WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pepsico, Inc. v. Xcelon Solutions

Case No. D2011-0136

1. The Parties

The Complainant is Pepsico, Inc. of New York, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.

The Respondent is Xcelon Solutions of Narrabeen, New South Wales, Australia.

2. The Domain Names and Registrar

The disputed domain names <mountaindewbajablast.com>, <mountaindewdistortion.com>, <mountaindewrevolution.com>, <mountaindewtyphoon.com>, <mountaindewultraviolet.com>, <mtndewcodered.com>, <mtndewdistortion.com>, <mtndewlivewire.com>, <mtndewrevolution.com>, <mtndewsupernova.com>, <mtndewtyphoon.com>, <mtndewultraviolet.com> and <mtndewwhiteout.com> are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 25, 2011. On January 26, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On January 26, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 24, 2011.

The Center appointed J. Nelson Landry, as the sole panelist in this matter on March 25, 2011. 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 one of the world’s largest food and beverage companies with an annual revenue in excess of USD 55 billion, employs 285,000 persons and sells a variety of products in more than 200 countries. Its products including beverages are marketed and sold under the trademarks PEPSI, MOUNTAIN DEW and GATORADE amongst others.

The Complainant is the owner of several registrations for the trademark MOUNTAIN DEW and its phonetic abbreviation MTN DEW.

The first use of the trademark MOUNTAIN DEW was made in 1948 and the trademark was registered by Hartman Beverage Company prior to its acquisition by the Complainant in 1964 and was continuously used by the latter since then. The Complainant obtained and owns more than 40 registrations for the MOUNTAIN DEW trademark consisting of MOUNTAIN DEW itself or MOUNTAIN DEW in association with one of more terms, including MOUNTAIN DEW REVOLUTION, DIET MOUNTAIN DEW, MOUNTAIN DEW CODE RED, MOUNTAIN DEW BAJA BLAST, MOUNTAIN DEW SUPER NOVA, MOUNTAIN DEW VOLTAGE AND MOUNTAIN DEW LIVE WIRE (hereinafter the “MOUNTAIN DEW Trademarks” or “Family of Trademarks”).

The Complainant began to use the trademark MTN DEW in association with its products in 2009. Furthermore, the Complainant, pursuant to its use, owns more than 30 registrations and applications for the MTN DEW trademark in association with a variety of goods and services, including MTN DEW itself and MTN DEW DISTORTION, MTN DEW WHITE OUT, MTN DEW SUPER NOVA, MTN DEW TYPHOON (hereinafter the “MTN DEW Trademarks “ or “Family of MTN DEW Trademarks”).

The Complainant furthermore owns numerous trademark registrations and applications for the MOUNTAIN DEW Trademarks and MTN DEW Trademarks in many other countries, including countries of the European Union, Canada, Mexico, Brazil, China and Japan. It also obtained a registration for the MOUNTAIN DEW Trademarks in Australia in 1985 and has used the said trademarks since.

The Complainant has promoted its MOUNTAIN DEW Trademarks through national television, print advertising campaigns, product placement in films and sponsoring events such as Nascar Racing Series. Since 2005, the Complainant has spent in excess of USD 50 million each year in advertising the MOUNTAIN DEW Trademarks. The Complainant has also promoted its Trademarks in other countries in print advertising campaigns, in other media and sponsoring sporting events such as the annual Mountain Dew Hut Jam Snowboarding event in Australia. The Mountain Dew soft drink has been the fourth best selling soft drink in the United States for many years behind Coca-Cola, Pepsi-Cola and Diet Coke. For the past many years, the sales of the Mountain Dew soft drinks alone sold in the United States were over 600 million cases per year.

The Complainant owns and uses a number of Internet domain names which include the MOUNTAIN DEW Trademarks such as <mountaindew.com>, <mountaindewcodered.com>, <mountaindewlivewire.com>, <mountaindewracing.com> and <mountaindewgamefuel.com> which domain names resolve to websites that promote and provide information about the MOUNTAIN DEW soft drink products and promotion.

The Respondent has registered each and every one of the 13 disputed domain names on December 3, 2010. The disputed domain names resolve to websites of the Respondent. The said websites post many sponsored listings some of which have no connection to the Complainant and concern some goods or services unrelated to the Complainant’s products such as links to “Feebreze”, “Home Collections”, “Auto Trader.com”. Yet, there are also on the Respondent’s websites many sponsored listings which concern products or services identical or closely related to products offered by the Complainant, namely soft drinks such as “By Original Dr Pepper, Beverages Direct and Natural Energy Drinks”. Finally, on said Respondent’s websites, there are links to websites providing information about competitors of the Complainant, namely Coca-Cola and Jones Soda inter alia.

