PepsiCo, Inc. v. RaveClub Berlin
Claim Number: FA0111000101819
Complainant is PepsiCo, Inc., Purchase, NY (“Complainant”) represented by Carla C. Calcagno, of Howrey, Simon, Arnold & White. Respondent is RaveClub Berlin, Cherry Hill, NJ (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pepsistuf.com>, registered with Joker.com.
On December 14, 2001 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 7, 2001; the Forum received a hard copy of the Complaint on November 8, 2001.
On November 13, 2001, Joker.com confirmed by e-mail to the Forum that the domain name <pepsistuf.com> is registered with Joker.com and that Respondent is the current registrant of the name. Joker.com has verified that Respondent is bound by the Joker.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 13, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 3, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from the Respondent to the Complainant.
The <pepsistuf.com> domain name is confusingly similar to Complainant's PEPSI, PEPSI STUFF, and PEPSISTUFF.COM marks.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent registered the disputed domain name in bad faith.
Respondent failed to submit a Response.
Since 1967, Complainant has used the PEPSI mark in relation to the manufacture and sale its soft drinks. Since 1995, Complainant has used the PEPSI STUFF mark in commerce to manufacture, sell, distribute and market soft drinks, and various articles of clothing and accessories. Complainant has expended hundreds of millions of dollars to market its soft drinks
Complainant owns Federal Trademark Registrations for PEPSI, PEPSI STUFF, and PEPSISTUFF.COM. Complainant operates a website marketing its product and offering goods at <pepsistuff.com>. Furthermore Complainant has a formidable presence on the internet as owner of <pepsi.com>, <pepsico.com>, <pepsibusiness.com> <pepsiretail.com>, <pepsifountain.com>, <pepsivending.com>, <pepsiworld.com>, <pepsicojobs.com>, and <pepsicareer.com>. Complainant also sponsors numerous consumer-orientated events advertised through it own sites as well as third party sites.
Respondent registered the disputed domain name one September 27, 2000. Respondent used the disputed domain name as an adult content website. If the Internet user attempted to leave the domain by pressing the 'Back' key on the browser they would be mousetrapped into and advertisement website for an online pharmacy.
The Respondent's <pepsistuf.com> domain is no longer active because of Complainant's request to the CaveCreek Internet service provider. Also, because of the notorious nature of Respondent's activities the U.S. District Court for the Eastern District of Pennsylvania issued a temporary restraining order barring Respondent or any of its affiliated companies from re-directing or obstructing consumers from websites.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Complainant, through registration and use has demonstrated that it has rights in the PEPSI, PEPSI STUFF, and PEPSISTUFF.COM marks. Furthermore, Respondent's <pepsistuf.com> domain name is confusingly similar to Complainant's marks because it incorporates the entirety of the marks and merely misspells the word "stuff". It has been found that the deletion of a letter from a famous mark is not enough to create a distinct mark and overcome a claim of confusing similarity. See Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark); see also Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the Complainant’s UNIVERSAL STUDIOS STORE mark does not change the overall impression of the mark and thus is confusingly similar to the Complainant’s mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).
There is no evidence on the record, and Respondent has not come forward to establish that it is commonly known by the <pepsistuf.com> domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).
Respondent is intentionally diverting Internet users to its website for its own commercial gain and is therefore not making legitimate noncommercial, or fair use of the disputed domain pursuant to Policy ¶ 4(c)(iii). See Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).
Furthermore, based on the fame of Complainant's PEPSI mark it would be very difficult for Respondent to show that it had rights and legitimate interests in the disputed domain name. Any use by Respondent of the <pepsistuf.com> domain name, confusingly similar to Complainant's famous mark, would be an opportunistic attempt to attract customer's via Complainant's famous mark. See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).
Respondent's use of a confusingly similar domain name for sexually explicit material is not considered a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i). See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
The <pepsistuf.com> domain name is confusingly similar to Complainant's mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant. Registration of the <pepsistuf.com> domain name despite it being identical is evidence of bad faith pursuant to Policy ¶ 4(c)(iv). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
Furthermore, because of the famous and distinctive nature of Complainant's PEPSI marks, Respondent is thought to have been on notice of the existence of Complainant's mark at the time Respondent registered the infringing <pepsistuf.com> domain name. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Victoria's Secret et al v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith).
Respondent has registered other domain names infringing upon the marks of other famous trademarks. It has been found that a pattern of such conduct is evidence of bad faith. See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks); see also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where the Respondent engaged in the practice of registering domain names containing the trademarks of others).
Respondent has linked the confusingly similar <pepsistuf.com> domain name to an adult content website for commercial gain. This conduct is evidence of bad faith under Policy ¶ 4(b)(iv). See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that association of confusingly similar domain name with pornographic website can constitute bad faith); see also Youtv, Inc. v. Alemdar, FA 94243 (Nat. Arb. Forum Apr. 25, 2000) (finding bad faith where Respondent attracted users to his website for commercial gain and linked his website to pornographic websites); see also CCA Indus., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that “this association with a pornographic web site can itself constitute bad faith”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <pepsistuf.com>, be transferred from Respondent to Complainant.
James P. Buchele, Panelist
Dated: December 19, 2001
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