Pepsico, Inc. v. Richard Leeds d/b/a
NeonGecko, Inc.
Claim Number: FA0208000117870
PARTIES
Complainant
is Pepsico, Inc., Purchase, NY
(“Complainant”) represented by Georges
Nahitchevansky, of Fross Zelnick
Lehrman & Zissu P.C. Respondent
is Richard Leeds d/b/a NeonGecko, Inc., Seattle, WA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <pepsibottling.us>,
registered with Bulkregister.com, Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 5, 2002; the Forum received a hard copy of the
Complaint on August 6, 2002.
On
August 8, 2002, Bulkregister.com, Inc. confirmed by e-mail to the Forum that
the domain name <pepsibottling.us>
is registered with Bulkregister.com, Inc. and that the Respondent is the
current registrant of the name. Bulkregister.com,
Inc. has verified that Respondent is bound by the Bulkregister.com, Inc.
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
August 12, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
3, 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 September 3, 2002.
Respondent
submitted an Additional Submission on how to view the subject site due to
change in registrars. The Panel finds
it unnecessary to view the site.
On September 17, 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. (Ret.) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<pepsibottling.us> domain name
is confusingly similar to Complainant’s PEPSI and PEPSI-COLA marks.
Respondent
has no rights or legitimate interests in the <pepsibottling.us> domain name.
Respondent
registered and used the <pepsibottling.us>
domain name in bad faith.
B.
Respondent
Respondent NGI contends that
it registered and uses the domain name <pepsibottling.us> as a public forum and online
chat site.
Respondent contends that appearance of
trademarks on chat sites operating without the permission of the trademark
owner is widespread and clearly a permitted use and that the appearance of a
trademark in a URL is also a permitted use.
Respondent contends that its use of the
subject domain name and corresponding web site provides a bona fide public
forum constituting legitimate or fair use as “free speech” under the First
Amendment.
Respondent requests the Panel to issue an advisory opinion
concerning its use of other domain names than that in question. The Panel declines to issue an advisory
opinion in matters not properly before the Panel and will consider only the
domain name at issue.
FINDINGS
Complainant is
the owner of the world-famous PEPSI name and mark and THE PEPSI BOTTLING GROUP
trade name. 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’s PEPSI brand of soft drinks and soft drink concentrates is
currently sold in virtually all countries of the world, including, inter
alia, the United States.
The PEPSI trademark is one of the most
famous marks in the world. The
recognition of the PEPSI mark transcends geographical barriers, languages,
cultures, and products.
The PEPSI-COLA mark was used for the
first time for soft drinks that were invented by Mr. Caleb Bradham in North
Carolina, U.S.A., in the year 1898.
PEPSI, the shortened version of the PEPSI-COLA mark, was used for the
first time for soft drinks in 1911. The
PEPSI mark is 93 years old. A valuation
of the PEPSI brand and other brands conducted by Financial World in 1997
estimated the worth of the PEPSI brand as $9.37 billion (U.S.). The PEPSI-COLA brand has been ranked No. 2
on the list of the top ten grocery food brands in the United States. The trademark PEPSI and the various logos
accompanying said mark that have evolved over the last 100 years have been
registered in virtually every country in the world.
Complainant carries on an intensive
global advertising campaign for its products in the form of advertisements in
international magazines, newspapers, television, radio, outdoor signs,
point-of-purchase displays, etc., and through sponsorship of major cultural and
sporting events. The approximate
worldwide advertising and promotional expenses incurred by Complainant since
1991 in respect of soft drink beverages sold under trademarks containing PEPSI,
including the various device marks, are in excess of 200 million U.S. dollars
annually. The promotion and
exploitation of the PEPSI mark and PEPSICO trade name (which has been in use
since 1965), and all related sales, advertising, and promotional activities
have generated, and continue to generate, enormous sales of PEPSI products
throughout the world.
