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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Pepsico Inc. v. Johan De Broyer

Case No. D2007-1021

 

1. The Parties

The Complainant is Pepsico Inc., of Purchase, New York, United States of America, represented by Kilpatrick Stockton, LLP, United States of America.

The Respondent is Johan De Broyer, of Overijse, Belgium.

2. The Domain Name and Registrar

The disputed domain name <planetpepsi.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 12, 2007. On July 17, 2007, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On July 18, 2007, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing contact details. The Center verified 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 (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 23, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2007. Responses were filed electronically with the Center between July 30, – August 5, 2007 and on August 10, 2007 in hardcopy. Some of the responses were different in some respects. The hardcopy response corresponded to a response filed electronically on August 2, 2007 (“the formal Response”).

The Center appointed James A. Barker as the sole panelist in this matter on August 24, 2007. 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.

Supplemental filings

Between July 20, 2007 and August 10, 2007 there were various and, taken together, lengthy emails between the parties copied to the Center. Most of these emails were from the Respondent and which were largely appeared to contain similar claims to those found in his formal Response.

In addition, after the formal Response was filed, supplemental filings were made by each of the parties.

How these two types of communications may be treated by the Panel is affected by the following considerations.

Firstly, neither the Policy nor the Rules provide expressly for submission of substantive filings additional to the Complaint or Response. Paragraph 3 of the Rules provides formal requirements for the Complaint. Paragraph 5 of the Rules provides formal requirements of the Response. A Panel can draw such inferences as it considers appropriate from a failure by a party to comply with these formal requirements (the Rules, paragraph 14(b)). The clear implication of Paragraph 14(b) of the Rules is that a Panel may consider a Complaint or Response notwithstanding that it may not comply with the formal requirements of the Rules. (That said, this non-compliance would usually arise only in the case of the Response, because Paragraph 4(a) of the Rules provides that a Complaint should only be forwarded, and the proceedings thereby formally commenced, by the Provider if it is in compliance with the Policy and Rules.)

Paragraph 2 of the Rules does however make provision for “communications”. In particular, Paragraph 2(h)(iii) provides that “any communication” (emphasis added) by a party shall be copied to the other party, the Panel and the Provider, as the case may be. Paragraph 2(h)(iii) is not limited to communications made in compliance with the Policy or Rules. In this respect, the terms of Paragraph 2(h)(iii) are different from Paragraph 2(b) (which refers to communications “provided for under these Rules”) and Paragraph 2(f) (which also refers to communications “provided for under these Rules”).

In relation to how communications in general should be considered by the Panel, Paragraph 10(d) provides that the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.

Paragraph 12 of the Rules provides that a Panel may, in its sole discretion, request further statements or documents from the parties. Paragraph 12 is a provision that operates in addition to Paragraph 2. That is, communications should be copied to the Panel under Paragraph 2(h)(iii). In addition, Paragraph 12 gives the Panel a further discretion to request further statements or documents.

Paragraph 15 also provides that the Panel shall decide a complaint on the basis of “statements and documents submitted, and in accordance with the Policy, these Rules and any principles of law that it deems applicable”. Paragraph 15 does not explicitly limit a Panel to decide a dispute only on the basis of a formal complaint and response, or statements or documents submitted as provided by the Rules.

Secondly, neither the Policy nor the Rules contain a definition of a “response” or “complaint”. As such, it is open to a Panel to take communications by either party as its substantive complaint or response, notwithstanding that those communications may not comply with either Paragraphs 3 or 5 of the Rules – including provisions about the deadline for the Response. The Policy and the Rules also do not explicitly rule out that a “response” or “complaint” might be made in a series of communications (although, if submitted in that way, the response or complaint would arguably not comply with the requirements of Paragraph 3 or 5 of the Rules).

Thirdly, it is a well-established principle of proceedings under the Policy 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”. (See, in relation to domain names comparable to the disputed domain name in this case: PepsiCo, Inc. v. The Holy See, WIPO Case No. D2003-0229, and the cases cited in that one.) In this context, ‘additional submissions’ means those additional to the formal Complaint and Response filed in accordance with Paragraphs 3 and 5 of the Rules. Part of the reason for this principle is the general intent of the Policy to establish an inexpensive and streamlined procedure for the resolution of disputes. Allowing the admission of further statements would obviously provide encouragement for parties to make them, and thereby potentially complicate and expand the proceedings.