There is no relationship between the Complainant and the Respondent in the nature of any license, permission or other rights by which the Respondent might be authorized to own, use, register any domain name incorporating any of the MOUNTAIN DEW or MTN DEW Trademarks or the Family of MOUNTAIN DEW or MTN DEW Trademarks of the Complainant.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has rights in the MOUNTAIN DEW Trademarks, some of which have been in use as early as 1948 and been the subject of national and international advertising campaigns, including in Australia, where the Respondent is located, and that, by their use in association with soft beverages, have generated considerable sales, sufficient in the Complainant’s view, to represent that these Trademarks are famous and have considerable goodwill associated therewith.

The Complainant further contends that the following five disputed domain names <mountaindewrevolution.com>, <mountaindewdistortion.com>, <mountaindewbajablast.com>, <mountaindewtyphoon.com> and <mountaindewultraviolet.com> are confusingly similar to its famous MOUNTAIN DEW Trademarks on the basis that each of said five disputed domain names fully incorporates the MOUNTAIN DEW Trademark and all, except <mountaindewdistortion.com> also incorporate those in the Family of MOUNTAIN DEW Trademarks. The disputed domain <mountaindewdistortion.com> is also confusingly similar and phonetically identical to the Complainant’s MTN DEW DISTORTION Trademark and in this respect the Complainant relies in the decision PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696, wherein the panel held that when a domain name incorporates a trademark in its entirety, it can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark.

According to the Complainant, the Respondent’s domain names <mtndewcodered.com>, <mtndewdistortion.com, <mtndewlivewire,com>, <mtndewrevolution.com>, <mtndewsupernova.com>, <mtndewtyphoon,com>, <mtndewultraviolet.com>, <mtndewwhiteout.com> are confusingly similar to the MTN DEW Trademark of the Complainant in that each of said domain names wholly incorporates the said MTN DEW Trademark of the Complainant, again relying on the PepsiCo, Inc. decision, supra.

Furthermore, the Complainant represents that the disputed domain name <mtndewcodered.com>, <mtndewlivewire.com>, <mtndewrevolution.com>, <mtndewsupernova.com> are confusingly similar and phonetically identical to the Complainant’s Trademarks MTN DEW CODE RED, MTN DEW LIVEWIRE, MTN DEW REVOLUTION, MTN DEW SUPERNOVA.

Finally, the remaining disputed domain names <mtndewdistortion.com>, <mtndewtyphoon,com> and <mtndewwhiteout.com> are identical to and incorporate the Complainant’s corresponding Trademarks MTN DEW DISTORTION, MTN DEW TYPHOON, MTN DEW WHITEOUT Trademarks and last the disputed name <mtndewultraviolet.com> is confusingly similar to the Complainant’s DIET MTN DEW ULTRA VIOLET Trademark.

In respect of each of the 13 disputed domain names wherein the gTLD extension “.com” is added, the Complainant, relying on Morgan Freeman v. Mighty LLC, WIPO Case No. D2005-0263, further represents that said extension does not serve in any of the 13 instances to distinguish the disputed domain name from the Trademark incorporated therein.

The Complainant concludes its representations on the confusing similarity aspect in relying on the notoriety and unique character of its MOUNTAIN DEW and MTN DEW Trademarks, their ownership and use by it, in stating that this will leave no doubt that consumers will reasonably believe that said disputed domain names are related to the Complainant.

The Complainant having stated that its Trademarks had been used and registered for such a long period and were so well known before the Respondent registered the disputed domain names, claims that the Respondent cannot demonstrate or establish any rights or legitimate interests in the said disputed domain names. See Fiber-Shield Industries, Inc. v. Fiber Shield LTD., NAF Claim No. 1000092054; Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Company, WIPO Case No. D2000-0163 and Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397.

Having stated that there is no relationship between the Complainant and the Respondent which may give rise to any license, permission or other rights by which the Respondent could register, own or use any domain name incorporating any of the Complainant’s MOUNTAIN DEW or MTN DEW Trademarks, the Complainant further claims that the burden is on the Respondent to establish rights or legitimate interests in the disputed domain names. See PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174.