Complainant is also the owner of the
trade name THE PEPSI BOTTLING GROUP, which has been in use for over 20
years. Complainant has licensed THE Pepsi Bottling Group trade name to
its largest manufacturer, seller and distributor of PEPSI beverages, a publicly
traded company known as THE PEPSI BOTTLING GROUP. (Complainant owns a 40
percent equity in THE PEPSI BOTTLING GROUP).
The Pepsi
Bottling Group, which has
operations in the United States, Canada, Greece, Russia, Spain, and Turkey,
generates approximately $8.5 billion of revenue annually. The Pepsi Bottling Group employs 40,000
people and operates 76 plants, with more than 300 distribution centers. The
Pepsi Bottling Group not only has a significant presence within the U.S.,
but has a substantial international presence as well.
Complainant has also continuously owned
numerous Internet domain names for active websites, which are formatives of its
famous PEPSI mark, and THE PEPSI BOTTLING GROUP trade name, including, for
example, <pepsi.com>, <pepsicola.com>, <pepsico.com>,
<pepsiworld.com>, and
<pepsicojobs.com>. Complainant
also owns the domain name <pepsibottling.com>.
Respondent, NGI, runs a portal comprised of web sites providing
online public forums (chat sites), communication, information, community, and
commerce. NGI does not sell advertising
on its web sites. NGI does not sell
domain names. NGI provides chat sites
and sells products, mostly stuffed animals.
NGI is also an Amazon affiliate.
NGI has thousands of domain names and web sites, each with their
own target audience, significantly chat sites, and frequently containing the
word “talk” in them. NGI has developed
a set of tools for the automated registration, construction, deployment and
promotion of large numbers of web sites.
By default, the NGI tools produce chat sites providing online chat and
message posting. NGI has a patent
pending for online chat systems. NGI
intends to facilitate communications on chat sites on all subjects. Since June of 2000, using its automated
system, NGI claims to have produced thousands of chat sites where millions of
people participate in chats and post messages.
NGI
waited until after the trademark holder’s preferential registration period to
register the domain name in question.
NGI claims to have invested significant time and money to develop and
launch the site.
Respondent is using the domain name to
generate web traffic to a chat web site known as KLAT. When a web user inputs the domain name, he
or she is taken to a page within the KLAT web site. The primary URL for Respondent’s KLAT web site is
<klat.com>.
The KLAT chat web site is a commercial
web site that acts as a portal, providing numerous chat forums on such general
topics as politics, recreation, religion, and sport as well as access to
various web sites that offer products and services for sale. The KLAT web site
also provides message boards and links to various web sites offering goods
and/or services for sale. The chat forums within the KLAT web site consist of,
in turn, sub-chat rooms purportedly dedicated to different topics within the
subject matter of the general forum.
The various sub-chat rooms that are linked to or part of the KLAT site
offer for sale and/or promote a variety of goods and services.
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.”
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 THE PEPSI BOTTLING GROUP mark through worldwide trademark
registration and continuous use.
The disputed domain name <pepsibottling.us> is confusingly
similar to Complainant’s PEPSI mark. The
addition of the generic term “bottling” does not create the distinction
necessary to overcome the confusing similarity between the disputed domain name
and Complainant’s mark. See Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of Complainant combined with a generic word
or term); see also Sony Kabushiki
Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive word…nor the suffix ‘.com’
detract from the overall impression of the dominant part of the name in each
case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see
also Marriott Int’l v. Café au lait,
FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain
name <marriott-hotel.com> is confusingly similar to Complainant’s
MARRIOTT mark); see also Space Imaging LLC v.
Brownwell, AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where Respondent’s domain name combines
Complainant’s mark with a generic term that has an obvious relationship to
Complainant’s business).
Furthermore, Respondent’s <pepsibottling.us> domain name
contains Complainant’s THE PEPSI BOTTLING GROUP trade name without the words
“THE” and “GROUP”. Complainant has
conducted a substantial amount of business under the trade name, THE PEPSI
BOTTLING GROUP for over 20 years.
