WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PepsiCo, Inc. v. Peter Chen
Case No. D2003-0943
1. The Parties
The Complainant is PepsiCo, Inc., of New York, United States of America, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America.
The Respondent is Peter Chen, of Taipei, Taiwan, Province of China.
2. The Domain Name and Registrar
The disputed domain name <pepsicola.net> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 26, 2003. On November 27, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. No response was received from the registrar. Thus, a search of WHOIS database was conducted and a printout of the particulars of the Respondent was taken. The said printout is a part of these proceedings. The contact details for the administrative, billing, and technical contact are contained in the said printout. On verification of the complaint, it was found that the name of the Respondent given in the complaint was different from that contained in the record of the registrar. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 4/5, 2003. The Center verified that the Complaint together with the amendment to 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 December 9, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was December 29, 2003. The Respondent was informed that if his response was not received by that date, he would be considered in default. The Center would still appoint an Administrative Panel to review the facts of the dispute and to decide the case. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on January 7, 2004.
The Center appointed Dr. Vinod K. Agarwal as the Sole Panelist in this matter on January 30, 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 Complaint and the various annexures to it, the Administrative Panel has found the following facts:
The Complainant is the owner of the world famous PEPSI and PEPSI-COLA names and marks. These names and marks are universally recognized. The PEPSI-COLA mark was used for the first time for soft drinks in North Carolina, U.S.A. in 1898. The name and mark PEPSI-COLA and its shortened version PEPSI, have been in use worldwide for about a century in respect of famous brands of soft drinks and soft drink concentrates. The Complainantís trademark PEPSI-COLA and the various logos accompanying the mark are registered in a large number of countries, including United States of America and Taiwan, for soft drinks, syrups, concentrates and other beverages. The Complainant is also the owner of the domain names <pepsi.com>, <pepsicola.com>, <pepsico.com>, <pepsiworld.com>, <pepsibusiness.com>, <pepsifountain.com>, <pepsiretain.com>, etc.
Respondentís Identity and Activities
The Respondent did not reply to the Complainantís contentions. Hence, the Respondentís activities are not known.
5. Parties Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to this dispute.
In relation to element (i), the Complainant contends that it is the owner of the registered trademark PEPSI-COLA in respect of soft drinks, syrups, beverages and soft drink concentrates. The Complainant holds a number of domain names incorporating the mark PEPSI-COLA. Domain names <pepsi.com>, <pepsicola.com>, <pepsico.com>, <pepsiworld.com>, <pepsibusiness.com>, <pepsifountain.com>, <pepsiretain.com>, etc. are in use as websites providing information relating to the Complainantís organization. The registration of the domain name <pepsicola.net> by the Respondent is only a "typosquatting." The deletion of the hyphen between the words "pepsi" and "cola" will not make the domain name different in any manner whatsoever from the trademark PEPSI-COLA of the Complainant. Thus, the domain name <pepsicola.net> is substantially similar or identical to the trademark owned by the Complainant.
In relation to element (ii), the Complainant contends that the Respondent (as an individual, business, or other organization) has not been commonly known by the domain name <pepsicola.net> as the Respondent is known as "Peter Chen." Further that the Respondent is not making a legitimate or fair use of the said domain name for offering goods and services. The Respondent registered the domain name for the sole purpose of earning the profit by selling the domain name and misleading the customers of the Complainant.
Regarding the element at (iii), the Complainant contends that the main object of registering the domain name <pepsicola.net> by the Respondent is to earn profit by selling it and to mislead the general public and the customers of the Complainant. On the date of filing the complaint with the Center, that is, November 26, 2003, the disputed domain name was registered in the name of Louis Chang, of Taipei, Taiwan. After the Complaint was filed with the registrar, on November 28, 2003, the name of the registrant was changed to Peter Chan, with a different contact address but also of Taipei, Taiwan. This itself shows the mala fide intention and bad faith of the Respondent.
