|Beklagter||null aka Alexander Zhavoronkov|
|Entscheider||Trotman, Clive N.A.|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PepsiCo, Inc. v. "null", aka Alexander Zhavoronkov
Case No. D2002-0562
1. The Parties
The Complainant is PepsiCo, Inc., postal address 700 Anderson Hill Road, Purchase, NY 10577-1444, United States of America. The Complainants authorized representatives in this proceeding are Fross Zelnick Lehrman & Zissu, P.C., 866 United Nations Plaza, New York, New York 10017, United States of America.
The Respondent acknowledges his name and address to be Alexander Zhavoronkov of Suite 328, 427 Princess Street, Kingston, Ontario, K7L 5S9, Canada.
2. The Domain Name and Registrar
The Domain Name the subject of this Complaint is <pepsi.biz>.
The Registrar of the Domain Name is DomainPeople, Inc., Vancouver, Canada.
3. Procedural History
3.1.The Complaint in respect of the disputed Domain Name was received by the WIPO Arbitration and Mediation Center ("the Center") by email on June 18, 2002, and in hard copy on June 21, 2002. Complainant states that a copy of the Complaint was sent to Respondent on June 17, 2002, by Federal Express and to Respondents administrative contact by email. A copy of the Complaint was sent to the Registrar, DomainPeople, Inc., on June 17, 2002, by Federal Express.
3.2.On June 21, 2002, verification was received from the Registrar, DomainPeople, Inc., that the disputed Domain Name <pepsi.biz> is registered in the name of "null", with an address given as 427 Princess Street, Kingston, Ontario, K7L 5S9, Canada. Telephone and email contacts were also provided. The Registrar confirmed that the Uniform Domain Name Dispute Resolution Policy applies to the disputed Domain Name.
3.3.On June 24, 2002, the Center determined (and the Administrative Panel has subsequently accepted) that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (Rules) approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").
3.4.On June 24, 2002, Formal Notification of Complaint and Commencement of Administrative Proceeding was sent by the Center to Respondent by post/courier (with enclosures) and email (without attachments). The Formal Notification was copied to Complainant, to ICANN and to the Registrar by email.
3.5.A Response was received from Respondent by email on July 9, 2002, and in hard copy on July 12, 2002. The Response stated that a copy was sent to Complainant by email on July 8, 2002, and that a hard copy was to follow by courier on July 9, 2002.
3.6.On July 15, 2002, Dr Clive Trotman, having provided the Center with a Statement of Acceptance and Declaration of Impartiality, was appointed as a single member Administrative Panel and notification was sent by email to Complainant, Respondent and the Administrative Panel. An electronic copy of the Complaint was sent by email to the Administrative Panel on July 16, 2002, and the hardcopy of the Case File was sent by courier.
3.7.An email from the Center dated July 23, 2002, informed the Panel that Complainant had submitted Supplemental Filings with five attachments and annexes. A further communication from the Center the following day stated that Respondent wanted to submit Supplemental Filings in response to those of Complainant.
4. Factual Background
4.1.Complainant, according to information it has supplied, is the owner of trademarks that are among the best known in the world, including PEPSI-COLA and PEPSI. They refer principally to trademarked soft drinks that have been marketed under the name PEPSI-COLA since 1898 and also as PEPSI since 1911. The book The Worlds Greatest Brands (MacMillan Business, 1996) lists PEPSI as one of the most famous trademarks and brands in the world. Financial World (1997) has estimated the worth of the PEPSI brand as $US9.37 billion. Other surveys have ranked the Complainant's trademarks extremely highly.
4.2.Complainant spends some $US200 million or more per year on advertising worldwide, including magazine, newspaper, television, radio, outdoor signs and point of sale advertising, and sponsorship of major cultural and sporting events. Complainant's logos are well known universally. Advertising has generated enormous sales of Complainant's products.
4.3.Complainant has maintained an Internet presence through Domain Names that incorporate the trademark PEPSI including <pepsi.com>, <pepsiworld.com>, <pepsibusiness.com>, <pepsiretail.com>, <pepsifountain.com>, <pepsivending.com>, <pepsico.com>, and <pepsicojobs.com>.
4.4.Respondent owns the Delaware-registered company number 35440-59, Precise Electronic Positioning Systems International, Inc., which abbreviates to P.E.P.S.I. Respondent says the activities of the company are described by its name. Respondent has provided information about his invention that he does not want publicized.
5. Parties Contentions
A. Contentions of Complainant
5.1.Complainant contends (paragraphs 5.2-5.8 below) that:
5.2.The dispute is properly within the scope of the Policy. The registration agreement, pursuant to which the Domain Name being the subject of this Complaint was registered, incorporates the Policy by reference.
5.3.The disputed Domain Name is identical to the PEPSI trademark in which Complainant has long established rights.
5.4.Respondent cannot demonstrate any rights or legitimate interest in the disputed Domain Name. Complainant has no relationship with Respondent and has not granted Respondent any license, permission or right to use Complainant's trademark PEPSI. Respondent is not legitimately known by the name PEPSI in the terms of the Policy.
