Pepsico, Inc. v. Richard Leeds d/b/a NeonGecko, Inc.
Claim Number: FA0208000117870
Complainant is Pepsico, Inc., Purchase, NY (“Complainant”) represented by Georges Nahitchevansky, of Fross Zelnick Lehrman & Zissu P.C. Respondent is Richard Leeds d/b/a NeonGecko, Inc., Seattle, WA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pepsibottling.us>, registered with Bulkregister.com, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 5, 2002; the Forum received a hard copy of the Complaint on August 6, 2002.
On August 8, 2002, Bulkregister.com, Inc. confirmed by e-mail to the Forum that the domain name <pepsibottling.us> is registered with Bulkregister.com, Inc. and that the Respondent is the current registrant of the name. Bulkregister.com, Inc. has verified that Respondent is bound by the Bulkregister.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On August 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 3, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
A timely Response was received and determined to be complete on September 3, 2002.
Respondent submitted an Additional Submission on how to view the subject site due to change in registrars. The Panel finds it unnecessary to view the site.
On September 17, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The <pepsibottling.us> domain name is confusingly similar to Complainant’s PEPSI and PEPSI-COLA marks.
Respondent has no rights or legitimate interests in the <pepsibottling.us> domain name.
Respondent registered and used the <pepsibottling.us> domain name in bad faith.
Respondent NGI contends that it registered and uses the domain name <pepsibottling.us> as a public forum and online chat site.
Respondent contends that appearance of trademarks on chat sites operating without the permission of the trademark owner is widespread and clearly a permitted use and that the appearance of a trademark in a URL is also a permitted use.
Respondent contends that its use of the subject domain name and corresponding web site provides a bona fide public forum constituting legitimate or fair use as “free speech” under the First Amendment.
Respondent requests the Panel to issue an advisory opinion concerning its use of other domain names than that in question. The Panel declines to issue an advisory opinion in matters not properly before the Panel and will consider only the domain name at issue.
Complainant is the owner of the world-famous PEPSI name and mark and THE PEPSI BOTTLING GROUP trade name. For more than a century, the PEPSI-COLA name and mark, or its shortened version, PEPSI, have been continuously used to identify one of the world’s most famous brands of soft drinks and soft drink concentrates. Complainant’s PEPSI brand of soft drinks and soft drink concentrates is currently sold in virtually all countries of the world, including, inter alia, the United States.
The PEPSI trademark is one of the most famous marks in the world. The recognition of the PEPSI mark transcends geographical barriers, languages, cultures, and products.
The PEPSI-COLA mark was used for the first time for soft drinks that were invented by Mr. Caleb Bradham in North Carolina, U.S.A., in the year 1898. PEPSI, the shortened version of the PEPSI-COLA mark, was used for the first time for soft drinks in 1911. The PEPSI mark is 93 years old. A valuation of the PEPSI brand and other brands conducted by Financial World in 1997 estimated the worth of the PEPSI brand as $9.37 billion (U.S.). The PEPSI-COLA brand has been ranked No. 2 on the list of the top ten grocery food brands in the United States. The trademark PEPSI and the various logos accompanying said mark that have evolved over the last 100 years have been registered in virtually every country in the world.
Complainant carries on an intensive global advertising campaign for its products in the form of advertisements in international magazines, newspapers, television, radio, outdoor signs, point-of-purchase displays, etc., and through sponsorship of major cultural and sporting events. The approximate worldwide advertising and promotional expenses incurred by Complainant since 1991 in respect of soft drink beverages sold under trademarks containing PEPSI, including the various device marks, are in excess of 200 million U.S. dollars annually. The promotion and exploitation of the PEPSI mark and PEPSICO trade name (which has been in use since 1965), and all related sales, advertising, and promotional activities have generated, and continue to generate, enormous sales of PEPSI products throughout the world.
Complainant is also the owner of the trade name THE PEPSI BOTTLING GROUP, which has been in use for over 20 years. Complainant has licensed THE Pepsi Bottling Group trade name to its largest manufacturer, seller and distributor of PEPSI beverages, a publicly traded company known as THE PEPSI BOTTLING GROUP. (Complainant owns a 40 percent equity in THE PEPSI BOTTLING GROUP).
The Pepsi Bottling Group, which has operations in the United States, Canada, Greece, Russia, Spain, and Turkey, generates approximately $8.5 billion of revenue annually. The Pepsi Bottling Group employs 40,000 people and operates 76 plants, with more than 300 distribution centers. The Pepsi Bottling Group not only has a significant presence within the U.S., but has a substantial international presence as well.
Complainant has also continuously owned numerous Internet domain names for active websites, which are formatives of its famous PEPSI mark, and THE PEPSI BOTTLING GROUP trade name, including, for example, <pepsi.com>, <pepsicola.com>, <pepsico.com>, <pepsiworld.com>, and <pepsicojobs.com>. Complainant also owns the domain name <pepsibottling.com>.
Respondent, NGI, runs a portal comprised of web sites providing online public forums (chat sites), communication, information, community, and commerce. NGI does not sell advertising on its web sites. NGI does not sell domain names. NGI provides chat sites and sells products, mostly stuffed animals. NGI is also an Amazon affiliate.
