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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

PepsiCo, Inc. v. "The Holy See"

Case No. D2003-0229

 

1. The Parties

The Complainant is PepsiCo, Inc., of New York, USA, represented by Fross Zelnick Lehrman & Zissu, PC of New York, USA.

The Respondent is a person who has called himself "The Holy See".

 

2. The Domain Names and Registrar

The disputed domain names:

<pepsibabies.com>
<pepsibaby.com>
<pepsicolababies.com>
<pepsicolababy.com>
<pepsicolalovesjesus.com>
<pepsicolaspeakstojesus.com>
<pepsilovesbabies.com>
<pepsilovesbaby.com>
<pepsilovesjesus.com>
<pepsispeakstojesus.com>
("the Domain Names")

are registered with IDR Internet Domain Registry Ltd ("the Registrar").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 21, 2003. The Center transmitted its standard request for registrar verification to the Registrar by email on March 24, 2003. The Registrar replied by email of April 2, 2003, confirming that it had received an electronic copy of the Complainant, that it was the registrar and the Respondent was the current registrant of the Domain Names, that the Uniform Domain Name Dispute Resolution Policy (the "Policy") applied, that the Domain Names would remain locked during this proceeding, that the registration agreement was in English and that the registrant had submitted in the registration agreement to the jurisdiction at the location of the Registrar’s principal office, and providing the Respondent’s contact details. The Center verified on April 3, 2003, that the Complaint complied with the formal requirements of the Policy, 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").

The Center formally notified the Complaint to the Respondent in accordance with paragraphs 2(a) and 4(a) of the Rules on April 3, 2003, and the proceedings commenced on that date. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 23, 2003, but this time limit was extended to May 2, 2003, with the consent of the Complainant and the approval of the Center in accordance with paragraph 5(d) of the Rules. The Response was transmitted to the Center on May 2, 2003, according to US time and May 3, 2003, according to Swiss time, and was accepted by the Center as duly filed. If there has been any irregularity in this regard, the Panel waives the same under its powers in paragraph 10 of the Rules. The Response requested the appointment of a three-member Panel and the additional fees were duly paid.

The Center appointed Jonathan Turner, Richard W. Page and David E. Sorkin as panelists in this matter on June 4, 2003. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.

Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent, and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.

By a request dated May 5, 2003, and received by the Center on May 6, 2003, the Respondent asked the Panel to consider a supplemental document, namely a published article which allegedly motivated the Respondent to register the Domain Names. The Respondent stated that it wished to correct the Response which had identified a different article as so motivating the Respondent.

By a request dated and received by the Center on May 9, 2003, the Complainant sought permission to submit a Reply on the grounds that the Response (i) provided a materially incorrect translation of an exhibited Italian email; (ii) falsely or misleadingly alleged that the Respondent provided accurate contact information; (iii) misleadingly suggested that the Respondent’s use of the Domain Name amounted to parody or political criticism; and (iv) made factual assertions about its use of and motivation for registering the Domain Names which were unsupported by evidence and could not have been anticipated by the Complainant.

These requests were forwarded by the Center to the Panel without the documents and submissions which they sought to introduce. By its Procedural Order No. 1 of June 10, 2003, the Panel determined that it would consider the Complainant’s translation of the Italian email exhibited to the Response and the article referred to in the Respondent’s request, but that it would not consider the other submissions sought to be made by the Complainant. In accordance with this Order, the Center transmitted a copy of the article referred to in the Respondent’s request and asked the Complainant to submit its translation of the Italian email.

By a further request dated and received by the Center on June 10, 2003, the Respondent sought to submit its own corrected translation of the Italian email and documents explaining how an incorrect translation came to be included in the Response. By its Procedural Order No. 2 of June 12, 2003, the Panel determined that it would consider the further translation provided by the Respondent but that it would not consider any of the other documents. Pursuant to this Order, the Center transmitted to the Panel a copy of the Respondent’s submission containing its corrected translation and some explanation of the error, but did not send a further document referred to in this submission as "Exhibit 2".