5.5.Respondents registration and use of the disputed Domain Name is in bad faith in terms of the Policy. Respondent has registered the Domain Name in order to prevent Complainant from reflecting its mark in the corresponding Domain Name. Respondent's holding of the Domain Name is passive.
5.6.Internet users will be misled to Respondent's website through believing it is an authentic website of Complainant. Users who search for Complainant's trademark name are likely to be led to Respondent's Domain Name through confusion.
5.7.Respondent has acted in bad faith in the general terms of the Policy. Respondent has used the fictitious Registrant's name "null" in order to conceal his identity. Registration of a Domain Name identical to Complainants trademark without authorization is in itself evidence of bad faith. Respondent could only have registered the Domain Name in order to capitalize on Complainant's name and goodwill.
5.8.The remedy requested by Complainant is that the disputed Domain Name be transferred to Complainant, or cancelled with Complainant being given advance notice so that it can register the Domain Name for itself.
B. Contentions of Respondent
5.9.Contentions of Respondent include (paragraphs 5.10-5.16 below) that:
5.10.The Complaint is denied and the remedy requested by Complainant should be refused. Respondent cites a number of Domain Name decisions in which the name was not transferred and contends that they parallel the present case.
5.11.The disputed Domain Name and Complainant's trademark are admitted to be similar.
5.12.The word "Pepsi" has wide and ancient meanings.
5.13.Respondent has rights in the abbreviation P.E.P.S.I. through his ownership of the registered company Precise Electronic Positioning Systems International, Inc.
5.14.The disputed Domain Name has not been used in bad faith. Specifically, the Domain Name was not registered for purposes of sale. It was not registered to disrupt the business of Complainant, which owns other PEPSI Domain Names. It was not registered to attract users for commercial gain, and Respondent offers to add a suitable disclaimer on a website. A legitimate or fair use is intended in the near future. Respondent is working on development of the website and submits a copy of the front page. Complainant and Respondent are not competitors.
5.15.Domain Names exist containing adaptations of the word PEPSI or the word in combination that are not apparently controlled by Complainant.
5.16.Respondent's company logo is significantly different from Complainant's logo.
6. Discussion and Findings
Jurisdiction of Administrative Panel
6.1.Paragraph 4(a) of the Policy states:
"You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i)your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii)you have no rights or legitimate interests in respect of the domain name; and
(iii)your domain name has been registered and is being used in bad faith."
6.2.Complainant has made the relevant assertions as in 6.1 above. This dispute is properly within the scope of the Policy and the Administrative Panel has jurisdiction to decide the dispute.
6.3.Whilst the document hearing was in process, the Panel was advised by the Center that Supplemental Filings had been received from Complainant, followed by Respondent wanting to file a reply to the Supplemental Filing. The intention of Rules, 12, is clear:
"In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties."
The spirit of the UDRP and the prescribed Procedure is for Complainant to file a Complaint and for Respondent to have the opportunity to respond. There is no provision for Supplemental Filings unless called for by the Panel. In the present case Complainant and Respondent each presented comprehensive and detailed submissions in the first instance and had every opportunity to do so. The Panel did not find any circumstances sufficiently exceptional to request Supplemental Filings and declined to receive them.
Whether the Domain Name is Identical or Confusingly Similar to a Trademark
6.4.The Domain Name subject to this Complaint is <pepsi.biz>. The inclusion of <.biz> or equivalent in a Domain Name is inevitable and of no consequence for the determination of identity or confusing similarity. The remaining element of the disputed Domain Name is <pepsi> which is identical to Complainant's long-standing trademark PEPSI. The Panel finds for Complainant in terms of Paragraph 4(a)(i) of the Policy.
Whether Respondent Has Rights or Legitimate Interests in Respect of the Domain Name
6.5.Complainant must establish that Respondent has no rights or legitimate interests in respect of the disputed Domain Name. Complainant as owner of the trademark PEPSI has not granted to Respondent any license to use the trademark. Respondent is provided with illustrative circumstances in Paragraph 4(c) of the Policy whereby legitimate rights or interests may be established, and these are not exclusive.
6.6.Respondent appears to rely on his ownership of a company having the initials P.E.P.S.I. and by implication on Paragraphs 4(c)(i) and (ii) of the Policy. Paragraph 4(c)(i) requires:
"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;"
6.7.There is no reason to doubt the bona fide nature of Respondent's business or his right to use a Domain Name corresponding to his business name of Precise Electronic Positioning Systems International, Inc. However it is not bona fide to conduct the business through the name PEPSI since that does not in the ordinary sense correspond to Respondent's business name but corresponds with someone else's universally recognized trademark. Respondent cannot legitimize any use of or preparations to use the Domain Name <pepsi.biz> if he is not in any case entitled to use the name PEPSI.
6.8.Paragraph 4(c)(ii) requires that:
"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;". There is no evidence that Respondent has been commonly known by the Domain Name and this is conceded in Section 11 of the Response. On the contrary, Respondent has never been known by the Domain Name except in so far as he has recently assembled the business acronym P.E.P.S.I. emulating Complainant's trademark. Doing so does not create instant common knowledge or the right to infringe another's trademark.
