Complainant is Pepsico, Inc. of Plano, Texas, United States of America ("United States" or "U.S."), represented by Saba & Co. IP, Lebanon.
Respondent is Seyed Mozafar Ghazvini of Fresno, California, United States. 2. The Domain Names and Registrar
The disputed domain names, and , are registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 1, 2016. On August 1, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent's contact details.
The Center received email communications from Respondent prior to the notification of the Complaint, one each on August 2, 2016 and August 3, 2016.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 31, 2016. At the request of Respondent, the due date for Response was extended to September 4, 2016.
The Center received an email communication from Respondent on September 4, 2016.
At the request of Complainant, the proceedings were suspended on September 14, 2016. On September 26, 2016, the proceedings were reinstituted at the request of Complainant.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on October 6, 2016. 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. 4. Factual Background
Complainant is a worldwide food and beverage company. Complainant owns numerous trademark registrations around the world for its PEPSI trademark, including U.S. Registration Number 0349886 for PEPSI‑COLA, which has been registered since September 14, 1937, and Iranian Registration Number 15164 for "Pepsi-Cola" in Farsi, which has been registered since 1956.
The disputed domain names were registered on October 12, 2015. 5. Parties' Contentions A. Complainant
Complainant states that it's fanciful and unique PEPSI mark has been in use since the creation of Pepsi-Cola in 1898, and that it has since then become a famous worldwide brand due to extensive use, advertising, promotions, and media attention. Complainant has maintained several PEPSI trademark registrations in the Islamic Republic of Iran since 1956, including a registration for "Pepsi-Cola" in Farsi. Complainant asserts that the disputed domain names are confusingly similar to its PEPSI mark because they wholly incorporate the mark, with only the addition of the geographic wording "Iran" and the generic Top-Level Domain ("gTLD") ".com."
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names because Respondent is not commonly known by the disputed domain names, is not associated with Complainant, is not an authorized distributor or manufacturer of Complainant's products and has not been authorized to use the PEPSI mark. Complainant further states that a previous UDRP panel has held that "given that Complainant's trademark is distinctive and famous to the point where it may not be used by other persons even in fields or industries unrelated to Complainant's activities, one would be hard pressed to find a person who may show a right or legitimate interest in a domain name containing Complainant's trademark."
Regarding bad faith, Complainant contends because the PEPSI mark has developed worldwide fame it is "inevitable" that Respondent was aware of it when registering the disputed domain names, and, accordingly that they were registered in bad faith. Complainant states that it sent multiple letters to Respondent demanding transfer of the disputed domain names, and that Respondent replied that he purchased the disputed domain names to promote a local Iranian brand and asked "how much it would be if I wanted to buy the name for iran. So I can be a distributor in iran." Complainant alleges that Respondent's registration of several domain names incorporating famous marks within a short time frame and the "under construction" status of the website hosted on the disputed domain names further support bad faith. B. Respondent
Respondent did not file a response to Complainant's contentions. However, in several emails from Respondent to Complainant and the Center, Respondent appears to argue that he does not believe he registered the disputed domain names in bad faith because they were available for purchase at the time he registered them. Respondent denies that the disputed domain names were ever under construction, and argues that inquiring about distributing Complainant's products cannot be a reason of bad faith, because it is merely an inquiry and Respondent "had no idea of what was going on". Respondent also states that he is "willing to negotiate on terms and conditions that can keep both parties happy". 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the PEPSI mark in view of its numerous United States and international trademark registrations. The Panel further finds that the disputed domain names are confusingly similar to the PEPSI mark because they incorporate the entirety of the trademark, with only the addition of the geographical wording "Iran" and the gTLD ".com." The addition of geographic wording to a trademark is insufficient to avoid a finding of confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.9.
The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The evidence of record supports Complainant's unrebutted allegations that Respondent is not authorized to use the PEPSI mark, is not affiliated with Complainant and is not known by the disputed domain names. The disputed domain names resolve to websites that state "Please check back soon to see if the site is available." This does not constitute a bona fide offering of goods or services, and Respondent has not responded to the Complaint with any evidence of any bona fide use. Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the disputed domain names. Respondent has failed to rebut that showing.
The Panel finds that Complainant has carried its burden and satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that Complainant registered various versions of its PEPSI mark more than seventy years before Respondent registered the disputed domain names. Complainant registered the PEPSI marks in the Islamic Republic of Iran nearly sixty years prior to Respondent's registration of the disputed domain names. Complainant's PEPSI mark has reached such a level of worldwide fame that that it is virtually impossible that Respondent was unaware of Complainant's rights when it registered the disputed domain names. The word "pepsi" has no meaning in English separate and apart from the mark so the only plausible explanation for Respondent's choosing it is that he knew of it as a brand name. In fact the structure of the disputed domain names—(famous mark)+(geographic term)—suggests that Respondent knew of the mark and meant to secure domain names for a region. Moreover, Respondent's emails to Complainant show that Respondent had actual knowledge of Complainant and its rights. He asks, "How do I know this [email] is from Pepsi the company. This is located in Beirut??" Respondent also wrote that he did not intend to refer to "Pepsi the western company." From these statements, one may infer that Respondent knew of Complainant as a western company. Respondent also asked, "Also please let me know how much it would be if I wanted to buy the name for iran. So I can be a distributor in iran." By these statements, Respondent admits that he knows Complainant has rights that he must "buy" in order to be a distributor in Iran. The Panel finds that Respondent was aware of Complainant's rights when he registered the disputed domain names and that he did so in bad faith.
Respondent does not presently conduct any legitimate business under the mark and the website is not otherwise active. Nonetheless, given the worldwide fame and strength of the PEPSI mark, it is not possible to conceive of a legitimate use of the disputed domain names. Moreover, the evidence reflects a pattern of bad faith acquisitions of similarly famous trademarks. Respondent also registered domain names incorporating several other world famous marks including and and . It is telling that Respondent secured all of these domain names within a couple days of each other in the period October 10, 2015 to October 12, 2015. Moreover, Respondent's choice of the disputed domain names is telling of its intent to misrepresent itself as an entity related to the Complainant. Under these circumstances, the Panel finds Respondent's conduct constitutes bad faith use.
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names, and , be transferred to Complainant.
Lawrence K. Nodine
Sole Panelist
Date: October 18, 2016
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