In the meanwhile, the Complainant had submitted a further request dated and received by the Center on June 11, 2003, that the Respondent’s "Exhibit 2" be disregarded or that the Complainant be permitted to file a rebuttal. Since the Panel had decided to disregard the Respondent’s "Exhibit 2" by the time it received this request, it was unnecessary to make any further Order. By the document of June 11, 2003, the Complainant also accepted the Respondent’s new translation of the Italian email as accurate.

In its Procedural Orders mentioned above, the Panel stated that it would give reasons for these rulings in its Decision in the case and it will now do so. Under the Policy and the Rules, parties have no right to submit additional arguments or evidence. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 10 of the Rules; and the parties’ requests may be regarded as invitations to the Panel to exercise this discretion.

In exercising this discretion, the Panel has applied the principles that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; and that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure.

These principles have been applied in many cases decided under the Policy and Rules; see e.g. the decisions of WIPO Panels in WIPO Case Nos. D2000-0166 <plazahotel.com>, D2000-1151 <goldline.com>, D2000-1571 <tdwatergouse.com> and D2000-0270 <htmlease.com>. They are based on the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute. Indeed, the circumstances of the present case illustrate the danger that admitting a further document submitted by one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on.

Applying these principles, the Panel considered first that the Respondent should be permitted to correct its Response by substituting the news article which the Respondent claimed to have motivated it to register the Domain Names. This did not give rise to any prejudice to the Complainant or the procedure, since the request was made only two or three days after the Response itself was submitted.

Secondly, the Panel considered that the Complainant should be permitted to submit an alternative translation of the Italian email annexed to the Response. The Complainant could not have anticipated that this document would be relied on by the Respondent and would be unfairly prejudiced if the Panel were misled by an inaccurate translation. On the other hand, the Complainant’s other proposed submissions appeared to relate to arguments of the Respondent which could have been anticipated by the Complainant – namely that the Respondent’s contact details were sufficient to make contact with it; and that the Respondent registered and used the Domain Name for the purposes of political criticism.

Finally, the Panel considered that the Respondent should be permitted to correct its translation of the Italian email. This was unlikely to prejudice the Complainant or the procedure, since the Complainant had already put in issue the accuracy of the translation. On the other hand, the Panel held that it should not consider the Respondent’s statements explaining why the translation had been inaccurate. Since the Panel had not permitted the Complainant to submit that this inaccuracy was evidence of bad faith, the explanation was not relevant to the substantive issues and the Respondent was not prejudiced by its exclusion.

 

4. Factual Background

The Complainant owns the well-known trade marks "PEPSI" and "PEPSI-COLA".

The Domain Names were registered by an unidentified person under the name "The Holy See" and have been pointed to a website at the address "www.washingtonpast.com" which in turn points to a website at the address "www.abortioncams.com". That website contains material criticizing abortion and urging its prohibition. The website also solicits donations to Neal Horsley, an anti-abortion advocate, and contains an advertisement and links to further information about Mr. Horsley’s web-design business, Pathway Communications.

The postal address and the telephone and fax numbers provided by the Respondent in registering the Domain Names are those of the Raphael Hotel in Rome. However, the Respondent is contactable through the email address provided in the registration.

The Respondent has also registered similar series of domain names incorporating the trade marks "COKE", "COCA COLA" and "MCDONALDS", which are pointed to the same websites.

