WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

PepsiCo, Inc., v. Samtech

Case No. D2003-1049

 

1. The Parties

The Complainant is PepsiCo, Inc, New York, United States of America. The Complainantís authorized representatives in this proceeding are Fross, Zelnick, Lehrman & Zissu, P.C., New York, United States of America.

The Respondent is Samtech, Riyadh, Saudi Arabia.

 

2. The Domain Name and Registrar

The disputed domain name <yallapepsi.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

 

3. Procedural History

The Complaint was filed electronically with the WIPO Arbitration and Mediation Center (the "Center") on December 30, 2003, and received in hard copy by the Center on January 6, 2004. On January 6, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On January 8, 2004, 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 contact details for the Respondent. 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 January 12, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on February 3, 2004.

The Center appointed Debrett G. Lyons as the sole panelist in this matter on February 6, 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

The Complainant has asserted the following facts, which the Panel finds established:

The Complainant is the owner of the PEPSI COLA and PEPSI trademarks, together with numerous other marks incorporating the word PEPSI. These marks are registered in a wide variety of countries, including the United States of America, Great Britain, India, China, Japan and Saudi Arabia. For example Saudi Arabian trademark Registration No. 291/23 for PEPSI in Class 30 for "coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionary, ices, honey, treacle, yeast, baking powder, salt, mustard, vinegar, sauces (except salad dressings), spices, ice". The PEPSI COLA mark was first used to market soft drinks in 1898, with use of the shortened version (PEPSI) commencing shortly thereafter in 1911.

The Complainant maintains an Internet presence through domain names that incorporate the PEPSI trademark, including <pepsi.com>, <pepsismash.com>, <pepsiworld.com>, <pepsibusiness.com>, <pepsiretail.com>, <pepsifountain.com>, <pepsivending.com>, <pepsico.com> and <pepsicojobs.com>. It also owns domain names featuring its beverage product names, such as <dietpepsi.com>, <pepsione.com> and <pepsiblue.com>.

A book entitled "The Worldís Greatest Brands" (Macmillan Business 1996) lists PEPSI as one of the most famous trademarks and brands in the world. In 2003 Business Week and Interbrand estimated the worth of the PEPSI brand as $11.78 billion. Other surveys referred to by the Complainant also ranked the PEPSI brand highly.

The Complainantís approximate worldwide advertising and promotional expenses since 1991 in respect of soft drink beverages sold under trademarks containing PEPSI, (including the various device marks) are in excess of $2 million US annually. The Complainant conducts global advertising campaigns regarding its products, using magazine and newspaper articles, television, radio, outdoor signs, point of purchase displays and sponsorship of major cultural and sporting events. In 2002, the Complainant sponsored the Saudi Arabia national football team.

The disputed domain name is registered with IHoldings.com, Inc. d/b/a DotRegistrar.com. The WhoIs database specifically for this Registrar is located at "www.easywhois.com". The record for the domain name was created on October 17, 2003. It lists the registrant as Samtech, whose address is given as Riyadh, Saudi Arabia. The administrative and technical contacts both have the same email address and the same postal address and telephone number as above are provided for each.

The Panel is satisfactorily convinced that Javan Singh, Gnxonline, Raq-server, Samtech and Esamtech are all aliases for one another and/or the same individual, source or company.

 

5. Partiesí Contentions

A. Complainant

The Complainant contends that:

- the domain name in issue is identical or confusingly similar to the PEPSI trademarks in which the Complainant has rights.

The disputed domain name totally incorporates the word PEPSI. The mere addition of a common or descriptive term, such as YALLA (meaning "come on" or "lets go) is insufficient to distinguish effectively. It adds no meaning or commercial impression and indeed serves to attract users, in particular young consumers in the Middle East who tend to use such expressions. Given the notoriety of the mark, consumers will believe that the site connected to the domain name is somehow sponsored by, related to or affiliated with the Complainant.

- the Respondent has no rights or legitimate interests in respect of the domain name in question.

The domain name was registered a long time after the Complainantís rights in the PEPSI mark had been established. The Complainantís mark is so well renowned that there can be no legitimate use made by the Respondent. The Complainant has not granted the Respondent any license, permission or other right, which would result in it owning or being entitled to use any domain name incorporating the word PEPSI. The domain name is not a nickname of the Respondent. The Respondent is using the domain name for commercial gain or to divert web traffic.

- the domain name was registered and is being used by the Respondent in bad faith.

The Respondent registered the domain name with the primary purpose of selling, renting or otherwise transferring it, or did so to prevent the Complainant from using its PEPSI mark in a corresponding domain name, or did so to divert web traffic for its own benefit. The Respondent is attempting to benefit from an association with the Complainant and the PEPSI brand. It uses a stylized format identical to the Complainantís stylized PEPSI mark, which is registered, in a number of countries including Saudi Arabia. It also utilizes the red, white and blue circular device used by the Complainant on products and websites and which has been trademarked worldwide. The Complainant alleges opportunistic bad faith. The Respondent demonstrates bad faith by seeking to conceal its identity by utilizing different aliases.

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) 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

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

(iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has registrations in relation to the PEPSI mark in countries all over the world (Exhibit I). It spends a vast amount on global advertising for products sold under the PEPSI brand and in 2002 sponsored the Saudi Arabia National football team (Exhibit J). PEPSI is one of the worldís most famous and valuable brands, as evidenced by the variety of articles and surveys provided by the Complainant (Exhibits D, E, F and H) and corroborated by the Panelís knowledge ex officio. The Panel accepts that PEPSI is a distinctive mark, which is known and registered in Saudi Arabia.