NGI has thousands of domain names and web sites, each with their own target audience, significantly chat sites, and frequently containing the word “talk” in them. NGI has developed a set of tools for the automated registration, construction, deployment and promotion of large numbers of web sites. By default, the NGI tools produce chat sites providing online chat and message posting. NGI has a patent pending for online chat systems. NGI intends to facilitate communications on chat sites on all subjects. Since June of 2000, using its automated system, NGI claims to have produced thousands of chat sites where millions of people participate in chats and post messages.
NGI waited until after the trademark holder’s preferential registration period to register the domain name in question. NGI claims to have invested significant time and money to develop and launch the site.
Respondent is using the domain name to generate web traffic to a chat web site known as KLAT. When a web user inputs the domain name, he or she is taken to a page within the KLAT web site. The primary URL for Respondent’s KLAT web site is <klat.com>.
The KLAT chat web site is a commercial web site that acts as a portal, providing numerous chat forums on such general topics as politics, recreation, religion, and sport as well as access to various web sites that offer products and services for sale. The KLAT web site also provides message boards and links to various web sites offering goods and/or services for sale. The chat forums within the KLAT web site consist of, in turn, sub-chat rooms purportedly dedicated to different topics within the subject matter of the general forum. The various sub-chat rooms that are linked to or part of the KLAT site offer for sale and/or promote a variety of goods and services.
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.”
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant has established its rights in the PEPSI and THE PEPSI BOTTLING GROUP mark through worldwide trademark registration and continuous use.
The disputed domain name <pepsibottling.us> is confusingly similar to Complainant’s PEPSI mark. The addition of the generic term “bottling” does not create the distinction necessary to overcome the confusing similarity between the disputed domain name and Complainant’s mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business).
Furthermore, Respondent’s <pepsibottling.us> domain name contains Complainant’s THE PEPSI BOTTLING GROUP trade name without the words “THE” and “GROUP”. Complainant has conducted a substantial amount of business under the trade name, THE PEPSI BOTTLING GROUP for over 20 years. Therefore, Complainant has common law rights in the distinct THE PEPSI BOTTLING GROUP trade name. See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law); see also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that Complainant has common law rights in the mark FISHTECH which it has used since 1982).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
The notoriety and fame of Complainant’s PEPSI trademark and THE PEPSI BOTTLING GROUP trade name, due to Complainant’s popular soft drink products, creates a presumption that no one else could be commonly known by the mark or the trade name. In fact, Respondent is not referred to as PEPSI, THE PEPSI BOTTLING GROUP or <pepsibottling.us> and never received a license or permission by Complainant to use the PEPSI mark or THE PEPSI BOTTLING GROUP trade name. Moreover, Respondent does not own any trademarks or service marks that reflect the <pepsibottling.us> domain name. Therefore, Respondent has no rights or legitimate interests in the <pepsibottling.us> domain name pursuant to Policy ¶¶ 4(c)(i) and (iii). 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). Nor is Respondent known by Complainant’s trade name or the domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name where Respondent is not known by the mark).
Because of the fame of the PEPSI mark and THE PEPSI BOTTLING GROUP trade name, use by Respondent of the disputed domain name results in Internet user confusion as to the source, sponsorship and affiliation of the <pepsibottling.us> domain name. As a result, Internet users looking for Complainant will be diverted to Respondent’s website. Such use does not constitute a bona fide offering of goods or services pursuant to usTLD Policy ¶ 4(c)(ii), or a legitimate noncommercial or fair use pursuant to usTLD Policy ¶ 4 (c)(iv). See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000)(finding that “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”).
Respondent contends that the legitimate use of a trademark by a non-trademark owner as a domain name for a chat and forum site was established by the Panel in X/Open Co. Ltd. v. Expeditious Invs., D2002-0294 (WIPO 2002) (permitted ownership and operation of <unix.com> as a “free speech” chat and forum site by a party other than the trademark holder). The Panel finds Expeditious Investments unpersuasive in view of the other persuasive authority cited herein. Furthermore, the registration of a domain name confusingly similar to someone else’s trademarked name impacts the trademark owner’s business and is a commercial use in connection with goods and services. E. & J. Gallo Winery v. Spider Webs Ltd., 286 F. 3d 270 (5th Cir. 2002).
“Domain names ... per se are neither automatically entitled to nor excluded from the protections of the First Amendment, and the appropriate inquiry is one that fully addresses particular circumstances presented with respect to each domain name." Name.Space Inc. v. Network Solutions, 202 F.3d 573, 585 (2d Cir. 2000). Although the content of Respondent’s site may be entitled to First Amendment protection, Respondent’s use of Complainant’s trademark in the domain name of its site is not so protected. Since Respondent’s domain name merely incorporates Complainant's trademark, it does not constitute a protectable, communicative message. See OBH, INC v. Spotlight Magazine, Inc., 86 F. Supp. 2d 176, 197 (W.D.N.Y. 2000)("Whether a particular domain name is entitled to protection under the First Amendment depends on the extent of its communicative message.").
