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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services
Case No. D2001-0174
1. The Parties
The Complainant is: PepsiCo, Inc. with a postal address of 700 Anderson Hill Road, Purchase, New York 105771-444, U.S.A. The Complainant is represented in this proceeding by: Georges Nahitchevansky, Esq. of Fross Zelnick Lehrman & Zisu, P.C., 866 United Nations Plaza, New York, New York 10017, U.S.A.
The Respondents are: Diabetes Home Care, Inc. and DHC Services, both with a postal address at 508 Central Avenue, Crescent City, Florida 32112, U.S.A.
2. The Domain Names and Registrar
The domain names in dispute are: "pepsi400.com" and "pepsisouthern500.com".
The registrar for the disputed domain names is: Network Solutions, Inc. (NSI) of 505 Huntmar Park Drive, Herndon, Virginia 20170, U.S.A.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).
The Complaint was filed on February 1, 2001. On February 6, 2001, the Center requested that the registrar NSI check and report back on the registrant for the domain names "pepsi400.com" and "pepsisouthern500.com". On February 8, 2001, NSI reported to the Center that the registrants were the Respondents in this proceeding, Diabetes Home Care, Inc. and DHC Services.
On February 12, 2001, the Center forwarded a copy of the Complaint to the Respondents by registered mail and by e-mail and this proceeding officially began. The Respondents' Response was received by the Center on February 27, 2001.
The Administrative Panel submitted a Declaration of Impartiality and Independence on March 13, 2001, and the Center appointed the Panel on March 14, 2001. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
This Decision is due by March 28, 2001.
4. Factual Background
The Complainant is the manufacturer of, inter alia, the soft drink Pepsi Cola, which was first produced in North Carolina, U.S.A. in 1898. According to the Complainant, it has licensed its PEPSI400 and PEPSI SOUTHERN500 trademarks to the International Speedway Corporation, which uses them in auto races with these same names.
The Respondents registered the disputed domain name "pepsisouthern500.com" on August 14, 1998 and the disputed domain name "pepsi400.com" on September 12, 1998. The Respondents use the two-disputed domain names to sell over the Internet a variety of products and services such as pharmaceuticals, but also web design and creation services. The Respondents have also linked the disputed domain names to some of their other websites that sell pharmaceutical products including, notably, diabetic treatment products.
The record shows that the Complainant wrote to the Respondents on June 20, 2000, and July 5, 2000, to allege trademark infringement. The Respondents replied at length on July 14, 2000, and denied any infringement (the Complaint, Exhibit F). The Complainant now seeks transfer or cancellation of the disputed domain names in this proceeding.
5. The Parties’ Contentions
- The PEPSI trademark is one of the most famous in the world.
- The trademark PEPSI and the various logos accompanying it have been registered in virtually every country in the world.
- Complainant has an important presence on the Internet, including: "pepsi.com", "pepsiworld.com", "pepsibusiness.com", "pepsico.com" etc.
- Complainant has licensed its PEPSI 400 and PEPSI SOUTHERN 500 trademarks to the International Speedway Corporation to use as the name of two auto races, the Pepsi 400 and the Pepsi Southern 500, which have been held annually since 1989 and 1998 respectively in the U.S.A. The two races also have become famous.
- The disputed domain names are confusingly similar to Complainant’s PEPSI marks.
- Respondents can not demonstrate any legitimate interest in the disputed domain names. There exists no relationship between Complainant and Respondents that would give rise to any license or permission to use the disputed domain names.
- The Respondents are really one entity, Diabetes Home Care, with common (bad faith) motives in registering the disputed domain names.
- Respondents have registered and are using the disputed domain names in bad faith: Respondents have either registered the disputed domain names for selling or renting or otherwise transferring; or to prevent the Complainant from using its marks in corresponding domain names, or to divert web traffic to their own websites for their own profit.
- Respondents are in the business of trafficking in famous domain names.
- The disputed domain names should be transferred to the Complainant, or in the alternative cancelled.
The Complainant is not the holder of any trademarks in the names PEPSI 400 or PEPSI SOUTHERN 500: the Respondents have searched the U.S. Federal Trademark Registry to ascertain this information. The Complainant has only registered PEPSI: it is a fact of law that the registration of a one word trademark does not carry to a combination of words, utilizing that one word.
- The Respondents have a legitimate interest in the disputed domain names: the Respondents use them to produce websites, digital photography and other content for Winston Cup and ARCA racing drivers, owners and sponsors.
- The Respondents have produced photo and website content for drivers and teams including Ricky Craven, Midwest Transit Racing, Kenny Wallace, Dan Pardus, Shawna Robinson, D & M Motorsports, Jim & Judie Motorsports, Tim Bainey, J R Robbs and Miss Winston. Respondents’ photos have been published on innumerable fan sites.
- The disputed domain names are not similar to Complainant’s mark because they are used with races, not beverage products.
