WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

PepsiCo, Inc. v. Alexandra Fard

Case No. D2011-1169

1. The Parties

The Complainant is PepsiCo, Inc. of Purchase, New York, United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.

The Respondent is Alexandra Fard of Sundbyberg, Sweden.

2. The Domain Name and Registrar

The disputed domain name <summertimeispepsitime.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 10, 2011. On July 11, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 13, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 11, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2011.

The Center appointed John Swinson as the sole panelist in this matter on August 22, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is PepsiCo, Inc., a North Carolina food and beverage corporation. The Complainant owns numerous registered trade marks incorporating PEPSI.

The Respondent is Alexandra Fard. The Respondent did not file a Response and consequently, little information is known about the Respondent.

The disputed domain name was registered on July 5, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following submissions:

Identical or Confusingly Similar

The Complainant owns a large number of registered trade marks throughout the world for PEPSI and other trade marks incorporating PEPSI.

The Complainant also owns the domain name <pepsi.com> and various other domain names.

The Complainant’s trade marks are very well-known and the Complainant enjoys a strong reputation throughout the world. The Complainant is the second largest food and beverage company in the world with an annual revenue of nearly USD 60 billion and offers products to consumers in more than 200 countries including the United States and Sweden. The Complainant has been using the PEPSI marks for nearly 100 years. The Complainant’s Pepsi brand is extremely valuable.

Further, the Complainant conducts extensive global advertising, marketing and promotional campaigns. Importantly, the Complainant maintains a significant presence in Europe.

As such, the Complainant’s PEPSI marks are well-known throughout the world by millions, if not billions, of people. The PEPSI marks have acquired a high degree of public recognition and distinctiveness as a symbol of high quality products offered by the Complainant and embody valuable reputation and goodwill belonging exclusively to the Complainant.

Moreover, in June 2011, the Complainant publicly announced and launched a new advertising campaign under the slogan “Sumer Time is Pepsi Time.” The campaign has been running on television and the Internet since late June 2011 and has garnered significant attention. On June 2, 2011, the Complainant filed a trade mark application to register the SUMMER TIME IS PEPSI TIME mark in the United States. The application is still pending.

The Respondent registered the disputed domain name on July 5, 2011, shortly after the Complainant announced its “Sumer Time is Pepsi Time” campaign and more than one month after the Complainant filed its application to register the SUMMER TIME IS PEPSI TIME mark in the United States.

The disputed domain name is identical or confusingly similar to the Complainant’s PEPSI marks as it wholly incorporates the mark, PEPSI.

Moreover, the disputed domain name is identical to the Complainant’s SUMMER TIME IS PEPSI TIME mark.

Rights or Legitimate Interests

The Respondent cannot demonstrate any rights or legitimate interests in the disputed domain name.

The Respondent registered the disputed domain name long after the Complainant established rights in its PEPSI marks. Specifically, with respect to the SUMMER TIME IS PEPSI TIME mark, the disputed domain name was registered after the Complainant publicly unveiled the related advertising campaign and after the trade mark application was filed.

Further, the Respondent’s unauthorized use of the disputed domain name cannot be legitimate as the PEPSI marks are so well-known and recognized. (See e.g., Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163)

Moreover, the Respondent cannot demonstrate any rights or legitimate interests in the disputed domain name for the following reasons:

There is no relationship between the Complainant and the Respondent giving rise to any license, permission, or other rights by which the Respondent could own or use the disputed domain name incorporating the Complainant’s marks;

The Respondent is not an authorized distributor or manufacturer of the Complainant’s products and there has never been any business relationship between the Complainant and the Respondent;

The Complainant has not sponsored or endorsed the Respondent’s activities in any respect and has not consented to the Respondent’s use of its marks;

The disputed domain name is not a name or nickname of the Respondent and nor is it in any other way identified with the Respondent;

The Respondent has never made a legitimate, noncommercial or fair use of the disputed domain name. The Respondent has instead attempted to create a false association between the Respondent and the Complainant and trade upon of the goodwill associated with the Complainant’s marks by registering the disputed domain name which incorporates the Complainant’s marks. This is not a bona fide offering of goods and services and does not constitute a legitimate interest and use.

That the Complainant’s registration for its SUMMER TIME IS PEPSI TIME mark has not yet been issued is of no consequence. This is particularly so given the Complainant has pre-existing rights in its PEPSI marks and the “Sumer Time is Pepsi Time” campaign commenced prior to the Respondent’s registration of the disputed domain name.

It is also clear that the Respondent lacks rights and legitimate interests in the disputed domain name given the Respondent has used the disputed domain name to either divert business from the Complainant, prevent the Complainant from using its own SUMMER TIME IS PEPSI TIME mark in a corresponding domain name, or for the Respondent’s commercial or personal gain. Until July 8, 2011, the Respondent has used the disputed domain name to direct Internet users to a webpage that prominently promoted Coca-Cola and Coke products of the Complainant’s primary competitor and identical to those for which the Complainant uses its marks.

The timing of the Respondent’s registration of the disputed domain name, that is only days after the official launch of the “Sumer Time is Pepsi Time” campaign, is clear evidence that the only reason the Respondent registered the disputed domain name was that she knew of the mark and wanted to use it either for personal gain or in order to divert Internet traffic away from the Complainant and to its competitor. This is further reinforced by the fact that the Pepsi brand is famous all over the world, and the Respondent has no rights in the relevant terms.