Therefore, Complainant has common law rights in the distinct THE PEPSI
BOTTLING GROUP trade name. See Keppel TatLee Bank v. Taylor, D2001-0168
(WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said
name [<keppelbank.com>] in connection with its banking business, it has
acquired rights under the common law); see also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000)
(finding that Complainant has common law rights in the mark FISHTECH which it
has used since 1982).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
The notoriety and fame of Complainant’s PEPSI trademark and THE
PEPSI BOTTLING GROUP trade name, 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, THE PEPSI BOTTLING GROUP or <pepsibottling.us>
and never received a license or permission by Complainant to use the PEPSI mark
or THE PEPSI BOTTLING GROUP trade name.
Moreover, Respondent does not own any trademarks or service marks that
reflect the <pepsibottling.us> domain name. Therefore, Respondent has no rights or
legitimate interests in the <pepsibottling.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). Nor is Respondent known by Complainant’s
trade name or the domain name pursuant to Policy ¶ 4(c)(ii). 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 where Respondent
is not known by the mark).
Because of the fame of the PEPSI mark and THE PEPSI BOTTLING GROUP
trade name, use by Respondent of the disputed domain name results in Internet
user confusion as to the source, sponsorship and affiliation of the <pepsibottling.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 usTLD Policy ¶ 4(c)(ii), or a
legitimate noncommercial or fair use pursuant to usTLD 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 contends that the legitimate use of a trademark by a
non-trademark owner as a domain name for a chat and forum site was established
by the Panel in X/Open Co. Ltd. v. Expeditious Invs., D2002-0294 (WIPO
2002) (permitted ownership and
operation of <unix.com> as a “free speech” chat and forum site by a party
other than the trademark holder). The
Panel finds Expeditious Investments unpersuasive in view of the other
persuasive authority cited herein.
Furthermore, the registration of a domain name confusingly similar to
someone else’s trademarked name impacts the trademark owner’s business and is a
commercial use in connection with goods and services. E. & J. Gallo Winery v. Spider Webs Ltd.,
286 F. 3d 270 (5th Cir. 2002).
“Domain
names ... per se are neither automatically entitled to nor
excluded from the protections of the First Amendment, and the appropriate
inquiry is one that fully addresses particular circumstances presented with
respect to each domain name." Name.Space
Inc. v. Network Solutions, 202 F.3d 573, 585 (2d Cir. 2000). Although the content of Respondent’s site
may be entitled to First Amendment protection, Respondent’s use of
Complainant’s trademark in the domain name of its site is not so
protected. Since
Respondent’s domain name merely incorporates Complainant's trademark, it does
not constitute a protectable, communicative message. See OBH, INC v. Spotlight Magazine, Inc., 86
F. Supp. 2d 176, 197 (W.D.N.Y. 2000)("Whether a particular domain name is
entitled to protection under the First Amendment depends on the extent of its
communicative message.").
Use of a Complainant’s mark to deceive Internet users into
believing they are accessing Complainant’s web site is not protected by the
First Amendment. Morrison &
Foerster LLP v. Wick, 94 F. Supp. 2d 1125 (D. Colo.
2000). "Use of another's trademark
is entitled to First Amendment protection only when the use of that mark is
part of a communicative message, not when it is used merely to identify the
source of a product." OBH, 86 F.Supp.2d at 197-198 (citing Planned
Parenthood Fed’n of Am., Inc. v. Bucci, 1997 WL 133313, 42
U.S.P.Q.2d 1430 (S.D.N.Y.1997)).
Respondent’s use of Complainant's mark as the domain name for its web
site is more analogous to source
identification than to a communicative message. See OBH, 86 F.Supp.2d at 198. The domain name identifies the web site as
being that of Pepsi Bottling. Free
speech rights do not extend to labeling or advertising products in a manner
that conflicts with the trademark rights of others. See Yankee Pub.
Inc. v. News Am. Pub. Inc., 809 F.Supp. 267, 275-276 (S.D.N.Y.1992).
