WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor
Case No. D2003-0174
1. The Parties
The Complainant is PepsiCo, Inc., 700 Anderson Hill Road, Purchase, NY 10577-1444, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, attn. Georges Nahitchevansky, 866 United Nations Plaza, New York 10017, United States of America.
The Respondent is Amilcar Perez Lista d/b/a Cybersor, Urb. Las Vegas, calle 1, Casa B-10, Cartia La Mar, Edo. Vargas, 1169, Venezuela.
2. The Domain Names and Registrar
The disputed domain names <pepsix.com> and <pepsixxx.com> are registered with eNom, INC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 3, 2003. On March 5, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On March 10, 2003, eNom 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 March 11, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on April 1, 2003.
The Center appointed Dimitris Oekonomidis as the sole panelist in this matter on April 8, 2003. 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 is the owner of the world-famous PEPSI name and mark. For more than a century, the PEPSI-COLA name and mark, or its shortened version, PEPSI, have been continuously used to identify one of the worldís most famous brands of soft drinks and soft drink concentrates. Complainantís PEPSI brand of soft drinks and soft drink concentrates is currently sold throughout the world, including, inter alia, the United States.
The PEPSI trademark is one of the most famous marks in the world. In fact, 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. (Exhibit C: a page from the book The Worldís Greatest Brands, published by MacMillan Business in 1996. Mention in the complaint, as examples, of cases D2001-0174 and D2002-0562 in which the Administrative Panel of the WIPO Arbitration and Mediation Center recognize that the PEPSI mark "is one of the worldís most famous and valuable, a fact the Panel can corroborate with its knowledge ex officio" and that PEPSI is a "world-famous" and "universally recognized" mark).
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 the year 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 Financial World in 1997 estimated the worth of the PEPSI brand as $9.370 billion (U.S.). Further, an October 2001 study by ACNielsen, a marketing information company, concluded that PEPSI was the number two brand among the billion-dollar brands in the beverage category. (Exhibit D: website printout of the respective ACNielsen study). Retail sales of PEPSI in 2001 were over $15 billlion. (Exhibit E: copy of the respective report).
The PEPSI-COLA brand has been ranked No. 2 on the list of the top ten grocery food brands in the United States. (Exhibit F: "Brand Ranking Across 266 Categories in Grocery, Total U.S. Ė Food," for the 52-week period ending November 5, 2000, as compiled by Information Resources, Inc).
The trademark PEPSI and the various logos accompanying said mark that have evolved over the last 100 years have been registered in many countries in the world, including Venezuela where the Respondent is allegedly based. (Exhibit G: Representative examples of Complainantís registrations for the PEPSI mark).
The Complainant carries on an intensive global advertising campaign in respect of 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 the 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 U.S. dollars 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.
The Complainant has continuously owned and used numerous Internet domain names for active websites, which are formatives of its famous PEPSI mark and PEPSICO trade name, including, for example, <pepsi.com>, <pepsico.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 websites, including, for example, <dietpepsi.com>, <pepsione.com>, <pepsiblue.com>, and <pepsitwist.com>. (Exhibit H: representative pages from Complainantís <pepsi.com> website).
5. Partiesí Contentions
The Complainant contends that the Respondent has registered and is using the domain names in bad faith. The Complainant asserts that the disputed domain names are nearly identical to the Complainant's famous PEPSI mark, as they fully incorporate the PEPSI mark. The mere addition of "x," "xxx" and/or ".com" to the PEPSI mark is of no importance. Thus, likelihood of confusion must be presumed. In any case, given the unique character of the world-famous PEPSI mark, consumers, on seeing the domain names, will reasonably believe that they are related to the Complainant. Moreover, consumers who search the Internet for the Complainant by using the Complainantís name and/or marks will likely be directed to the Respondentís domain names, thus creating a likelihood of confusion.
The Complainant contends that the Respondent cannot demonstrate or establish any legitimate interest in the domain names. There exists no relationship between Complainant and Respondent that would give rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant's famous PEPSI mark. The Complainant asserts that the domain names are not, nor could they be contended to be, a nickname of the Respondent or in any other way identified with or related to any legitimate interest of the Respondent. The Respondent is using the domain names to divert web traffic to a website for his own profit. The Respondent has been, and is currently, using the domain names to direct web traffic to a pornographic website and/or other personal/commercial websites. (Exhibit I: Respondentís web pages printouts). Since the PEPSI mark is famous and the Respondent has no rights in such, the only reason why the Respondent could have wanted to register and use a domain name fully incorporating the PEPSI mark was that he knew of the PEPSI mark and wanted to use it in a domain name in order to confuse Internet users and divert them to another website for his own benefit, and not for any legitimate non-commercial or fair use purpose.
According to the Complainant, that the Respondent has registered and is using the domain names in bad faith is established by the Respondentís own actions. The fact that the Respondent has registered without authorization domain names that fully incorporate Complainantís famous PEPSI mark is in and of itself evidence of bad faith.
