WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PepsiCo, Inc. v. Whois Privacy Protection Service, Inc., Abdulah Shmre

Case No. D2011-0016

1. The Parties

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

Respondent is Whois Privacy Protection Service, Inc. of Bellevue, Washington, United States of America, and Abdulah Shmre of “bredh,” Kingdom of Saudi Arabia.

2. The Domain Names and Registrar

The disputed domain names <alpepsi.com>, <bebsi.com>, and <bebsi.net> are registered with eNom.

3. Procedural History

The Complaint concerning the domain name <bebsi.com> was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2011. On January 5, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name <bebsi.com>. On January 5, 2011 eNom transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint (the initial Complaint named as Respondent a proxy registration service and the Registrar’s verification identified Respondent Shmre as the underlying owner of the disputed domain name). The Center sent an email communication to Complainant on January 7, 2011 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint.

Complainant filed an amended Complaint on January 12, 2011. The Amended Complaint added the named Respondent Shmre based on the information provided by the Registrar, and added two further disputed domain names, <alpepsi.com> and <bebsi.net>, which according to Complainant were also registered by Respondent Abdulah Shmre. On January 12, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the additional disputed domain names <alpepsi.com> and <bebsi.net>. On January 12 and 13, 2011 eNom transmitted by email to the Center its verification responses confirming that Respondent Abdulah Shmre is also listed as the registrant for the disputed domain names <alpepsi.com> and <bebsi.net> and providing the contact details.

The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on January 14, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 4, 2011.

The Center appointed Nasser A. Khasawneh as sole panelist in this matter on February 11, 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

Complainant owns hundreds of trademark registrations around the globe for the mark PEPSI and derivative marks, including for example United States Trademark Registration No. 824,150 registered February 14, 1967 in International Class 32.

The disputed domain name <bebsi.com> was registered March 4, 2003 and presently routes to a website making extensive use of Complainant’s logos and appearing to promote a chat service using the PEPSI trademark. These are among the factors that make the website appear as though it is affiliated with Complainant.¹

The disputed domain names <alpepsi.com> and <bebsi.net> were registered on August 6, 2008 and June 26, 2003 respectively, and do not presently display active content other than a server-related page containing links to third-party websites such as “www.cpanel.net” and “www.apache.org.”

Internet archives show, however, that the <bebsi.net> domain name routed to a website displaying content of a similar nature to the website at “www.bebsi.com”, including having displayed in Arabic the following statement under a link entitled “advertise with us”: “You can link the network of Pepsi on your site in order to benefit from the services of Peptsi network.”². The website also made reference to “Pepsi Center.”

5. Parties’ Contentions

A. Complainant

Complainant details the prominence of its PEPSI trademark and brand, its global use, the considerable size of its worldwide business, and alleges that the PEPSI mark is famous.

Complainant alleges that the disputed domain names <bebsi.com> and <bebsi.net> are confusingly similar to its PEPSI mark and avers that sound of the word “bebsi” is extremely close phonetically to its PEPSI mark, particularly given the absence in Arabic of the English phonetic sound “p.” Complainant further contends that the other disputed domain name <alpepsi.com> is confusingly similar to its PEPSI mark since it wholly incorporates the PEPSI mark.

Complainant also alleges that Respondent has no rights or legitimate interests in the disputed domain name and goes so far as to contend in essence that its mark is so well established that there can be no legitimate interest in a domain name confusingly similar to its mark, citing among other authority the panel decision in Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co, WIPO Case No. D2000-0163.

As for bad faith registration and use, Complainant relies upon the fame of its mark, the allegation that Respondent claims to be an official site affiliated with Complainant, and the use of a privacy service for registration of the disputed domain names.

On the basis of the above allegations, Complainant seeks transfer of the disputed domain names.

B. Respondents

Respondents did not reply to Complainant’s contentions.

6. Discussion and Findings

A. Procedural Matters

(i). Addition of Two Further Disputed Domain Names to Amended Complaint

As a threshold matter, the Panel finds that the addition of two further disputed domain names registered by the same respondent in the Amended Complaint is permissible and does not prejudice Respondents, given that the notification of Complaint was not made until after the Center received and verified that the Amended Complaint satisfied the requirements under the Policy and Rules. Several other panels have ruled similarly at later stages of the proceedings, when complainants added new disputed domain names registered by the same respondents. E.g., PepsiCo, Inc. v. Henry Chan, WIPO Case No. D2004-0033, The Canadian Education Centre (CEC) Network , CEC Turkey-Kanada Egitim Merkezi v. Ismail Ince / Savas Dost, WIPO Case No. D2009-0698.