Another anti-abortion campaigner, William Purdy, had registered series of domain names including the marks "WASHINGTON POST", "MCDONALDS", "COCA COLA" and "PEPSICOLA". These were also pointed to an anti-abortion website. The Complainant and others brought legal proceedings against Mr Purdy in a US District Court and obtained an injunction requiring him to cease registering such domain names. When Mr Purdy did not comply with this injunction, an application was made to commit him to jail for contempt, and this was the subject of articles in some newspapers.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Names are confusingly similar to the trademarks "PEPSI" and/or "PEPSI COLA" in which it has rights; that the Respondent has no rights or legitimate interests in respect of the Domain Names; and that it has registered and is using the Domain Names in bad faith. In particular, the Complainant contends that the Respondent has no justification for using well-known marks of the Complainant and others to promote the Respondent’s anti-abortion views, still less to solicit donations and business for Mr. Horsley. The Complainant draws attention to a number of decisions under the Policy where panels have rejected justifications for using domain names incorporating or similar to well-known marks to promote unconnected political campaigns. The Complainant contends that the use of the pseudonym "The Holy See" and false postal address and telephone and fax numbers to conceal the Respondent’s identify is further evidence of bad faith. The Complainant requests a decision that the Domain Names be transferred to it.

B. Respondent

The Respondent does not dispute that the Complainant has rights in the trade marks "PEPSI" and "PEPSI COLA", but contends that the Domain Names are not confusingly similar to these marks, since reasonably prudent consumers would not mistake the Domain Names for those of the Complainant. Referring to the WIPO Panel decision in WIPO Case No. D2000-0190 <bridgestone-firestone.net>, the Respondent further contends that it has a legitimate interest in using the Domain Names to protest the Complainant’s lawsuit against Mr. Purdy. The Respondent states that it has no connection with Mr. Horsley and has had no intention of profiting itself from the use of the Domain Names. It submits that it registered and has used the Domain Names for the purposes of good faith criticism, and has not acted in bad faith. The Respondent also contends that it was justified to use a pseudonym to shield itself from attack by the large corporations which it sought to criticize. The Respondent requests that the Complaint be rejected.

 

6. Discussion and Findings

The Panel has given consideration to whether the Response can be considered at all, given that it has been submitted on behalf of an unidentified person and not on behalf of the real Holy See of Rome in whose name the Domain Names have purportedly been registered. The Panel has concluded that the correct analysis is as follows:

Under the Rules, the "Respondent" has certain procedural rights, including the right to submit a response contesting the complaint. The "Respondent" is defined in the Rules as the "holder" of the disputed domain name. This must mean the party who has the contractual rights to use the domain name under the registration agreement, particularly as it is this agreement which confers jurisdiction on a duly appointed panel to determine the dispute in accordance with the Policy.

In this case the registration agreement in respect of the Domain Names is governed by Israeli law, but in the absence of any evidence that this differs from the common law of the US and UK, the Panel will apply the latter in accordance with paragraph 15(a) of the Rules. On this basis, it seems to the Panel that the party to the registration agreement, and therefore the Respondent in this proceeding, must be the person who has called itself "the Holy See". There is no reason to doubt that the Response was submitted on the instructions of that person. The Panel is therefore bound to consider the Response under the Rules.

In accordance with paragraph 4 of the Policy, the Complainant must prove:

A. that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

B. that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

C. that the Domain Name has been registered and is being used in bad faith.

These points will be considered in turn.

A. Identical or Confusingly Similar to Complainant’s marks

The Domain Names are not identical to the Complainant’s marks, but it is necessary to consider whether they are confusingly similar.

In the context of the Policy as a whole, the function of this first requirement is to ensure that a complainant has a sufficient interest in the disputed domain name. Whether the registration and use of the disputed domain name are objectionable is assessed under the second and third criteria. Accordingly, the first requirement should be regarded as setting a relatively low, threshold test, and it is appropriate to consider how the disputed domain name might be used as well as how it has been used: see e.g. the WIPO Panel decision in WIPO Case No. D2003-0006 <gsstore.com>.

Consumer products are frequently advertised these days using provocative connections to attract attention or reinforce recollection. Sponsorship of high-profile causes by corporations or their staff is also common. Against this background, the Panel considers that a not insignificant number of consumers might suppose that the Domain Names are connected in some way with the Complainant.

In the circumstances of the present case, the Panel concludes that the first requirement is satisfied.

