PepsiCo, Inc. v. Bimal Shah
Claim Number: FA0201000103934
PARTIES
Complainant
is PepsiCo, Inc., Purchase, NY
(“Complainant”) represented by Carla C.
Calcagno, of Howrey, Simon, Arnold
& White. Respondent is Bimal Shah, Essex, Great Britain
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <pepsico.info>,
registered with 1st Domain.net.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on January 18, 2002; the Forum received a hard copy of the
Complaint on January 21, 2002.
On
January 22, 2002, 1st Domain.net confirmed by e-mail to the Forum that the
domain name <pepsico.info> is
registered with 1st Domain.net and that Respondent is the current registrant of
the name. 1st Domain.net has verified
that Respondent is bound by the 1st Domain.net 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
January 22, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of February 11, 2002 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 postmaster@pepsico.info 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.
On
February 18, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks
Johnson as Panelist.
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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
assertions:
The
disputed domain name <pepsico.info> is identical to PEPSICO, a
registered mark in which Complainant holds rights. Respondent has no rights or legitimate interests in respect of
the disputed domain name. Respondent
registered and used the disputed domain name in bad faith.
B.
Respondent did not submit a Response in this proceeding.
FINDINGS
Complainant is a famous multi-national
company, which engages in the sale and manufacture of soft drink and snack food
products throughout the world. Since
1911, Complainant has continuously used the PEPSI and PEPSI-COLA trademarks in
commerce related to its soft drink business.
Complainant has continuously used the trade name PepsiCo, Inc., in
connection with its soft drink and snack food business since 1965.
Complainant registered the PEPSI
trademark on the Principal Register of the United States Patent and Trademark
Office as Registration No. 824,150 on February 14, 1967. Complainant also holds registered trademarks
in PEPSICO in the United Kingdom, Germany, Spain, and Japan, dating back as
early as 1967. Complainant registered
the PEPSICO mark in the U.K. on May 19, 1972, as Registration No. 992,395.
Complainant sells three of the top ten
soft drinks in the U.S. and accounts for about one-third of the $58 billion
soft drink market. In 1999, Complainant
and its subsidiaries generated over $20 billion in total net sales. Complainant has expended hundreds of
millions of dollars in the advertisement and promotion of its products,
creating substantial goodwill in its marks.
Respondent registered the disputed domain
name on September 12, 2001, and has used the domain name to redirect Internet
users to a website with pornographic images.
Respondent also posted a notice on its website stating that the domain
name was for sale.
DISCUSSION
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 and
draw such inferences it considers appropriate pursuant to paragraph 14(b) 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 Respondent is identical or confusingly similar to
a trademark or service mark in which Complainant has rights; and
(2)
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.
Complainant has established its rights in
the PEPSICO mark through registration in Germany, the United Kingdom, Spain,
and Japan. The disputed domain name is
identical to Complainant’s mark. See
Chefs Collaborative v. Guest Choice Network, FA 102484 (Nat. Arb. Forum
Jan. 16, 2002) (“Respondent’s <chefscollaborative.info> domain name is
identical to Complainant’s [CHEFS COLLABORATIVE ] mark
because it incorporates the entirety of Complainant's mark and merely adds the
top-level domain ‘.info’”); see also Snow
Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding
that the domain name <termquote.com> is identical to Complainant’s
TERMQUOTE mark).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Complainant has established its rights to
and interests in the PEPSICO mark.
Because Respondent has not submitted a Response in this matter, the
Panel may presume Respondent has no such rights or 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).
Respondent’s use of the disputed domain
name, which is identical to Complainant’s mark, to host pornographic material
cannot be deemed a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). 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); see also Brown &
Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding
that infringing on another's well-known mark to provide a link to a
pornographic site is not a legitimate or fair use).
No evidence suggests that Respondent is
commonly known by “pepsico” or “pepsico.info” pursuant to Policy ¶ 4(c)(ii);
Respondent is only known to this Panel as Bimal Shah. 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 when Respondent is not known
by the mark); see also Victoria’s
Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient
proof that Respondent was not commonly known by a domain name confusingly
similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well
established use of the mark).
Further, Respondent’s apparent
willingness to transfer the domain name for an unnamed price also suggests it
has no rights or interests in the name.
See J. Paul Getty Trust v.
Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding
rights or legitimate interests do not exist when one has made no use of the
websites that are located at the domain names at issue, other than to sell the
domain names for profit); see also Hewlett-Packard
Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31,
2000) (finding no rights or legitimate interests where the Respondent
registered the domain name with the intention of selling the domain name).
The Panel finds that Respondent has no
rights or legitimate interests in the disputed domain name and that Policy ¶
4(a)(ii) has thus been satisfied.
Complainant urges that Respondent acted
in bad faith in registering and using the disputed domain name as shown
here. Respondent’s posted offer to sell
the disputed domain name permits the inference that Respondent acted in bad
faith in registering and using the disputed domain name pursuant to Policy ¶
4(b)(i). It is insignificant that
Respondent did not name a specific price for the domain name since it is
apparent Respondent’s intent from the outset was to sell the domain name. See Educational Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000)
(finding that a general offer of sale combined with no legitimate use of the
domain name constitutes registration and use in bad faith); see also VARTEC TELECOM, INC. v. Jim Olenbush,
D2000-1092 (WIPO Sept. 28, 2000) (finding bad faith registration where it was
apparent from the general e-mail Respondent sent to the Complainant, in which
it offered the domain name for sale, that it registered the domain in order to
sell it for far more than it paid).
Further, Respondent’s use of a domain
name that is identical to Complainant’s PEPSICO mark in order to display
pornographic images also suggests bad faith registration and use. See Brown & Bigelow, Inc. v. Rodela, supra, (finding that
use of another’s well-known mark to provide a link to a pornographic site is
evidence of bad faith registration and use); see also MatchNet plc. v. MAC Trading, supra,
(finding that the association of a confusingly similar domain name with a
pornographic website can constitute bad faith).
Accordingly, the Panel finds that Policy
¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
should be hereby granted.
Accordingly, it is Ordered that the <pepsico.info> domain name be transferred
from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: March 4, 2002.
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