According to the Complainant, the Respondent is not making and has never made a legitimate, noncommercial or fair use of the disputed domain names since the Respondent has registered and is using the disputed domain names solely for commercial gains as one may observe with the linking portals at the disputed domain names which display numerous links which redirect Internet visitors to products or businesses unrelated to the Complainant or to competitors of the Complainant such as “Coca Cola Jobs”, “Buy Soda Machine”, among numerous examples. Furthermore, these websites with sponsored links to third parties suggest that the Respondent is using the disputed domain names for commercial purposes and that the redirecting of visitors to competitors’ products presumably for compensation cannot be considered, in the present circumstances, a bona fide use of a domain name. See Deutsche Telekom AG v. Andrew Miller, WIPO Case No. D2008-0296 and Shahnaz Husain v. Saxena Dinesh O., WIPO Case No. D2006-1132.

Finally in relation to absence of rights and legitimate interests, the Complainant submits, in respect of those sponsored links appearing on the Respondent’s website, that it is immaterial who places these, either the Respondent or GoDaddy. It is the Respondent who chose the disputed domain names and the registrant is fully responsible for the use to which the disputed names are put. See Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448; NVT Birmingham, LLC d/b/a CBS 42 WIAT-TV v. ZJ, WIPO Case No. D2007-1079 and Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267.

The Complainant further submits that the disputed domain names were all registered in bad faith and such conclusion is supported by the fact that each domain name incorporates either the MOUNTAIN DEW Trademark or the MTN DEW Trademark of the Complainant many years after the Complainant had acquired rights in the said Trademarks and built up their fame. See PepsiCo. Inc. v. "null", aka Alexander Zhavoronkov, WIPO Case No. D2002-0562 and Volvo Trademark Holding AB v. SC-RAD Inc., WIPO Case No. D2003-0601.

According to the Complainant, there could be no doubt that the Respondent was fully aware of the rights of the Complainant in the MOUNTAIN DEW and MTN DEW Trademarks and that this knowledge by the Respondent is further confirmed by the fact that the Respondent registered the 13 disputed domain names, each incorporating either exact copy or close imitation of the Complainant’s MOUNTAIN DEW or MTN DEW family of Trademarks.

The Complainant again submits that the Respondent’s bad faith is also associated with the way the Respondent is using the disputed domain names with parked pages and for click-through linking portals as well as the absence of any legitimate or bona fide use of the disputed domain names, the Complainant reiterating the presence of numerous links to other websites some of which are providing information about competitors of the Complainant. See Hilton Group plc v. Forum LLC, WIPO Case No. D2005-0244 and Zee TV USA, Inc. v. Aamir Siddiqi c/o DotCorner.com, NAF Claim No. 721969.

The Complainant concludes its representations on the Respondent’s registrations in bad faith and use in bad faith of the disputed domain names in referring to earlier UDRP decisions where a panel had found that the Administrative and Technical Contact for the disputed domain names, Banu Kilich, whose portal address is the same as that listed for the Respondent. See MasterCard International Incorporated v. Banu Asum Kilich, WIPO Case No. D2009-1525 and Société des Hôtels Méridien v. LaPorte Holdings, Inc., WIPO Case No. D2004-0849. The Complainant thus relies on earlier panel decisions such as Unox S.p.A. v. Grandtotal Finances8Ltd and/or Grandtotal Finances, WIPO Case No. D2004-0077, where the panel took into account the findings in other administrative proceedings where the Respondent engaged in a pattern of registration of a series of well-known trademarks and that this is evidence of a pattern of conduct as envisaged by par. 4(b) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. The Respondent simply replied in the present case by an e-mail to the Case Manager, stating “I’m not disputing whatever the problem, they can have the domains, no need to waste anyone time, if they contact me directly I could transfer it […]”.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:

(i) The disputed domain names registered by the Respondent are 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 names; and

(iii) The disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

In very elaborate representations supported with detailed evidence, the Complainant has established that by reason of the use of the Trademark MOUNTAIN DEW by its predecessor since 1948 and itself thereafter in association with various products including soft drink beverages and secondly of the use of the Trademark MTN DEW since 2009 in association with similar products along with a variety of additional trademarks constituting the Family of Trademarks, it has rights in the MOUNTAIN DEW Trademarks and MTN DEW Trademarks. Those rights are confirmed by the numerous registrations obtained in respect of these two families of Trademarks in several countries, including Australia where the Respondent is located.

Each and every one of the disputed domain names incorporates either the MOUNTAIN DEW Trademark or the MTN DEW Trademark and further more, incorporates in total a subsidiary Trademark such as MOUNTAIN DEW REVOLUTION, MOUNTAIN DEW CODE RED, MOUNTAIN DEW BAJA BLAST, MOUNTAIN DEW SUPERNOVA and MOUNTAIN DEW LIVEWIRE in addition to MTN DEW DISTORTION, MTN DEW SUPERNOVA, MTN DEW TYPHOON.