B. Rights or Legitimate Interests

Although the Respondent maintains that it registered and has used the Domain Names to protest the lawsuit brought by the Complainant and others against Mr. Purdy, the fact is that the Domain Names have not been used to criticize the Complainant, but merely to criticize abortion. The position is therefore quite different from that in WIPO case D2000-0190 <bridgestone-firestone.net>, where the respondent was using the domain name to make specific criticisms of the complainant.

In line with the WIPO Panel decisions in WIPO Case Nos. D2001-1184 <timeforaol.com>, D2001-1381 <prestongatesellis.com> and D2002-0812 <barnesandnobleonline.com>, the Panel considers that it is illegitimate to use a domain name which is confusingly similar to another person’s mark in order to publish political criticism which does not relate to that person. Such use does not therefore confer any right or legitimate interest in respect of the domain name. In short, the Respondent has a right to criticize abortion, but it does not have a right to use the Complainant’s name to do so.

Accordingly, the Panel concludes that the Respondent does not have rights or legitimate interests in respect of the Domain Names.

C. Registered and Used in Bad Faith

The Respondent maintains that it registered and has used the Domain Names in good faith to protest against the Purdy lawsuit. In the absence of any specific criticism of the Complainant on the websites in relation to which the Domain Names have been used, the Panel views this explanation with some skepticism. However, even if it is taken at face value, and even if it is assumed that the Respondent’s motivation is sincere, this does not exclude the possibility of bad faith. The registration and use of a domain name for the purpose of sale at a profit to the owner of a corresponding trade mark would be in bad faith even if the registrant thought that this conduct was legitimate. It is necessary to consider whether the registration and use of the domain name constitute an abuse of the domain name system judged by the standards of reasonable internet users.

The Panel considers that it is bad faith conduct by those standards to register and use multiple domain names which are confusingly similar to a well-known mark in order to publish political criticism which does not relate to the owner of the mark. Such conduct unfairly exploits the reputation of the mark to disseminate unrelated material and is liable to cause unfair damage to the mark and its owner by associating them with that material.

This view accords with the WIPO Panel decisions in WIPO Case Nos. D2002-0812 <barnesandnobleonline.com> and D2002-0316 <universityofcentralarkansas.com> and the NAF Panel decision in Case No. FA0204000109043 <reedcollege.com>. The Respondent seeks to distinguish the first of these cases on the ground that the website to which the disputed domain name was pointed not only published anti-abortion material but also offered anti-abortion videotapes for sale. However, this hardly provides any distinction given that in the present case the website solicits financial support for its producer. The Respondent tries to disclaim responsibility for this content, but having chosen to point the Domain Name to this website, it must accept the consequences. In any case, the fact that the anti-abortion videotapes were for sale in the <barnesandnobleonline.com> case was at most a subsidiary factor in the Panel’s assessment in that case.

The Respondent further points out, with more justification, that in the other cases mentioned above, bad faith was shown by evidence that the domain names were for sale. Nevertheless, it is clear that in those cases the Panels considered that the use of domain names confusingly similar to other parties’ marks for the purposes of unrelated political criticism was in itself evidence of bad faith.

Finally, the Panel regards the Respondent’s concealment of its identity by the use of a pseudonym and a false address as further evidence of bad faith, particularly where the pseudonym is itself apt to cause confusion. The Respondent evidently has no respect for other persons’ rights.

The Panel concludes that the Domain Names were registered and have been used in bad faith.

No other party appears to have any legitimate interest in the Domain Names and there is no reason to deny the Complainant the remedy of transfer.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names

<pepsibabies.com>
<pepsibaby.com>
<pepsicolababies.com>
<pepsicolababy.com>
<pepsicolalovesjesus.com>
<pepsicolaspeakstojesus.com>
<pepsilovesbabies.com>
<pepsilovesbaby.com>
<pepsilovesjesus.com>
<pepsispeakstojesus.com>

be transferred to the Complainant.

 

---

 

Jonathan Turner
Presiding Panelist

Richard W. Page
Panelist

David E. Sorkin
Panelist

Dated: June 18, 2003