The Panel notes that it has treated this principle as consistent with the requirements in Paragraph 15 of the Rules that, among other things, the Panel should decide a complaint on the basis of “statements and documents submitted”. In other words, the Panel has not interpreted that element of Paragraph 15 as requiring that a panel should necessarily consider all such statements or documents submitted. This is because these opening words of Paragraph 15 are subject also to those that follow it – in particular, that the Panel is to decide the complaint also “in accordance with the Policy and Rules”. And Paragraph 10(d) of the Rules, as noted above, makes it clear that the Panel may consider the admissibility, etc. of the evidence.

As noted above, in this case there are two kinds of additional communications that have been made:

- those communications made between July 20 and August 10, 2007, and copied to the Panel under Paragraph 2 of the Rules;

- supplemental filings made after the due date for the Response.

For those communications made between July 20 and August 10, 2007, on the first and second considerations noted above, it is open to the Panel to consider those communications. However, the Panel has not considered them in this case. This is because, in the event, both the Respondent and Complainant have made a formal and complete Response and Complaint filed in accordance with Paragraphs 5 and 3 respectively of the Rules. Additionally, the Panel has applied the third consideration noted above, which mitigates against considering communications that are in addition to the formal Complaint and Response. The Panel finds no reason not to apply that consideration to “any communications” received before the due date for the Response, as much as to filings received after that date.

For the supplemental filings made after the due date for Response the Panel has applied similar considerations in this case. While these filings are arguably “communications” within the meaning of Paragraph 2 of the Rules which, if so, should be copied to the Panel, it is ultimately up to the Panel whether to consider them under Paragraph 10 of the Rules. There are also no exceptional circumstances in this case which would suggest that those supplemental filings should be admitted. For these reasons, the Panel did not admit them.

 

4. Factual Background

The following facts were not contested.

The Complainant is the owner of the registered marks PEPSI and PEPSI-COLA, which it uses in connection with soft drinks. The marks are famous and used by the Complainant throughout the world, including in Belgium where the Respondent resides.

The disputed domain name has a creation date in the Whois record of May 8, 2002.

At the date of this decision, the disputed domain name reverted to a website which prominently featured the Complainant’s trademark (including a device associated with the Complainant) and a picture of a bottle of the Complainant’s product against the background of a picture of a wave. The opening page of the website also refers to it being a “Shareholder website of Johan De Broyer”. The website also includes a disclaimer that it is not an officially sponsored site of the Complainant or affiliated with the Complainant in any way.

 

5. Parties’ Contentions

A. Complainant

The following is a summary of the Complaint.

The Complainant claims that the disputed domain name is identical or confusingly similar to its registered marks, since it fully incorporates the PEPSI mark. Given the notoriety and unique character of its mark, consumers would reasonably believe that the disputed domain name is related to the Complainant. The addition of the common term “planet” is of no import.

The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain name. Where the Complainant’s marks are so well-known, there can be no legitimate use by the Respondent. The Respondent is not licensed or authorized by the Complainant to use its mark. While the Respondent purports to be a shareholder of the Complainant, such a status does not confer a right on the Respondent to use the Complainant’s trademark.

The Respondent is using the website for commercial gain. After a series of introductory pages, the website then features a link to information about a product known as “Pepsi Key Ring Can Caps”, which the Respondent apparently invented and is seeking to promote through his website. A click through advertisement also appears on the home page, which directs users to a website which promotes a product known as the “Adver-Can Can Top”. The website also includes numerous links to a variety of photographs of women along with links to websites of various individuals. The Complainant provided evidence to support each of these statements, being copies of the website made in June and July 2007. The Complainant avers that the Respondent derived financial gain from this website, and registered the disputed domain name to generate traffic based on the fame of the Complainant’s mark.

For similar reasons, the Complainant claims that the disputed domain name was registered and used in bad faith. The Respondent registered and is using the disputed domain name in bad faith for commercial gain and to profit from the resulting consumer confusion that the domain name is connected with the Complainant.

B. Respondent

The following is a summary of the Response.

The Respondent contends that the disputed domain name is not identical or confusingly similar to the Complainant’s mark. The Complainant has not shown that it uses PLANETPEPSI as a mark. Rights in a word mark do not extend to rights in combinations of words which might include that particular mark.

The Respondent also claims that the Complainant has not provided sufficient proof that the disputed domain name is either identical or confusingly similar to the Complainant’s mark.