As the Complainant further asserts, the Respondentís bad faith registration and use is further evidenced by the Respondentís own actions. The Respondent is currently using the domain names to generate and direct web traffic to a pornographic website entitled <800Chicas.com>. (Exhibit I). The website displays numerous sexually explicit photographs, graphic advertisements for female escorts (including prices for the services by the hour, day or night), promotions for various clubs and hotels, and links to various websites providing sexually explicit material. In addition, a web user who is brought to the <800Chicas.com> website through the domain names receives a multitude of pop-up windows advertising other pornographic websites and services. (Exhibit J: copy of a pop-up window). There can be no doubt that the Respondent has registered and is using the domain names for this pornographic website for commercial gain. As the Complainant notes, the Respondent has also occasionally used the <pepsix.com> domain name to divert web traffic to another website owned and operated by the Respondent, known as <caraota.com>. This website has, at various times, offered e-mail and chat services, a dating service and other commercial activities. The <caraota.com> website is currently non-operational. (Exhibit K: copies of prior postings at <caraota.com> obtained through the Internet archive service at <thewaybackmachine.org>).
According to the Complainant, the Respondent is, on information and belief, the owner and/or operator of the <800chicas.com> website. The whois record for the <800chicas.com> domain name lists the Respondent as a contact for the domain name and lists the registrant as Agentes 800, another entity that is owned or controlled by the Respondent. (Exhibit L: whois records for <800chicas.com> and Agentes 800).
The Complainant contends that the Respondent has had a pattern of registering and using in bad faith domain names based on the names and marks of third parties (National Arbitration Forum Case No. FA101000096541). In addition, the Respondent currently owns a number of domain names based on third party trademarks and names, including, by way of example, <grupocisneros.com>, <cofavic.org>, and <fnpb.org>, all of which are being used to generate web traffic to a personal website of the Respondent. (Exhibit M: whois printouts and web page printouts). The Respondent is known to traffic and speculate in domain names. For instance, the Respondent has posted a listing at <www.800-tv.com> advertising the sale of that domain name and other "killer domain[s]" owned by the Respondent, and has at various times posted web pages promoting the sale of over 500 domain names. (Exhibit N).
The Complainant asserts that the Respondentís bad faith is also confirmed by the fact that the Respondent was fully aware of the Complainantís rights. The Respondentís addition of the letters "x" or "xxx" to the PEPSI mark, to suggest the universal code for hard-core pornography, was purposeful and clearly meant to take advantage of the notoriety of the PEPSI mark. That the Respondent proceeded with the registration of the domain names, despite being aware of the Complainantís rights in its famous PEPSI mark, conclusively establishes that the Respondent was acting in bad faith.
The fact that the Respondent has targeted the Complainant is clear from the Respondentís own bad-faith conduct and the overwhelming fame of the Complainantís Mark. The Respondent could only have registered domain names identical to the Complainant's Mark in order to capitalize on Complainant's hard-earned and valuable goodwill.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the 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.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances which indicate that the Respondent has registered or 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 the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name; or
(ii) registration of 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 Respondent has engaged in a pattern of such conduct; or
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondentís website or other on-line location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
A. Identical or Confusingly Similar
(Policy, para. 4(a)(i), Rules, paras. 3(b)(viii), (b)(ix)(1))
The domain names at issue, are identical or confusingly similar to the trademark PEPSI, in which the Complainant has rights. The addition of the letters "x" and "xxx" and of the suffix "com", which is the only difference between the domain names <pepsix.com> and <pepsixxx.com> and the trademark PEPSI, is an irrelevant distinction, which does not change the likelihood of confusion.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).
B. Rights or Legitimate Interests
(Policy, para. 4(a)(ii), Rules, para. 3(b)(ix)(2))
Since the adoption and extensive use by the Complainant of the trademark PEPSI predates the first entry of <pepsix.com> and <pepsixxx.com> as domain names, the burden is on the Respondent to establish the Respondent's rights or legitimate interests the Respondent may have or have had in the domain name.
A Respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.
In this case, the Respondent has not conducted any prior business under the names PEPSIX and PEPSIXXX in connection with the bona fide offering of goods and services. It has also not used the domain names in connection with the bona fide offering of goods and services. The Respondent has not been commonly known by the subject domain names either as an individual or a business. It is not authorized by the Complainant to use it. It is not making legitimate non-commercial or fair use of the domain names. The objective of the registration appears to have been to either sell the domain names to the Complainant or to divert persons looking for the Complainantís website for his own commercial gain.
It is apparent that the Respondent registered the domain names <pepsix.com> and <pepsixxx.com> for the purpose of capitalizing on the Complainantís trademark PEPSI and profiting from the global goodwill that the Complainant has built up in its trademark.
These facts support a clear inference that the Respondent does not have a legitimate interest in the subject domain names and the Respondent has done nothing to rebut that inference.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
(Policy, paras. 4(a)(iii), 4(b), Rules, para. 3(b)(ix)(3))
To support bad faith, the Complainant relies on essentially the same facts upon which it relies to establish the other ingredients of its case.
A finding that a respondent does not have a legitimate interests in a domain name which is confusingly similar to the mark of a complainant does not automatically lead to a conclusion of bad faith, but the facts which support the finding generally are relevant to the inquiry.
The context of the registration and use of the subject domain names includes the unique fame of the Complainantís mark, the business activities it has carried on, the Respondentís failure to respond to the Complainantís attempt to make contact.
These facts are evidence from which an inference of bad faith may be made. The Respondent has done nothing to displace the inference.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Administrative Panel concludes that the Complainant has established its case.
The Complainant asks that the contested domain names <pepsix.com> and <pepsixxx.com> be transferred to it. The Administrative Panel so orders.
Dated: April 22, 2003