(ii). Notification of Proceedings to Respondents

The Policy is intended to resolve disputes concerning allegations of abusive domain name registration or acquisition in an efficient manner. Fundamental due process requirements must nonetheless be met. The requirement that a respondent have notice of proceedings that may substantially affect its rights is such a fundamental requirement. The Policy and the Rules establish procedures to assure that respondents receive adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).

The Center sent to Respondent Abdulah Shmre by courier notification of these proceedings. The Center used the address listed identified by the Registrar in its verifications, but the courier company was unable to deliver to the address indicated. The Center also notified Respondent Abdulah Shmre by using an email address provided by the Registrar in its verification response to the Center and to “postmaster@ [disputed domain name]”. The Panel notes that the electronic notifications only to the latter returned delivery errors.

The Panel is satisfied that by sending communications to the contacts made available through the Registrar, and those provided by the registrant to the Registrar, the Center has exercised care and has fulfilled its responsibility under paragraph 2 of the Rules to employ all reasonably available means to serve actual notice of the Complaint upon Respondents.

(iii). Proper Parties

The Panel notes that the contact information provided for Respondent Abdulah Shmre is incomplete and possibly fictitious. Consequently, and is routinely practiced in UDRP proceedings, the Panel finds it is appropriate to retain both the individual Respondent Abdulah Shmre and the proxy registration service Whois Privacy Protection Service, Inc. E.g. TDS Telecommunications Corporation v. Registrant [20758 ]Nevis Domains and Registrant [117460] Moniker Privacy Services, WIPO Case No. D2006-1620.

All further references to the intention or conduct of Respondent in this Decision, however, signify the individual Respondent Abdulah Shmre.

B. Substance of the Complaint and Applicable Standards

The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish with respect to each of the disputed domain names the elements of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights;

(ii) Respondents have no rights or legitimate interests in respect of the disputed domain name; and

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

Complainant must establish these elements even if Respondents do not submit a response. See, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

C. Identical or Confusingly Similar

Although the disputed domain names are not identical to Complainant’s PEPSI trademark, the Panel agrees with Complainant that the disputed domain names are confusingly similar.

The disputed domain names <bebsi.com> and <bebsi.net> consist of the term “bebsi” and the domain name suffixes “.com” and “.net,” respectively. Panels disregard the domain name suffix in determining whether a disputed domain name is identical or similar to a complainant’s marks. See e.g., HUK-COBURG haftpflicht-Unterstützungs-Kasse kraftfahrender Beamter Deutschlands A.G. v. DOMIBOT (HUK-COBURG-COM-DOM), WIPO Case No. D2006-0439; VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.

Removing the suffixes from these two disputed domain names, the term “bebsi” is phonetically similar to Complainant’s PEPSI trademark. The websites to which two of the disputed domain names direct or have directed in the past targeted an Arabic speaking audience. Many Arabic speakers use the term which phonetically sounds like “bebsi” to refer to Complainant’s brand and trademark, given the absence of a “p” sound in Arabic.³ The Panel concludes, therefore, that both <bebsi.com> and <bebsi.net> are confusingly similar to Complainant’s mark. See, e.g., PartyGaming Plc. , PartyGaming IA Limited v. Harry Thomas, WIPO Case No. D2008-1275 (disputed domain name <gamebukers.com> confusingly similar to “GAMEBOOKERS” mark for phonetic reasons, where website targeted Spanish speaking consumers (relief denied on other grounds) citing Medtronic, Inc. v. gotdomains4sale.com, WIPO Case No. D2001-1033; Microsoft Corporation v. Mike Rushton, WIPO Case No. D2004-0123).

The Panel also agrees with Complainant that the disputed domain name <alpepsi.com> is confusingly similar to the PEPSI trademark, since it fully includes the trademark. The Panel finds that Respondent’s addition of “al” (the Arabic term for “the”) does not reduce the confusion for Internet users created by the use of Complainant’s mark in the disputed domain name. E.g., Pepsi Co., 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.

The requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

D. Rights or Legitimate Interests

The Panel also concludes that Respondents have no rights or legitimate interests in the disputed domain names.

Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:

(1) the use of the domain name in connection with a bona fide offering of goods and services;

(2) being commonly known by the domain name; or

(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.

A complainant must show a prima facie case that a respondent lacks rights or legitimate interests. See e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id., (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).

