Pepsico, Inc. v. Becky a/k/a Joe Cutroni
Claim Number: FA0207000117014
Complainant is Pepsico, Inc., Purchase, NY (“Complainant”) represented by Georges Nahitchevansky, of Fross Zelnick Lehrman & Zissu P.C. Respondent is Becky Joe Cutroni, Boca Raton, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pepsicola.us>, registered with Blueberry Hill Communications.
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 July 19, 2002; the Forum received a hard copy of the Complaint on July 19, 2002.
On July 22, 2002, Blueberry Hill Communications confirmed by e-mail to the Forum that the domain name <pepsicola.us> is registered with Blueberry Hill Communications and that the Respondent is the current registrant of the name. Blueberry Hill Communications has verified that Respondent is bound by the Blueberry Hill Communications 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 July 23, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 12, 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 August 12, 2002.
On August 27, 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. as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
The <pepsicola.us> domain name is confusingly similar to Complainant’s PEPSI and PEPSI-COLA marks.
Respondent has no rights or legitimate interests in the <pepsicola.us> domain name.
Respondent registered and used the <pepsicola.us> domain name in bad faith.
Respondent asserts that she will make a noncommercial use and fair use of the disputed domain name pursuant to usDRP Policy ¶ 4(c)(iv) because she plans to use the domain name as a fan website. Respondent asserts that she has no intention of selling any products or tainting the PEPSI mark at the disputed domain name. Furthermore, Respondent notes that she has other fan websites that incorporate trademarked names including <waltdisneylife.com> and <newyorkrangershockey.com>.
Complainant is the owner of the world-famous PEPSI and PEPSI-COLA marks. 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 owns numerous worldwide trademark registrations for the PEPSI mark and related logos. The PEPSI and PEPSI-COLA marks are heavily advertised to the general public in international magazines, newspapers, television, radio, out-door signs, and point-of-purchase displays.
Complainant has not authorized Respondent to register or use the <pepsicola.us> domain name as a fan web site.
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 PEPSI-COLA marks through worldwide trademark registration and continuous use. Respondent’s domain name <pepsicola.us> is identical to Complainant’s PEPSI-COLA mark. The disputed domain name incorporates Complainant’s entire mark and merely omits the hyphen between PEPSI and COLA. The omission or the addition of a hyphen in a well-known mark within a domain name does not create a distinct mark capable of overcoming a claim of identical or confusing similarity. See Ritz-Carlton Hotel Co. v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark); see also Chernow Communications 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").
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
The notoriety and fame of Complainant’s PEPSI and PEPSI-COLA trademarks, 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-COLA or <pepsicola.us> and never received a license or permission by Complainant to use the PEPSI-COLA mark. Moreover, Respondent does not own any trademarks or service marks that reflect the <pepsicola.us> domain name. Therefore, Respondent has no rights or legitimate interests in the <pepsicola.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); see also 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).
Because of the fame of the PEPSI and PEPSI-COLA marks, any use by Respondent of the disputed domain name will result in Internet user confusion as to the source, sponsorship and affiliation of the <pepsicola.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 usDRP Policy ¶ 4(c)(ii), or a legitimate noncommercial or fair use pursuant to usDRP 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 asserts that it will make a noncommercial use and fair use of the disputed domain name pursuant to usDRP Policy ¶ 4(c)(iv) because it plans to use the domain name as a fan website. However, Respondent has not shown demonstrable preparations to use the domain name for a bona fide offering of goods or services. A Respondent’s “unsupported, self-serving allegations alone are insufficient to establish that [the] Respondent has rights or legitimate interests in respect to the domain name at issue.” Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002) (finding the Respondent’s assertion that she registered the domain name <foxstudios.biz> in order to get a website address for her planned dance studios, without evidentiary support, was insufficient to establish that she had rights or interests in respect to the domain name at issue).
Furthermore, Respondent’s proposed use of the domain name as a fan web site is unauthorized by Complainant. “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).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Paragraph 4(b) of the Policy provides examples of circumstances that, when present, will satisfy the “bad faith” requirement of Policy ¶ 4(a)(iii). Policy ¶ 4(b) states, however, that the enumerated examples are provided “without limitation.” Thus, the Panel is permitted to look outside the scope of Policy ¶ 4(b) to the totality of circumstances in order to make a bad faith determination. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).
Complainant’s PEPSI mark is internationally famous and is associated with Complainant’s soft drinks worldwide. Respondent registered the disputed domain name in bad faith because Respondent had notice of Complainant’s rights in the PEPSI-COLA and PEPSI mark when it registered <pepsicola.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 usDRP 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).
The <pepsicola.us> domain name is identical to Complainant's mark and the Internet user will likely believe that there is an affiliation between Respondent and Complainant. Registration of the <pepsicola.us> domain name despite it being identical is evidence of bad faith pursuant to Policy ¶ 4(b)(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”).
Respondent asserts that she did not register the disputed domain name in bad faith because she never intended to use the domain name for commercial gain, or to sell the domain name for profit. Respondent asserts that she registered the domain name in order to create a fan website. See Springsteen v. Burgar, D2000-1532 (WIPO Jan. 25, 2001) (finding that operating a fan site at the domain name <brucespringsteen.com> did not show an intent, for commercial gain, to misleadingly divert consumers). However, Respondent has not shown any evidence of preparations to use the domain name even as a fan site. Furthermore, Respondent’s use of the domain name as a fan site is unauthorized and would be an attempt to usurp the Complainant’ rights. See Kevin Spacey v. Alberta Hot Rods, FA 114437 (Nat.Arb. Forum August 1, 2002) (Respondent’s use of the <kevinspacey.com> domain name for an unauthorized fan site shows that Respondent is not making fair use of the domain name and appeared to be an attempt to usurp the Complainant’s rights therein). An unauthorized fan site would create a likelihood of confusion with Complainants’ marks as to the source, sponsorship, affiliation or endorsement of the web site. See George Harrison v. Lovearth.net, FA 97085 (Nat. Arb. Forum June 4, 2001) (“the better weight of authority and the better rule is to the effect that ‘fan sites,’. . . do cause confusion as to their source, sponsorship, affiliation, or endorsement . . . .”).
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 <pepsicola.us> be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
Dated: September 3, 2002
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