It is well established in UDRP decisions including those cited by the Complainant in its representations that such incorporation of a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark as held in the PepsiCo, Inc. decision, supra and further panels in those decisions have also held that the addition of the gTLD extension “.com” does not serve to distinguish the disputed domain name from the trademark incorporated therein.

The Panel finds that the Complainant has established that it has rights in the MOUNTAIN DEW Trademark, MTN DEW Trademark, MOUNTAIN DEW Family of Trademarks and MTN DEW Family of Trademarks and that each and everyone of the 13 disputed domain names is confusingly similar with at least one of the Trademarks of the Complainant.

The first criterion has been met.

B. Rights or Legitimate Interests

The Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names by stating that the Respondent has never been known by any of the disputed domain names, is not making a legitimate noncommercial or fair use of the disputed domain names. Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of any of the Complainant’s MOUNTAIN DEW or MTN DEW Trademarks. There is no evidence that the Respondent has ever engaged is any legitimate business under the Complainant’s Trademarks.

Not only did the Respondent not rebut the prima facie evidence adduced by the Complainant, but furthermore in its email, it was communicating its availability to transfer the disputed domain names. thereby, in this Panel’s view, acquiescing in the merit of the representations and evidence of the Complainant that the Respondent had no rights and no legitimate interests in any of the 13 disputed domain names.

It cannot be clearer to this Panel that incorporating in each and every one of the disputed domain names the well-known, if not famous, MOUNTAIN DEW Trademark or MTN DEW Trademark without any authorization by the Complainant, that, as the Panel finds, the Respondent had no rights nor any legitimate interest in any of the 13 disputed domain names.

The second criterion has been met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the disputed domain names in bad faith:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

Considering the extensive and most substantial use and promotion of the Family of MOUNTAIN DEW Trademarks and Family of MTN DEW Trademarks along with the substantial goodwill and fame generated thereby associated in particular with the MOUNTAIN DEW Trademark, there is no doubt in this Panel’s view that the Respondent registered each and every one of the said 13 disputed domain names with full knowledge of the Complainant’s Trademarks with the view of benefiting from the goodwill, reputation and fame associated therewith.

The Panel adopts the holdings expressed in the PepsiCo, Inc. and Volvo Trademark Holding AB decisions, supra, in finding that each and every one of the 13 disputed domain names was registered in bad faith with full awareness of the rights of the Complainant in said Trademarks.

Again, these representations of registrations in bad faith and use in bad faith were not challenged by the Respondent who remained silent in this respect. How can it be otherwise when on the websites associated with each of the disputed domain names, there are click-through linking portals redirecting Internet visitors to other websites where information is provided about competitors of the Complainant and their products?

The representations and evidence presented by the Complainant are most convincing. The Panel does not feel that there is any need to elaborate further but to conclude a bad faith behavior in respect of the Respondent’s intentions and attempts to attract, for commercial gain, Internet users to its numerous websites by creating a likelihood of confusion with the Complainant’s well-known Trademarks as to the source, sponsorship, affiliation, or endorsement thereof.

The Panel finds that the Respondent used all of the disputed domain names in bad faith.

The third criterion has been met.

7. Decision

The Panel concludes that:

(a) the disputed domain names <mountaindewbajablast.com>, <mountaindewdistortion.com>, <mountaindewrevolution.com>, <mountaindewtyphoon.com>, <mountaindewultraviolet.com>, <mtndewcodered.com>, <mtndewdistortion.com>, <mtndewlivewire.com>, <mtndewrevolution.com>, <mtndewsupernova.com>, <mtndewtyphoon.com>, <mtndewultraviolet.com> and <mtndewwhiteout.com> are confusingly similar to the Complainant’s Trademarks;

(b) the Respondent has no rights or legitimate interests in the disputed domain names;

Therefore, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <mountaindewbajablast.com>, <mountaindewdistortion.com>, <mountaindewrevolution.com>, <mountaindewtyphoon.com>, <mountaindewultraviolet.com>, <mtndewcodered.com>, <mtndewdistortion.com>, <mtndewlivewire.com>, <mtndewrevolution.com>, <mtndewsupernova.com>, <mtndewtyphoon.com>, <mtndewultraviolet.com> and <mtndewwhiteout.com> be transferred to the Complainant.

J. Nelson Landry
Sole Panelist
Dated: April 6, 2001