WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pepsico, Inc. v. Sohel Alavi
Case No. DIR2016-0032
1. The Parties
The Complainant is Pepsico, Inc. of Plano, Texas, United States of America ("United States"), represented Saba & Co. IP, Lebanon.
The Respondent is Sohel Alavi of Tehran, Islamic Republic of Iran, self-represented.
2. The Domain Name and Registrar
The disputed domain name <pepsi.ir> ("Domain Name") is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 6, 2016. On October 7, 2016, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Domain Name. On October 8, 2016, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on October 14, 2016.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the "Policy" or "irDRP"), the Rules for .ir Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .ir 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 October 17, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was November 6, 2016. An informal Response was filed with the Center on November 6, 2016.
The Center appointed Willem J. H. Leppink as the sole panelist in this matter on November 9, 2016. 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.
On November 13, 2016 the Center received a message from the Respondent stating that he would instantly transfer the Domain Name if the cost of USD 2,000 would be covered, which would be the price he paid to the previous owner to acquire the Domain Name. In that case he would not lose money, according to the Respondent.
4. Factual Background
The following facts are undisputed.
The trademark PEPSI is one of the most recognized brands in the world. It has been listed by both Interbrand and Forbes in the higher regions of their top 100 of global brands.
The trademark PEPSI is owned by the Complainant, one off the world's leading food and beverage companies with over USD 65 billion in net revenue in 2015 and a global portfolio of diverse and famous brands. The Pepsi portfolio currently includes three products, Pepsi, Diet Pepsi and Pepsi MAX, each of which generates more than USD 1 billion in annual retail sales.
The Complainant is the owner of a various number of trademark registrations for PEPSI with validity in several countries and territories worldwide, including registration in the Islamic Republic of Iran, including trademark registration of PEPSI in stylized letters with registration number 161779 and application date October 7, 2008 for several goods in class 32 ("Trademark").
The Domain Name was created on January 10, 2004 and registered by the Respondent in August 30, 2016.
5. Parties' Contentions
Insofar as relevant, the Complainant contends the following:
The Domain Name is identical or confusingly similar to the famous Trademark of the Complainant as it constitutes the only component of the Domain Name.
The Respondent has no rights or legitimate interests in respect of the Domain Name.
There is no evidence that the Respondent has: (1) used, or made demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods and services; (2) been commonly known by the Domain Name; or (3) made legitimate and noncommercial or fair use of the Domain Name (or explicable reason as to why the Respondent chose the Domain Name) without intent to mislead consumers or harm the reputation of the Trademark.
Moreover, the name of the Respondent bears no similarity to the Trademark and the Respondent is not an authorized distributor of the Complainant.
The Respondent has registered and is using the Domain Name in bad faith. The Complainant refers to the fame of the Trademark which has been confirmed by various decisions under the UDRP.
In addition to the above, the Complainant has sent a warning letter to the Respondent on September 30, 2016 clarifying that it objects the unauthorized registration of Domain Name. The Respondent replied and confirmed that he has been a professional entrepreneur for 15 years and is well aware of intellectual property. Also, he clarified that he is willing to sell the Domain Name to the party that deserves it the most and confirmed that he had offers regarding this Domain Name. Finally, the Respondent offered to transfer the Domain Name for the amount of USD 200,000. It is therefore very unlikely that the registration of the Domain Name was done without the knowledge and full awareness of the Complainant's rights. Therefore, the Domain Name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the Domain Name for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the Domain Name.
The Respondent has only submitted an informal Response, filed with the Center on November 6, 2016. Insofar as relevant he states the following:
Any claims that there is bad faith has no merits. The Domain Name has been purchased from another rightful owner and the transfer of the Domain Name has been legally processed.
There is no website set up in connection with the Domain Name. It has been registered on a first come first serve basis and he has personally spent money to purchase the Domain Name. He has never offered any person or entity to sell the Domain Name "unless a request was made by WIPO". If someone would be interested to acquire the Domain Name, it should make an offer.
As referred to section 3 above, on November 13, 2016 the Center received a message from the Respondent stating that he would instantly transfer the Domain Name if the cost of USD 2,000 would be covered, which would be the price he paid to the previous owner to acquire the Domain Name.
6. Discussion and Findings
Pursuant to paragraph 4(a) of the Policy, the Complainant must assert in compliance with the Rules each of the following three elements:
(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 or is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant must demonstrate that it has rights in a trademark and, if so, the Domain Name must be shown to be identical or confusingly similar to the Trademark.
The Complainant has shown that it has rights in the PEPSI Trademark.
The Domain Name incorporates the Trademark in its entirety. The addition of ".ir" is in this case irrelevant.
Thus, the Panel finds that the Domain Name is confusingly similar to the Complainant's Trademark.
The Panel is therefore satisfied that the first element of the Policy is met.
B. Rights or Legitimate Interests
The Respondent did not reply to the Complainant's contentions in relation the second element. For that reason, the Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence.
The Complainant has confirmed that there is no website to which the Domain Name resolves. The Complainant has confirmed that the Domain Name is for sale. The Respondent has not used, or made demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods and services. The Respondent has not been commonly known by the Domain Name. The Respondent has not made legitimate and noncommercial or fair use of the Domain Name.
Therefore, the Panel is satisfied that the second element of the Policy is met.
C. Registered or Used in Bad Faith
According to the information provided by IRNIC, the date of registration of the Domain Name by Respondent is August 30, 2016. This is also confirmed by the Respondent who has stated that it purchased the Domain Name from "another rightful owner".
It is well established that the transfer of a domain name to a third party does amount to a new registration unless there is evidence to establish an unbroken chain of underlying ownership by a single person, and any change in the WhoIs registrant data is not being made to conceal the underlying owner's identity (see inter alia Angelica Fuentes Téllez v. Domains by Proxy, LLC / Angela Brink, WIPO Case No. D2014-1860).
In the case at hand the registration of the Domain Name by the Respondent amounts to a new registration as the Respondent has purchased the Domain Name from another owner.
The Respondent when approached by the Complainant has mentioned that he was well-aware about intellectual property and that he is willing to sell the Domain Name to the party that deserves it the most and confirmed that he had offers regarding this Domain Name. The Respondent offered to transfer the Domain Name for the amount of USD 200,000.
Given the Respondent's alleged knowledge of intellectual property, given the global notoriety of the Trademark, also in the Islamic Republic of Iran (as several Internet sources confirm) and the fact that Respondent immediately asked for USD 200,000 when the representative of the Complainant approached the Respondent, the Respondent must have been aware of the Trademark when acquiring the Domain Name.
Therefore, the Panel finds that the Domain Name was acquired primarily for the purpose of selling, renting, or otherwise transferring the Domain Name for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the Domain Name.
In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was registered in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <pepsi.ir> be transferred to the Complainant.
Willem J. H. Leppink
Date: November 14, 2016