The Respondent claims that he has a legitimate interest in the disputed domain name, on the basis that he is using it for a fan website. He claims never to have intended to use it for commercial gain. The Respondent also claims that he has rights in the disputed domain name because he is a shareholder of the Complainant. He claims to have been operating “www.planetpepsi.com” since 1995. The Respondent claims that the Complainant does “not care” about a number of other websites which revert from domain names that incorporate the Complainant’s mark.

The Respondent denies that he registered and used the disputed domain name in bad faith. He states that he “regrets the inclusion of the text on its PLANETPEPSI website (see Exhibit A), but immediately removed it when informed of a concern by Complainant”. (The Respondent’s Exhibit A provides undated copies of his website pages.)

The Respondent seeks a finding of reverse domain name hijacking against the Complainant.

 

6. Discussion and Findings

For the Complainant to succeed and have the disputed domain name transferred to it, Paragraph 4(a) of the Policy provides that Complainant must prove that:

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

(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 Complainant must prove all of these elements. These elements are discussed in turn as follows.

A. Identical or Confusingly Similar

It is clear beyond doubt that the Complainant “has rights” in a trademark for the purpose of Paragraph 4(a)(i) of the Policy.

The disputed domain name is self-evidently not identical to the Complainant’s PEPSI trademark. The issue is therefore whether it is confusingly similar.

There is no dispute that the Complainant’s mark is famous and distinctive. The Respondent himself has clearly selected the disputed domain name because of its distinctive connection with the Complainant.

The Complainant’s mark is wholly incorporated in the disputed domain name, with the addition of the generic term “planet”. The fame of the Complainant’s mark is such that consumers are likely to mistakenly believe that the disputed domain name has some connection with the Complainant, despite the addition of the generic word “planet”. The Respondent’s disclaimer does not avoid that confusion because the confusion would already be created by the time an Internet user might view the disclaimer.

This finding is consistent with that of previous panels which found disputed domain names to be confusingly similar to the Complainant’s PEPSI mark, despite the addition of generic words. (See e.g. PepsiCo, Inc. v. “The Holy See”, WIPO Case No. D2003-0229, which found that, among others, the domain name <pepsibabies.com> was confusingly similar to the Complainant’s mark. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS), WIPO Case No. D2003-0696, which involved a very large number of domain names, including e.g. <pepsiadventure.com>.) Indeed, none of the many previous proceedings under the Policy involving the Complainant’s mark have made a finding against the Complainant on this ground.

For these reasons, the Panel finds that the Complainant has established this first element of the Policy.

B. Rights or Legitimate Interests

The Respondent appears to claim his rights or legitimate interests in the disputed domain name on three grounds.

Firstly, the Respondent claims to be operating a fan site devoted to the Complainant and its products.

Item 2.5 of the WIPO Overview on WIPO Panel Views on Selected UDRP Questions sets out panel views on whether a use as a fan site can constitute a right or legitimate interest in a domain name. However, that item notes that “This section only deals with fan sites that are clearly active and non-commercial. There are many UDRP cases in which the respondent claims to have an active non-commercial fan site but the panel decides otherwise”. See Helen Fielding v. Anthony Corbert aka Anthony Corbett, WIPO Case No. D2000-1000” (emphasis added). And the Panel notes that the question of whether a respondent has a legitimate interest in a domain name for the purpose of a fan site is usually determined by reference to Paragraph 4(c)(iii) of the Policy. That Paragraph provides that a respondent may demonstrate a right or legitimate interest in circumstances where the respondent is making a “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers”. (emphasis added)

In this respect, the Respondent claims that he never had an intention to operate his website to make money. As evidence, the Respondent provides (undated) copies of his website, which differ in some material respects from copies of his website provided by the Complainant. This evidence given by the Complainant indicates that the Respondent’s website did operate, at least in part, for commercial gain. In particular, the Complainant provides evidence that the website advertised “Pepsi Key Ring Can Caps”, which appear to have been a product offered by the Respondent. The website also included photographs of various women, including one linking to a website advertising CDs recorded by ‘Adrienne Frantz’. There is no evidence to suggest that the website had not been used in these ways for some time before notification of this dispute.