6.9.Since the Respondent claims to have adopted the Domain Name for commercial reasons, there can be no claim of legitimate non-commercial use in the terms of Paragraph 4(c)(iii) of the Policy.
Whether Domain Name Has Been Registered and Is Being Used in Bad Faith
6.10.Paragraph 4(a)(iii) of the Policy requires Complainant to prove that the Domain Name has been registered and is being used in bad faith. Paragraph 4(b) lists four circumstances that shall be evidence of the registration and use of a Domain Name in bad faith, however these circumstances are illustrative only and bad faith may be found otherwise.
6.11.Complainant says that Respondent has used a fictitious name "null" to register the Domain Name and to conceal his identity, and Complainant cites precedent that such use of a fictitious name to register a Domain Name is of itself evidence of bad faith. Respondent offers a detailed explanation (Response Section 24 and Exhibit 8) as to how his name came to be registered accidentally as "null", essentially deriving from the takeover and transfer of records from the previous Registrar Regland.com to the present Registrar DomainPeople. Noting that Respondent gave other registration details enabling him to be reached, the Panel accepts Respondent's explanation on this point.
6.12.Having considered the totality of the evidence and Respondent's detailed explanations, the Panel concludes that the company name Precise Electronic Positioning Systems International, Inc., was chosen in the knowledge that its acronym P.E.P.S.I. matched the trademark PEPSI. The inference is so strong as to be inescapable that the Domain Name was chosen in the expectation that some users looking for a PEPSI website would be led to it, giving Respondent the benefit of valuable goodwill accrued in Complainant's name. This conclusion is underlined by the Domain Name comprising the single word PEPSI. It is not realistically plausible that Respondent, in his own words an "educated" person with "extensive entrepreneurial background", did not know of the existence and fame of Complainant's trademark PEPSI. Indeed Respondent makes no claim of ignorance of Complainant's mark and, at least after the event, displays extensive knowledge of Domain Names containing the word PEPSI and of Complainant's activities and logos, and a knowledge of how to research such questions. He acknowledges receipt of an IP Claim under the STOP [Start-up Trademark Opposition Policy for .BIZ]. Such blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith registration (Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163).
6.13.Respondent asserts determined preparations to publish the Domain Name as a website in the following terms: "The Domain Name is presently inactive because the STOP request based on the Complainant's initial IP claim has prevented the registrar from allowing the Respondent to use the Domain Name. Indeed, there can be no doubt that the Respondent has registered the Domain Name in good faith and would have used it if it was not for the Complainant's IP claim. The Respondent has invested substantial resources into developing the website, presentations and product documentation and will put the website online in less than two weeks after the dispute is resolved. Please see Exhibit 7 for the front page of the website." The Panel finds Respondent's position, his development and production work, together with his constructive prior knowledge that the Domain Name corresponded with one of the world's most famous trademarks, to be a clear confirmation that he has registered and used the Domain Name in bad faith within the meaning of Paragraph 4(a)(iii) of the Policy.
6.14.The Panel has considered the various precedents cited by Respondent and does not find a parallel to the present case. The matter of identity between the Domain Name and Complainant's trademark is beyond question. The difference between Complainant's and Respondent's company logos does not negate a finding of confusing similarity between the Domain Name and Complainant's trademark. The right to use a fairly general word or phrase trademarked by others is distinct from the right to appropriate the unique status of the trademark PEPSI, which even if it does mean digestion in Greek, is now a famous trademark. Respondent's unintended anonymity is not an issue. Respondent's "opportunistic bad faith", comparable to that found in Veuve Cliquot, is not in any way an innocent selection of a surname or business initials already in use.
6.15.In overview, Respondent submits in evidence pictures showing a prototype or mock-up Precise Electronic Positioning System. Regardless of the existence or efficacy of this invention, the company name Precise Electronic Positioning Systems International Inc., is duly registered and Respondent has every right to reflect its name in a Domain Name if he so wishes. Respondent does not, however, within the terms of the Policy, acquire thereby any right to adopt a Domain Name comprising an acronym contrived to reproduce exactly a world-famous trademark.
6.16.As concluded in 6.4 above Complainant succeeds under Paragraph 4(a)(i) of the Policy. As concluded in 6.7, 6.8 and 6.9 above, Complainant succeeds under Paragraph 4(a)(ii) of the Policy. As concluded in 6.12 and 6.13 above, Complainant succeeds under Paragraph 4(a)(iii) of the Policy. The Complainant has proven all three elements required by Paragraph 4(a) of the Policy and the Panel decides for Complainant and against Respondent.
The Decision of the Administrative Panel is that the disputed Domain Name <pepsi.biz> is confusingly similar to the trademark PEPSI in which Complainant has rights; that Respondent has no rights or legitimate interests in the disputed Domain Name; and that Respondent has registered and is using the disputed Domain Name in bad faith. The Domain Name <pepsi.biz> shall be transferred to the Complainant.
Dr Clive N. A. Trotman
Dated: July 30, 2002