Use of a Complainant’s mark to deceive Internet users into believing they are accessing Complainant’s web site is not protected by the First Amendment. Morrison & Foerster LLP v. Wick, 94 F. Supp. 2d 1125 (D. Colo. 2000). "Use of another's trademark is entitled to First Amendment protection only when the use of that mark is part of a communicative message, not when it is used merely to identify the source of a product." OBH, 86 F.Supp.2d at 197-198 (citing Planned Parenthood Fed’n of Am., Inc. v. Bucci, 1997 WL 133313, 42 U.S.P.Q.2d 1430 (S.D.N.Y.1997)). Respondent’s use of Complainant's mark as the domain name for its web site is more analogous to source identification than to a communicative message. See OBH, 86 F.Supp.2d at 198. The domain name identifies the web site as being that of Pepsi Bottling. Free speech rights do not extend to labeling or advertising products in a manner that conflicts with the trademark rights of others. See Yankee Pub. Inc. v. News Am. Pub. Inc., 809 F.Supp. 267, 275-276 (S.D.N.Y.1992).
Because Respondent’s use of Complainant’s mark in a domain name is not part of a communicative message, its use of Complainant’s mark is not protected by the First Amendment. See Gucci Am., Inc. v. Hall & Assocs., 135 F.Supp.2d 409, 60 U.S.P.Q.2d 1714 (S.D.N.Y. 2001). Respondent’s domain name in question does not involve the use of a trademarked term that has an additional expressive element or was part of a communicative message that goes beyond commercial identification of the source of a product. Although, the domain name links to web sites which have expressive content, the domain name in question has no expressive content so as to distinguish Respondent from Complainant.
While the content of Respondent’s website may enjoy First Amendment and fair use protection, those protections do not equate to rights or a legitimate interest with respect to a domain name which is confusingly similar to another’s trademark. See Spence-Chapin Servs. to Families and Children v. Spence-Chapin, LLC A/K/A Stanley Wynman, FA 105945 (Nat. Arb. Forum May 6, 2002) (Respondent is free to criticize, but the right to criticize does not extend to using the same or similar domain name, without any immediate element to distinguish Respondent, as an entity, from Complainant). Although, Respondent may have a right to refer to the mark in expressive content, the wholesale appropriation of Complainant's mark in a domain name, without any distinguishing material, creates confusion with Complainant's business and is not fair use merely for the purpose of comment. Council of Am. Survey Research Orgs. v. The Consumer Info. Org., LLC, AKA Pinelands Web Servs., D2002-0377 (WIPO July 19, 2002). No expressive content is apparent from the domain name itself; it is not sufficient that the expressive content may be apparent from the content of the site. Id.
“The unauthorized use of a trademark infringes the trademark holder’s rights if it is likely to confuse an “ordinary consumer’ as to the source or sponsorship of the goods.” See People for the Ethical Treatment of Animals, Inc. v. Doughney, 263 F.3d 359, 366 (4th Cir. 2001) (As to the right and legitimate interest in using the domain name for the purpose of comment, the domain name failed to convey the message that it was used for the purpose of comment or criticism). As Respondent is not making a legitimate noncommercial and fair use of the domain name, Respondent’s use of Complainant’s trade and trade name as the domain name for its web site is not protected by the First Amendment.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent has registered and is using the domain name in bad faith. Respondent has registered without authorization a domain name that is closely similar to Complainant’s famous PEPSI mark and THE PEPSI BOTTLING GROUP trade name. See PepsiCo, Inc. v. RaveClub Berlin, FA 101819 (Nat. Arb. Forum Dec. 19, 2001) (bad faith found where “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 [<pepsistuf.com>]”); see also Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., D2000-0163 (WIPO May 1, 2000) (bad faith is found 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”).
Respondent registered the disputed domain name in bad faith because Respondent had notice of Complainant’s rights in the PEPSI mark and THE PEPSI BOTTLING GROUP trade name when it registered <pepsibottling.us>. Registration of a domain name that incorporates a famous trademark, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to usTLD Policy ¶ 4(a)(iii). See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Victoria's Secret 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 constituted bad faith); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).
The domain name is closely similar to Complainant’s famous PEPSI mark and THE PEPSI BOTTLING GROUP trade name. Thus, likelihood of confusion must be presumed. See Chernow Communications, Inc. v. Jonathan D. Kimball, D2000-0119 (WIPO May 18, 2000). Given the unique character of the PEPSI mark and THE PEPSI BOTTLING GROUP trade name, consumers, on seeing the domain name, will reasonably believe that it is related to Complainant, thus creating a likelihood of confusion. See E. & J. Gallo Winery v. Spider Webs Ltd., 286 F. 3d 270 (5th Cir.2002) (The defendant registered and used the domain name <earnestandjuliogallo.com> for a web site critical of Gallo. The Court found that use of a domain name identical to Gallo’s trademarked name was not fair use and the defendant’s manner of use supported a finding of bad faith.).
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 <pepsibottling.us> be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
Dated: September 27, 2002
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