The Respondent did not reply to the Complainantís contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The domain name is 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 name; and
(iii) The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The present dispute pertains to the domain name <pepsicola.net>. The Complainant is the registered owner of the trademark PEPSI-COLA in many countries, including the United States of America and Taiwan. The said trademark PEPSI-COLA has been used in the domain name of the Respondent. The Respondent has only omitted or deleted hyphen between the words PEPSI and COLA. The deletion of a hyphen in the domain name does nothing to distinguish it from the name and the trademark of the Complainant. This is a case of "typosqatting." A similar view has been taken in an earlier decision in the case of Ritz-Carlton Hotel Co. v. Club Car Executive, WIPO Case D2000-0611. The domain name <pepsicola.net> indicates a relationship between the Complainantís trademark and the domain name in question.
In various decisions, the Administrative Panels have held that though an attempt has been made to change the trademarks by prefixing "www" in the domain names, in fact they remain substantially similar or identical to the mark and cannot be allowed. See America Media Operations, Inc. v. Erik Simons, Case No. AF Ė 0134.
There is no doubt that the domain name is confusingly similar to the trademark of the Complainant. Addition of www or deletion of hyphen does not change the mark. The Administrative Panel finds that the domain name is confusingly similar to the registered trademark of the Complainant.
B. Rights or Legitimate Interests
According to Paragraph 4(c) of the Policy, the Respondent may demonstrate its rights to or legitimate interest in the domain name by proving any of the following circumstances:
(i) before any notice to the Respondent of the dispute, the Respondentís 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) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) The Respondent is making a legitimate non-commercial 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.
The Respondent has not filed any response in this case. Based on the default and the evidence in the Complaint, it is presumed that the above circumstances do not exist in this case and that the Respondent has no rights or legitimate interests in the disputed domain name. See also Pavillion Agency Inc. et al. v. Greenhouse Agency Ltd. et al., WIPO Case No. D2000-1221. PEPSI-COLA is the registered trademark of the Complainant. It is evident that the Respondent can have no legitimate interest in the domain name. Further, in view of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for or use the domain name incorporating said trademark and that nobody would use the word PEPSI-COLA unless seeking to create an impression of an association with the Complainant, the Administrative Panel finds that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of the domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the 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 it has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its 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 Respondentís website or location or of a product or service on its website or location.
The contention of the Complainant is that the present case is covered by the first circumstance. The Complainant has furnished evidence of the fact that the Respondent has advertised on his site as a "showcase" that the domain name in question <pepsicola.net> is available for sale and has invited offers for the same. Also, the Respondent has so far not activated the site. The Administrative Panels have held in Telstra Corporation Limited v. Nuclear Marshmallow, WIPO Case No. D2000-0003 and in a number of other cases, that in some cases "inaction" may constitute bad faith use of the domain name. Further, in the case of General Electric Company v. Fisher Zvieli a/k/a Zvieli Fisher, WIPO Case No. D2000-0377, the Administrative Panel has held that the "typosquatting" constitutes bad faith registration and use. Also, the Respondent has advertised on his site that the domain name in question is available for sale and has invited offers for the same.
When the Complaint was communicated to the Respondent, he had sent an e mail to the Center on December 11, 2003 informing that, "I will cooperate and give up the domain. You can get the domain." When the notification of default was sent to the Respondent, he once again stated through his e mail dated January 10, 2004 to, "please tke the domain way."
This and other information submitted by the Complainant leads to the presumption that the said domain name was registered and used by the Respondent in bad faith. The Administrative Panel agrees with the said contention of the Complainant and concludes that the registration of the domain name amounts to the registration and use of the domain name in bad faith.
In light of the forgoing findings, namely, that the domain name is confusingly similar to the trademark or service mark in which the Complainant has a right, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name was registered in bad faith and is being used in bad faith, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Administrative Panel orders that the domain name <pepsicola.net> be transferred to the Complainant.
V. K. Agarwal
Dated: February 9, 2004