Registered and Used in Bad Faith

That the Respondent registered the disputed domain name in bad faith is clear from the fact that the disputed domain name wholly encompasses the famous PEPSI mark and was acquired long after the PEPSI marks became famous. Further, the Respondent’s bad faith registration and use of the disputed domain name is also established by the fact that the disputed domain name wholly encompasses the Complainant’s SUMMER TIME IS PEPSI TIME mark and slogan.

Given that the Complainant’s PEPSI marks are so well-known, the Respondent could only have registered or acquired the disputed domain name with an intent to capitalize on the valuable goodwill associated with the Complainant’s marks.

Importantly, the content posted on the website resolving from the disputed domain name proves that the Respondent had actual knowledge of the Complainant and its PEPSI marks.

Further, the Respondent’s bad faith registration and use is clear from the fact that the Respondent registered the disputed domain name after the Complainant publicly launched its “Sumer Time is Pepsi Time” advertising campaign.

The Respondent’s bad faith is also evidenced by the fact that the Respondent has intentionally attempted to attract Internet users, for personal or commercial gain, to a website promoting the Complainant’s primary competitor and competing products, by using a domain name that is confusingly similar to the Complainant’s marks. The disputed domain name creates a likelihood of confusion with the Complainant’s marks as to the source, affiliation, or endorsement of the disputed domain name and the website to which it resolves. The disputed domain name will cause confusion to Internet users even if they later realize that the disputed domain name is not connected to the Complainant after viewing the content of the website resolving from the disputed domain name.

The Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The onus of proving these elements is on the Complainant.

A. Procedural Issues

The Respondent did not file a Response. This does not automatically result in a decision in favor of the Complainant. (See e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413; M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941; Mancini’s Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-1036; Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383).

However, the Panel may draw appropriate inferences from a respondent’s default. Nonetheless, a complainant must establish all three elements of paragraph 4(a) of the Policy. Where a complaint is based wholly on unsupported assertions, the requested remedy will be denied despite no response having been filed.

B. Identical or Confusingly Similar

The Complainant owns numerous registered trade marks, throughout the world, incorporating PEPSI.

The disputed domain name is confusingly similar to the Complainant’s mark PEPSI as the disputed domain name wholly incorporates the term “Pepsi” and the term “Pepsi” is the dominant element of the disputed domain name. The other words in the disputed domain name fail to mitigate against this similarity and only qualify and relate to the term “Pepsi.” It is therefore clear that the disputed domain name and the Complainant’s trade marks are confusingly similar and as such, the Complainant must necessarily succeed on the first element of the Policy.

The Panel does not make any finding in respect of whether trade mark rights exist in SUMMER TIME IS PEPSI TIME. In any event, such a finding would have no impact on the ultimate resolution of this element.

C. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy provides that a complainant must establish that a respondent has no rights or legitimate interests in the disputed domain name. Pursuant to paragraph 4(c) of the Policy, there are a number of ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name.

Here, the Complainant has succeeded in establishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. (See Section 5.A, above). Given the Respondent did not file a Response, the prima facie case established by the Complainant has not been rebutted. As such, the Complainant must necessarily succeed on this point.

Key to the Panel’s finding on this point is the fact that the disputed domain name appears to have diverted Internet users to the primary competitor of the Complainant in the past. In such a case, the Respondent necessarily cannot be said to be making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. (See e.g., PepsiCo, Inc. v. Charlie Chang, WIPO Case No. D2007-0491).

Further, the Panel agrees with the Complainant that the strong reputation of the Complainant’s marks, the timing of the registration of the disputed domain name and the precise domain name chosen, indicate an absence of rights or legitimate interests in the disputed domain name on the part of the Respondent.

Although the Panel makes no finding as to whether the Complainant owns trade mark rights in SUMMER TIME IS PEPSI TIME, the fact that the disputed domain name was registered very shortly after this campaign commenced and incorporates the term in its entirety, is a relevant factor here. It appears the disputed domain name was selected for the sole purpose of profiting from the Complainant’s trade marks, reputation and goodwill and in such a case, no rights or legitimate interests can be found. (See e.g.,Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Madonna Ciccone p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847).

Therefore, the Panel concludes that the Respondent does not have any rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith. However, the circumstances set out in the Policy are not exhaustive.

The Panel finds that on the facts it is plain that the Respondent registered and used the disputed domain name in bad faith.

The Panel refers to PepsiCo, Inc. v. "null", aka Alexander Zhavoronkov, WIPO Case No. D2002-0562 where it was stated that “blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith registration.”

Further, the Panel agrees that the Complainant’s marks are extremely well known and as such, the Respondent purposefully and knowingly registered the disputed domain name for the purposes of attracting customer’s by creating a likelihood of confusion in their minds with the Complainant’s trade marks and trade off the Complainant’s goodwill. (See e.g. Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., supra).

Moreover, and as discussed above, the fact that the website resolving from the disputed domain name appears to have promoted products of the Complainant’s primary competitor in the past is strong evidence of bad faith. (See e.g., PepsiCo, Inc. v. Charlie Chang, supra; Merrill Lynch & Co., Inc., v. Andrew Miller, WIPO Case No. D2008-1496).

Finally, the timing of registration of the disputed domain name is also indicative of bad faith. (See e.g., Forest Laboratories, Inc. v. Mcse Braindumps / Leif Nissen, WIPO Case No. D2007-1494; see also, Section 6.C, above).

Therefore, the panel finds that the Respondent registered and used the disputed domain name in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <summertimeispepsitime.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Dated: September 5, 2011