- The Respondents are not in the business of selling domain names. Rather, the Respondents, like the Complainant, have registered many domain names to use with their variety of businesses that include tax accounting, respiratory pharmaceuticals, a diabetic medecines supply company, and an Internet race promotion business.
- The Panel should deny the Complainant’s request to transfer the disputed domain names to the Complainant.
6. Discussion and Findings
In order to prevail and have the disputed domain names transferred to it, the Complainant must demonstrate the following (the Policy 4 (a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
- the respondent has no rights or legitimate interests in respect of the domain name; and
- the respondent has registered and is using the domain name in bad faith.
Identical or Confusingly Similar
The Complainant has furnished a wealth of material attesting to the registration of its PEPSI mark all over the world, including in countries such as the United States of America, India, China, Japan, Spain, the United Kingdom and many, many more (e.g. United States principal trademark register registration no. 1,317,551 dated February 5, 1985 for goods ranging from key chains to beach towels; exemplary copy at Complaint, Exhibit D). The Complainant also has produced many articles and surveys confirming that its mark is one of the world’s most famous and valuable, a fact the Panel can corroborate with its knowledge ex officio (Exhibits C and E).
The Respondents have registered the disputed domain names "pepsi400.com" and "pepsisouthern500.com". It would appear that the Complainant and its licensee, International Speedway Corporation, originated the domain names and use them for annual races (the Complaint, p. 7 and Exhibit E). Even if we assume arguendo that the Respondent originated the disputed domain names, these names still incorporate the Complainant’s famous trademark while not coining a new distinctive mark, and to this extent certainly are confusingly similar to the Complainant’s mark. The Respondents assert that by adding "400" and "Southern 500" to the Complainant's mark they have a new mark, but these terms are descriptive when applied to races, and the Respondents have made no showing they have conferred good will on them, and there remains the fact that the Complainant's famous trademark still is the most distinctive part of the disputed domain names.
The Respondents also have countered that in the United States there is no registered trademark comprising the two disputed domain names. However, the Panel finds it is enough that there are plenty of PEPSI trademarks registered in the United States and elsewhere. Moreover, the Complainant has shown convincingly that Complainant and its licensee International Speedway Corporation have been using the disputed domain names for two annual car races of the same names since 1989 and 1998. This use also confers rights on the Complainant in the disputed domain names.
The Panel finds the Complainant has satisfied the first, "confusingly similar" part of the Policy test for transferring a domain name.
Legitimate Rights and Interests
The Complainant has denied ever licensing the Respondents to use its PEPSI mark. Respondents base their claims of right to use the disputed domain names on their contention that neither the Complainant nor anyone else had registered the disputed domain names as trademarks at the time the Respondents registered them as domain names. However, per our discussion in the preceding section, the Panel rejects the Respondents' contention that it could acquire rights and interests in the disputed domain names by using them in commerce without the Complainant’s permission because the famous and protected mark PEPSI is the key distinctive component of the disputed domain names.
The Respondents want to limit the Complainant to using the PEPSI mark just for beverages (Response, p.8). However, the motorway races are precisely the type of sports event one would expect to see co-branded with the Complainant’s mark, and they were in use for this very purpose well before the Respondents registered them as domain names. Therefore, the Panel finds the Respondents have no legitimate rights or interests in the disputed domain names.
Bad Faith Registration and Use
The Complainant has made arguments under the bad faith registration and use provisions of the Policy at 4(b)(i, ii and iv), but the Panel finds only one of these arguments is supported by the evidence before the Panel, viz., the Respondents registered the disputed domain names in order to divert web traffic to their websites for profit in violation of the Policy at 4(b)(iv).
From the evidence, it is obvious to the Panel that the Respondents, in registering and using the disputed domain names, were attempting to capture some of the immense good will of the PEPSI mark. Secondarily, the Respondents hoped to profit from the good will associated with the Complainant's sponsorship of the two famous U.S. car races. The Response and the Respondents' letter to the Complaint of July 14, 2000, (Complaint, Exhibit F) convince the Panel the Respondents were well aware of the Complainant's famous mark and its use in the races that comprise the disputed domain names. As the Complainant asserts (Complaint, p. 13) this is precisely why the Respondents "targeted" the Complainant's famous mark. (Veuve Clicquot v. Intercosma SA and Reynald Katz Perfumes, WIPO Case No. D2000-0469, July 19, 2000; Guerlain S.A. v. HI Investments, WIPO Case No. D2000-0494, July 25, 2000; Chanel, Inc. v. ESTCO Technology Group, WIPO Case No. D2000-0413, September 18, 2000).
In accord with the Policy (4(i)) and Rule 15, the Panel orders that the disputed domain names, "pepsi400.com" and "pepsisouthern500.com" be transferred from the Respondents Diabetes Home Care, Inc. and DHC Services, respectively, to the Complainant, Pepsico, Inc. The domain names are confusingly similar to the Complainant's famous trademark; the Respondents have no rights or legitimate interests in the names, and registered and were using them in bad faith.
Dennis A. Foster
Date: March 28, 2001