against Respondent. And, Complainant alleges that where, as here, a complainant’s mark is so well-known and recognized, there can be no legitimate use by a domain name registrant. Guerlain S.A. v. PeiKang, WIPO Case No. D2000-0055; Veuve Clicquot Ponsardin v. The Polygenix Group Co., WIPO Case No. D2000-0163 (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”). See also 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”).

Under the Policy, “a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” “WIPO Overview of WIPO Panel Views on Selected UDRP Questions,” paragraph 2.1, http://arbiter.wipo.int/domains/search/overview/index.html <visited March 29, 2005>.

Accordingly, as a result of Complainant’s obvious rights in the PEPSI mark and the famousness of the PEPSI mark, and without any evidence of Respondent’s rights or legitimate interests in any of the Domain Names, Complainant has proven the second of the three elements required by the Policy.

C. Registered and Used in Bad Faith

Whether a domain name is used in bad faith for purposes of the Policy may be determined by evaluating four factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).

In this case, Complainant has not alleged with specificity in its Complaint which, if any, of these four factors may exist and evidence bad faith. Nor is it apparent that any of the four factors listed in the Policy is applicable to Respondent. However, by its terms, these four factors are not exhaustive, and a panel may consider other issues that it deems relevant to a finding of bad faith.

Here, the following facts are evidence of bad faith:

- Respondent has a pattern of registering domain names containing the trademarks and names of third parties and then using those domain names to direct web traffic to web sites from which he derives a financial benefit. In addition to the case previously filed and won by Complainant, PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033, see Société des Hôtels Méridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849; Krome Studios Pty, Ltd. v. LaPorte Holdings, Inc., WIPO Case No. D2004-0707; Lillian Vernon Corp. v. Horoshiy, Inc., WIPO Case No. D2004-0611; Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620; Medco Health Solutions, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0625; InfoSpace, Inc. v. Horoshiy, Inc., NAF Claim No. FA0406000282775; Avery Dennison Corp. v. Horoshiy, Inc., NAF Claim No. FA0406000289048; Citigroup, Inc. v. Horoshiy, Inc., NAF Claim No. FA0406000290633; ADP of North America v. Horoshiy, Inc., NAF Claim No. FA0407000304896; Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584; LTD Commodities LLC v. Henry Chan, NAF Claim No. FA0303000152617; Pioneer Hi-Bred International Inc. v. Henry Chan, NAF Claim No. FA0304000154119; Cancer Treatment Center of America, Inc. (CTCA) v. Henry Chan, WIPO Case No. D2003-0611; and Royal Bank of Canada v. Henry Chan, WIPO Case No. D2003-0031.

- Respondent has registered more than one domain name confusingly similar to Complainant’s famous PEPSI mark, and did so after losing a prior UDRP proceeding initiated by Complainant.

- The websites associated with the Domain Names – consisting solely of links “for monetization of parked domain names,” according to a webpage from DomainSponsor provided as an exhibit by Complainant – represent a crude but increasingly popular scheme for cybersquatters to earn money from their activities. See PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033 (“using the domain names to divert web traffic to search engines and linking portals… diverted web traffic used for a financial benefit”).

- With respect to the domain name <pepsiemployment.com>, the Whois record is missing essential information, according to an exhibit provided by Complainant. Specifically, the record is missing a name, address, telephone number and facsimile number.¹ See, e.g., Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775 (“[t]he Respondent’s bad faith is further demonstrated by the false contact information he provided to the registrar with which the domain names are registered”).

Collectively, these facts convince the Panel of the existence of bad faith. Therefore, Complainant has proven the third of the three elements required by 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 names <freepepsiedge.com>, <pepsibandplugged.com>, <pepsibillionaire.com>, <pepsibillionsweepstakes.com>, <pepsieedge.com>, <pepsiextreme.com>, <pepsimisica.com>, <pepsiplayforabillion.com>, <pepsipledge.com>, <wwwpepsimundo.com> and <pepsiemployment.com> be transferred to the Complainant.

Douglas M. Isenberg
Sole Panelist

Dated: March 31, 2005