The Respondent does not appear to absolutely deny this contrary evidence provided by the Complainant. Rather, there is some suggestion from the Response that he admits it. In his statement that he “regrets the inclusion of the text” on his website and removed it. The Panel has inferred from this that the Respondent regrets the inclusion of the material which the Complainant provides proof of him including on his website. If so, the Respondent’s inclusion of that material was obviously deliberate. The Respondent does not explain why he regrets the deliberate inclusion of material on his website. Neither does he explain why, if his use was legitimate, he took down that material in response to the Complainant’s concerns.

All this evidence goes against a finding that the Respondent (while he may be a fan of the Complainant) operated his website as a fan site, in such a way that it might come within a use deemed to be legitimate under Paragraph 4(c)(iii) of the Policy.

That the Respondent may have, recently and after notification of this dispute, removed the commercial content from his website does not affect the question of whether his website is non-commercial. The removal of commercial content after the notification of a dispute has not, in some other comparable cases, created a legitimate interest that was not otherwise there. (See, for example, DaimlerChrysler Corporation v. Brad Bargman, WIPO Case No. D2000-0222) If it could, a Respondent could easily subvert the purpose of Paragraph 4(c)(iii) by making temporary changes to its website, which might just as easily be reinstated once a dispute were over. As such, this Panel has approached the question of whether the website operates non-commercially having regard to the likely history of the website as a whole.

As indicated above, there is evidence that, at least for a period recently leading up to these proceedings, the Respondent’s website contained commercial content. This evidence indicates that the Respondent’s website was not clearly a non-commercial one. It is not therefore a site in which the Respondent may have a legitimate interest for the purpose of Paragraph 4(c)(iii) of the Policy.

The Respondent suggests that there are two other grounds on which he has a right or legitimate interest in the disputed domain name.

Secondly, the Respondent suggests that he has rights in the disputed domain name because he is a shareholder of the Complainant. However, being a shareholder of a company does not, in itself, entitled a shareholder to rights in intellectual property (or in any other assets) of the company. Being a shareholder typically entitles a person to a limited property right in relation to the company, and may also attract certain other limited rights set out in a company’s articles and constitution, such as a right to vote in relation to certain corporate matters and receive dividends. Being a shareholder does not entitle a person to directly, and at his or her own discretion, appropriate company property for themselves, including any of a company’s trademarks. It almost goes without saying that the rights of all shareholders would be detrimentally affected if the position were otherwise.

Thirdly, the Respondent points to a number of other domain names (and associated websites) which incorporate the Complainant’s PEPSI mark. The Respondent makes no explicit inference from this observation. The Panel has inferred that the Respondent is suggesting that, because some third parties have used the Complainant’s mark, that he has some legitimate interest in also using it. Alternatively, the Respondent appears to suggest that he is being unfairly singled out by the Complainant by this proceeding against him.

However, the question under this element of the Policy is whether the Respondent has a right or legitimate interest. The use of the Complainant’s mark by third parties – authorized or not – is not relevant to the question of whether the Respondent has a right or legitimate interest in the disputed domain name.

There is no other evidence that the Respondent may have a right or legitimate interest in the disputed domain name for the purpose of the Policy.

For these reasons, the Panel finds that the Complainant has established this second element of the Policy.

C. Registered and Used in Bad Faith

Under Paragraph 4(a)(iii) of the Policy, a finding of bad faith can be made where the Respondent “knew or should have known” of the Complainant’s trademark rights, but nevertheless registered and used a domain name incorporating that mark. (Myer Stores Limited v. Mr. David John Singh, WIPO Case No. D2001-0763.)

There is no doubt in this case that the Respondent knew of the Complainant and its famous mark. The Respondent himself describes his website as a fan site of the Complainant. Further, the Respondent’s website prominently reproduces images of the Complainant’s PEPSI trademark and products.

As such, the Panel finds that the disputed domain name was registered and used in bad faith for the purpose of Paragraph 4(a)(iii) of the Policy.

D. Reverse domain name hijacking

The Respondent seeks a finding of reverse domain name hijacking against the Complainant. Paragraph 1 of the Rules defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.

A Panel may make such a finding where it should have been obvious to a Complainant that its complaint had no reasonable prospects of success. For the reasons set out above, the Complainant has established the three elements under Paragraph 4(a) of the Policy. It follows that the Panel does not make a finding of reverse domain name hijacking against the Complainant.

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 name <planetpepsi.com> be transferred to the Complainant.

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James A. Barker
Sole Panelist

Dated: September 7, 2007