Because Respondent’s use of Complainant’s mark in a domain
name is not part of a communicative message, its use of Complainant’s mark is
not protected by the First Amendment. See
Gucci Am., Inc. v. Hall & Assocs., 135 F.Supp.2d 409, 60 U.S.P.Q.2d
1714 (S.D.N.Y. 2001). Respondent’s
domain name in question does not involve the use of a trademarked term that has
an additional expressive element or was part of a communicative message that
goes beyond commercial identification of the source of a product. Although, the domain name links to web sites
which have expressive content, the domain name in question has no expressive
content so as to distinguish Respondent from Complainant.
While
the content of Respondent’s website may enjoy First Amendment and fair use
protection, those protections do not equate to rights or a legitimate interest
with respect to a domain name which is confusingly similar to another’s
trademark. See Spence-Chapin Servs. to Families and Children v.
Spence-Chapin, LLC A/K/A Stanley Wynman, FA 105945 (Nat. Arb. Forum May 6,
2002) (Respondent is free to criticize, but the right to criticize does not
extend to using the same or similar domain name, without any immediate element
to distinguish Respondent, as an entity, from Complainant). Although, Respondent may have a right to refer
to the mark in expressive content, the wholesale appropriation of Complainant's
mark in a domain name, without any distinguishing material, creates confusion
with Complainant's business and is not fair use merely for the purpose of
comment. Council of Am. Survey
Research Orgs. v. The Consumer Info. Org., LLC, AKA Pinelands Web Servs.,
D2002-0377 (WIPO July 19, 2002). No
expressive content is apparent from the domain name itself; it is not
sufficient that the expressive content may be apparent from the content of the
site. Id.
“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) (As to the right and legitimate interest in using the domain name
for the purpose of comment, the domain name failed to convey the message that it
was used for the purpose of comment or criticism). As Respondent is not making a legitimate noncommercial and fair
use of the domain name, Respondent’s use of Complainant’s trade and trade name
as the domain name for its web site is not protected by the First Amendment.
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent has registered and is using
the domain name in bad faith.
Respondent has registered without authorization a domain name that is
closely similar to Complainant’s famous PEPSI mark and THE PEPSI BOTTLING GROUP
trade name. See PepsiCo, Inc. v. RaveClub Berlin, FA 101819 (Nat.
Arb. Forum Dec. 19, 2001) (bad faith found where “based on the fame of
Complainant’s PEPSI mark it would be very difficult for Respondent to show that
it had rights and legitimate interests in the disputed domain name
[<pepsistuf.com>]”); see also Veuve Cliquot Ponsardin, Maison
Fondée en 1772 v. The Polygenix Group Co., D2000-0163 (WIPO May 1, 2000) (bad
faith is found where a domain name “is so obviously connected with such a
well-known product that its very use by someone with no connection with the
product suggests opportunistic bad faith”).
Respondent
registered the disputed domain name in bad faith because Respondent had notice
of Complainant’s rights in the PEPSI mark and THE PEPSI BOTTLING GROUP trade
name when it registered <pepsibottling.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 usTLD 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); see also Entrepreneur Media, Inc. v. Smith,
279
F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an
alleged infringer chooses a mark he knows to be similar to another, one can
infer an intent to confuse"); see also Samsonite Corp. v. Colony
Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of
bad faith includes actual or constructive knowledge of a commonly known mark at
the time of registration).
The domain name is closely similar to
Complainant’s famous PEPSI mark and THE PEPSI BOTTLING GROUP trade name. Thus, likelihood of confusion must be
presumed. See Chernow
Communications, Inc. v. Jonathan D. Kimball, D2000-0119 (WIPO May 18,
2000). Given the unique character of
the PEPSI mark and THE PEPSI BOTTLING GROUP trade name, consumers, on seeing
the domain name, will reasonably believe that it is related to Complainant,
thus creating a likelihood of confusion.
See E. & J. Gallo Winery v. Spider Webs Ltd., 286 F.
3d 270 (5th Cir.2002) (The defendant registered and used the domain
name <earnestandjuliogallo.com> for a web site critical of Gallo. The Court found that use of a domain name
identical to Gallo’s trademarked name was not fair use and the defendant’s
manner of use supported a finding of bad faith.).
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 <pepsibottling.us>
be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: September 27, 2002
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