PepsiCo, Inc. v. VILLIS NORMAN / rudi harders
Claim Number: FA1603001665807
Complainant is PepsiCo, Inc. (“Complainant”), represented by Robert H. Newman of Winston & Strawn LLP, Illinois, USA. Respondent is VILLIS NORMAN / rudi harders (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <pepsicofinance.com> and <pepsicofinanceeurope.org>, registered with eNom, Inc. and Domain.com, LLC.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 15, 2016; the Forum received payment on March 16, 2016.
On March 15, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <pepsicofinance.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On Mar 16, 2016, Domain.com, LLC confirmed by e-mail to the Forum that the <pepsicofinanceeurope.org> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 18, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 7, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@pepsicofinance.com, postmaster@pepsicofinanceeurope.org. Also on March 18, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 12, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in PEPSI and alleges that the disputed domain names are confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.
Complainant alleges that Respondent registered and used the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a formal Response in this proceeding.
Preliminary Issue: Multiple Respondents
The Panel notes that the WHOIS information regarding the <pepsicofinance.com> domain name lists “VILLIS NORMAN” as registrant and the <pepsicofinanceeurope.org> domain name lists “rudi harders” as registrant.
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Here, Complainant has alleged that the listed registrants are effectively aliases of the one controlling person or entity.
The evidence put forward in support of that allegation is (i) that the disputed domain names use the same registrant email address in the WHOIS record, (ii) both registrants are purportedly located in the United States, (iii) the domain names were registered on consecutive days, and (iv) at one time the domain names resolved to virtually identical websites.
Based on that evidence Panel allows the proceedings to continue against the named persons in this single Complaint who will herein be referred to together as “Respondent”.
The factual findings pertinent to the decision in this case are that:
1. Complainant has used the trademark PEPSI in connection with its food and beverage business;
2. Complainant owns United States Trademark Reg. No. 824,150, registered February 14, 1967 for PEPSI;
3. the disputed domain name, <pepsicofinance.com>, was registered on October 21, 2015, and the domain name, <pepsicofinanceeurope.org>, was registered on October 22, 2015;
4. the <pepsicofinance.com> domain name resolves to a website offering services unrelated to those offered by Complainant under the PEPSI trademark, namely, financial advisory services;
5. the <pepsicofinanceeurope.org> domain name resolves to a website containing hyperlinks to various third party websites; and
6. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark.
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 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 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)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its United States Patent and Trademark Office trademark registration, the Panel is satisfied that it has trademark rights in PEPSI (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”).
Complainant argues that the disputed domain names are confusingly similar to the trademark because they contain the mark and add matter of a non-distinctive nature either in the form of the gTLD and the generic terms “co”, “finance”, or “Europe”.
Panel is satisfied that the disputed domain names are confusingly similar to Complainant’s trademark since none of this added matter which distinguishes the domain name from the trademark in any significant way so as to avoid confusion; the invented word, PEPSI, remains the immediately recognizable and distinctive part of the domain names (see Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) finding <westfieldshopping.com> confusingly similar to the WESTFIELD trademark; see Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”).
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy with respect to both of the disputed domain names.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).
The publicly available WHOIS information provides registrant details which do not provide any prima facie evidence that Respondent might be commonly known by either of the disputed domain names. There is no evidence that Respondent has any trademark rights. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.
Complainant alleges that Respondent fails to use the disputed domain names in respect of a bona fide offering of goods or services or by way of legitimate noncommercial or fair use. In particular, Complainant provides evidence that the <pepsicofinance.com> domain name resolves to a website offering services unrelated to those offered by Complainant under the PEPSI trademark. The resolving website uses the words “Pepsico Finance Europe” and purports to offer financial advisory services. Further, the <pepsicofinanceeurope.org> domain name resolves to a website containing hyperlinks named, for example, “Finance Co”, “Corporate Finance Careers” and “Jobs Pepsico Warehouse”.
Panel finds that the Complainant has established prima facie cases that Respondent lacks rights or legitimate interests in the disputed domain names (see Prudential Ins. Co. of Am. v. Stonybrook Invs., LTD, FA 100182 (Nat. Arb. Forum Nov. 15, 2001) finding no rights or legitimate interests in the disputed domain name where the respondent was using the complainant’s mark to redirect Internet users to a website offering credit card services unrelated to those services legitimately offered under the complainant’s mark; Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
By failing to reply, Respondent has not rebutted such prima facie cases. The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names and so the Complainant has satisfied the second element of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain names were registered and used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel finds that Respondent’s actions fall squarely under paragraph 4(b)(iv) above. Panel has already found the disputed domain names to be confusingly similar to Complainant’s trademark. Complainant submits evidence of screenshots of the web pages corresponding with the disputed domain names. Panel finds that it is more likely than not that Respondent is benefitting commercially from those uses. In terms of paragraph 4(b)(iv) of the Policy, Panel finds that Respondent is using the domain names to attract, for commercial gain, internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark (see, Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED in respect of both disputed domain names.
Accordingly, it is Ordered that the <pepsicofinance.com> and <pepsicofinanceeurope.org> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: April 14, 2016
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