Complainant is PepsiCo Inc., and Frito-Lay North America, Inc., United States of America (USA), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Privacy service provided by Withheld for Privacy ehf, Iceland / Curtis Murphy, Portugal.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2021. On August 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from named Respondent and contact information in the Complaint.
The Center sent an email communication to the Complainant on August 11, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 16, 2021.
The Center verified that the Complaint together with the amended 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 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 6, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 10, 2021.
The Center appointed Clive L. Elliott Q.C., as the sole panelist in this matter on October 11, 2021. 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 BackgroundFirst Complainant is PepsiCo, Inc., and Second Complainant is Frito-Lay North America, Inc. Second Complainant is a subsidiary of First Complainant and they have jointly filed this complaint and requested consolidation (together collectively referred to as “Complainant”).
First Complainant is one of the world’s largest companies manufacturing, distributing, and marketing food, snacks and beverages. It was formed in 1965 with the merger of the Pepsi-Cola Company and Frito-Lay, Inc.
Second Complainant is an American food company founded in 1932 that manufactures, markets and sells corn chips, potato chips and other snack foods. One of its most known brands includes “Lay’s”, a brand of potato chips. The name “Lay’s”, which has been used extensively since 1944, comes from the founder of Frito-Lay, Herman W. Lay.
Complainant has a strong online presence on various social media forums, including accounts related to “Lay’s” in Facebook, Instagram, Youtube, and Twitter.
Complainant is the registered owner of numerous trade marks consisting of the term LAY’S (“Complainant’s Mark”) in many jurisdictions throughout the world, including but not limited to:
Mark
Jurisdiction
Registration No.
Date of Registration
LAY’S
USA
0905919
January 12, 1971
LAY’S
USA
3150051
September 26, 2006
LAY’S
European Union
000278580
March 29, 1999
LAY’S
International Trademark
1366847
April 6, 2017
LAY’S
International Trademark
1408120
February 15, 2018
Complainant is also the owner of numerous domain names consisting of Complainant’s Mark under a wide range of generic and country code Top-Level Domains including:
According to the publicly available WhoIs, the Domain Name was registered on January 30, 2021 using a privacy registration service. At the time of the Complaint the website resolved to a website containing pay-per-click links targeting Complainant’s field of business and Complainant’s Mark.
5. Parties’ Contentions A. ComplainantComplainant contends that Complainant’s Mark is distinctive and well known throughout the world in connection with snack food and has been continuously and extensively used since 1944. Further, it asserts that the Domain Name has been used in connection with a fraudulent scheme and has been used to impersonate Complainant by sending an email from the address “[…]@lays.company” purporting to solicit business from Complainant’s advertising agency.
Complainant states that Respondent is not a licensee of Complainant, is not affiliated with Complainant in any way, and has not been granted authorization to make use of Complainant’s Mark in a domain name or otherwise.
Complainant contends that Respondent is not currently making a legitimate noncommercial or fair use of the Domain Name. Prior to this complaint the Domain Name used to point to a website containing sponsored links, the majority of them targeting Complainant’s Mark and core products. Complainant submits that such use of the Domain Name cannot be considered a legitimate noncommercial or fair use as Respondent was seeking to unduly profit from Complainant’s goodwill for its own financial gain.
Given its renown and goodwill, Complainant submits that Respondent must have had prior knowledge of Complainant’s Mark at the time of registration of the Domain Name.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and Findings ConsolidationFirst Complainant is the parent company of the Second Complainant. The Domain Name incorporates a trade mark long associated with Second Complainant. Both companies therefore have a direct interest in the issues raised in the complaint and leave to consolidate is granted.
A. Identical or Confusingly SimilarComplainant is one of the world’s largest food, snacks and beverage manufacturers. Complainant has traded since 1965, as a result of the merger of the Pepsi-Cola Company and Frito-Lay, Inc. One of Complainant’s best-known brands is “LAY’S”, a brand of potato chips named after the founder of Frito-Lay, Herman W. Lay.
Complainant has demonstrated it has rights over the registered trade mark LAY’S. The Domain Name reproduces Complainant’s Mark in its entirety (except for the apostrophe), along with the generic Top-Level Domain “.company”.
The Domain Name is confusingly similar to Complainant’s Mark. Accordingly, the first ground under the Policy is made out.
B. Rights or Legitimate InterestsComplainant asserts that the Domain Name currently resolves or has in the past resolved to a website that contains sponsored links, the majority of which target Complainant’s Mark and core products. The inference is that, in doing so, Respondent has engaged in conduct designed to profit from Complainant’s goodwill and for its own financial gain.
Given the highly distinctive nature of Complainant’s Mark, Complainant’s assertion requires an explanation as to why Respondent chose the Domain Name. In the absence of any response, the Panel concludes that Respondent has no rights or legitimate interests in the Domain Name and that in the absence of any licence or authorisation to use the Domain Name that Respondent is benefiting, either directly or indirectly, from wrongly associating itself with Complainant.
Absent any response or explanation, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name and that the Domain Name was not registered and has not been used for any legitimate or fair purpose.
Accordingly, the second ground under the Policy is made out.
C. Registered and Used in Bad FaithUnder this ground Complainant’s argument is short and to the point – that given its renown and goodwill, Respondent must have had prior knowledge of Complainant’s Mark at the time of registration of the Domain Name. The Panel accepts this argument and notes that Complainant’s rights in Complainant’s Mark are strengthened by the distinctive nature of Complainant’s Mark. In the Panel’s view, Respondent’s actions indicate it was aware of Complainant’s rights in Complainant’s Mark when registering the Domain Name.
The Panel notes the composition of the Domain Name reproducing the Complainant’s Mark with the generic Top-Level Domain “.company”. Together this is likely to denote to Internet users the company that makes or is otherwise associated with the LAY’s brand of potato chips.
The Panel therefore concludes that the Domain Name was registered and used for the purpose of taking advantage of Complainant’s reputation in Complainant’s Mark to attract Internet users to a website, via sponsored links, in order to turn a profit. This amounts to bad faith conduct under the Policy.
Finally, concerning the evidence provided by Complainant related to the use of an email address “[…]@lays.company”, the Panel finds that such use to impersonate Complainant amounts to bad faith under the Policy.
The third ground of the Policy is thereby established.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name,
Clive L. Elliott
Sole Panelist
Date: October 25, 2021