Whilst the disputed domain name is not identical to the mark held by the Complainant, it does contain the word PEPSI. Numerous proceedings have determined that domain names which include a distinctive mark in its entirety are confusingly similar to such mark (Microsoft Corporation v Party Night, Inc d/b/a Peter Carrington WIPO Case No. D2003-0501).

The Complainant contends that YALLA is a descriptive Arabic term meaning "lets go" or "come on" and the Panel accepts this definition. The addition of a generic word to a mark has previously been found to be insufficient to avoid confusion (America Online Inc V Andy Hind WIPO Case No. D2001-0642).

According to the Panel in Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party WIPO Case No. D2000-1415 "An independent basis for finding that a domain name is confusingly similar to a trademark is that, by virtue of the domain name itself, the domain name may confuse Internet users as to whether the site is associated or affiliated with, or sponsored by, the trademark holder." Given the, notoriety of the PEPSI mark and the fact that the mark forms the most distinctive part of the domain name, the above reasoning would apply in this instance.

In light of this and the fact that the Respondent has evinced no arguments, nor provided any evidence to refute the Complainantís allegations, the Panel concludes that paragraph 4(a)(i) of the Policy is proved.

B. Rights or Legitimate Interests

The Complainantís rights in the PEPSI mark had been established for a very substantial period prior to the registration of the disputed domain name and basic searches would have revealed these rights. In addition to this, the brand is globally well renowned, as discussed above and even if the Respondent failed to conduct appropriate searches, it is highly unlikely that it would have been unaware of the Complainantís pre-existing rights on registration of the domain name.

As a result of the long prior established rights of the Complainant, the burden is on the Respondent to establish its rights or legitimate interest in the domain name (PepsiCo, Inc v Amilcar Perez Lista d/b/s Cybersor WIPO Case No. D2003-0174). Paragraph 4(c) of the Policy sets out an illustrative list of the ways in which a Respondent can show such rights or interests. However, the Respondent is in default and has therefore provided no evidence to counter the arguments of the Complainant or support any of the matters mentioned on the above list.

The PEPSI marks are famous and as shown above, it is highly likely that the Respondent would have known about them when applying for registration. There is no obvious connection between the domain name and the content of the website to which it relates. The Panel accepts that the Respondent is not commonly known by the name YALLAPEPSI or any similar name and that it has not been granted any license or other right by the Complainant permitting use of the PEPSI mark.

The Respondent has chosen to use a stylised format on its website which is identical to the Complainantís stylised PEPSI mark used and registered in a variety of countries. It also uses a red, white and blue circular device on the website, similar to that used and registered by the Complainant in association with the PEPSI brand (Exhibit O). This suggests that the Respondent is not making legitimate, non-commercial use of the domain name, but is rather attempting to benefit from an association with the Complainant and the PEPSI name and the increased web traffic generated by this famous name.

The Panel consequently holds that the Respondent has no right or interest in the disputed domain name and that the Complainant has established element (ii) of paragraph 4(a) of the policy.

C. Registered and Used in Bad Faith

The Complainant has put forward arguments under the bad faith registration and use provisions set out in paragraphs 4(b)(i), (ii) and (iv) of the Policy.

There is no supporting evidence at all provided for paragraph 4(b)(i).

As for paragraph 4(b)(ii), there is no evidence that the Respondent registered the domain name in order to prevent the owner of the relevant trademark (the Complainant) from registering the mark in a corresponding domain name. In any case there would need to be a pattern of such conduct. Whilst the Panel accepts that Javan Singh, Gnxonline, Raq-server, Samtech and Esamtech are all aliases for the same company or source (as discussed above in the factual background) (Exhibits L, M and N), no evidence has been provided to indicate any attempt to register domain names under any of these aliases, which would fall within the scope of this paragraph.

The Complainant alleges that the mere fact that the Respondent is concealing its true identity by using aliases is evidence of bad faith. In a broad sense, this is correct, but is insufficient in itself to establish bad faith.

The evidence provided supports the concept of bad faith as set out in paragraph 4(b)(iv) of the Policy. The:

(i) notoriety of the PEPSI mark;

(ii) fact that the word PEPSI forms the most distinctive part of the disputed domain name;

(iii) use by the Respondent of the stylised format (discussed above); and

(iv) use of a red, white and blue circular device (discussed above)

are likely to mislead consumers into thinking that the site associated with the domain name is connected to, sponsored by or affiliated with the Complainant. In addition, they (combined with the Respondentís presumed prior knowledge of the Complainantís rights) indicate an intention on the part of the respondent to divert web traffic for its own benefit and to capture some of the enormous goodwill of the Complainant and the PEPSI brand.

The Complainant alleges opportunistic bad faith and refers to various cases in the complaint, which deal with this topic. One such case is Veuve Clicquot Ponsardin v The Polygenix Group Co. WIPO Case No. D2000-0163, in which it is stated that the situation 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 Pavillion Agency Inc v Greenhouse Agency Ltd. WIPO Case No. D2000-1221 "the use and registration of domain names that are so obviously connected with the Complainantís mark that the use and registration by anyone other than the Complainant suggests "opportunistic bad faith".) The Panel accepts that the registration and use of the disputed domain name by the Respondent is a prime example of opportunistic bad faith.

The Panel finds that the criteria of paragraph 4(a)(iii) of the Policy have been met.

 

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, <yallapepsi.com> be transferred to the Complainant.

 


 

Debrett G. Lyons
Sole Panelist

Date: February 19, 2004