Complainant alleges that Respondent does not have legitimate interests because Respondent is not affiliated with Complainant, that Respondent was not authorized by Complainant to register and use Complainant’s trademarks, that there is no bona fide offering, and that Respondent is not commonly known by the disputed domain names. In the absence of a response by Respondents, the Panel accepts these factual allegations as true.

Complainant also alleges that Respondent is probably earning revenue through advertising by using Complainant’s trademarks. In diverting traffic by creating confusion with Complainant’s trademarks and inviting the public to advertise by linking to the websites to which the disputed domain names route, the Panel finds that Respondent Shmre is opportunistically taking advantage of Complainant’s marks for his own commercial purposes. Cf. Deutsche Telekom AG v. Thanh Nguyen, Thanh Nguyen Mobile, WIPO Case No. DBZ2008-0002 (quoting The Bear Stearns Companies Inc. v. Darryl Pope, WIPO Case No. D2007-0593 “[t]he Panel is free to infer that Respondent is likely receiving some pecuniary benefit…in consideration of directing traffic to that site”; see Fat Face Holdings Ltd v. Belize Domain WHOIS Service Lt, WIPO Case No. D2007-0626; Sanofi-aventis v. Montanya Ltd, WIPO Case No. D2006-1079.

The Panel finds that Complainant has established a prima facie case. Refraining from submitting a formal Response, Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that Respondent has rights or legitimate interests in making use of the disputed domain names.⁴

The Panel rules therefore that Complainant has established the second element of paragraph 4(a) of the Policy.

E. Registered and Used in Bad Faith

The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established, as elaborated below.

Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including a respondent’s failure to respond to the Complaint. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Examining the circumstances in this case, the Panel agrees with the findings of prior panels that the PEPSI mark is famous. E.g., Pepsico, Inc. v. Diabetic Home Care Inc. and DHC Servs., WIPO Case No. D2001-0174, PepsiCo Inc. v. “null”, aka Alexander Zhavoronkov, WIPO Case No. D2002-0562. The Panel finds that Respondent was undoubtedly aware of Complainant’s famous PEPSI mark, which Respondent deliberately imitated phonetically (in the cases of <bebsi.com> and <bebsi.net>), or outright adopted (in the case of <alpepsi.com>) to create confusion and attract Internet users to its websites for commercial gain. Therefore, the Panel concludes that Respondent registered the disputed domain names in bad faith. See, e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co, supra.

The Panel finds that Respondent’s failure to respond to the Complaint, the registrant’s provision of inaccurate or incomplete contact information with respect to all three disputed domain names, and Respondent’s unfounded claims to be affiliated with Complainant support the conclusion that Respondent registered and is using the disputed domain names in bad faith. Telstra, supra.

The Panel notes that Respondent’s use of a proxy registration service, without more, would not be sufficient to establish bad faith use or registration. E.g., HSBC Finance Corp. v. Clear Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062; cf. TDS Telecommunications Corp., supra(“Russian doll” scenario involving multiple proxy registration services and inaccurate or incomplete registration information provided by registrant were additional factors supporting bad faith finding).

In this case, however, given the blatant adoption of two domain names phonetically close to or in one case actually including Complainant’s trademark, Respondent’s use of the proxy registration service is cumulative evidence that provides additional support to the Panel’s finding of bad faith, in addition to the evidence cited above. See Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743.

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, <alpepsi.com>, <bebsi.com>, and <bebsi.net> be transferred to Complainant.

Nasser A. Khasawneh
Sole Panelist
Dated: February 20, 2011

¹ The Panel has undertaken limited factual research by viewing the websites to which the disputed domain names resolve, and by viewing archives at “www.archive.org/index.php”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5. The appearance of the websites are consistent with exhibits submitted with the Complaint.

2 The Arabic reads:

نود وشروط استخدام الإنترنت في شـبـكة بـيـبسي : يمكنك ربط شـبـكة بـيـبسي في موقعك حتى تستفيد من خدمات شـبـكة بـيـبسي ,فكل ما عليك هو نسخ الأكواد التي تناسب موقعك حتى يمكنك ربط موقعك بموقعنا .

³ The Panel notes that Respondent Abdulah Shmre is presumably also located in Saudi Arabia, although as discussed elsewhere, Respondent Abdulah Shmre has apparently provided false or incomplete contact information.

⁴ It is unnecessary for the Panel to rule on Complainant’s contention that a party could never make legitimate use of Complainant’s trademarks in a domain name without Complainant’s authorization.