No US free-speech rights for registrant of 'pepsibottling.us'
In Pepsico Inc v Richard Leeds, the National Arbitration Forum has ordered the transfer of the domain name 'pepsibottling.us'. The panel held that Leeds's use of the domain name as the address of an online chat service was not protected by the free-speech provisions in the First Amendment of the US Constitution. This is Pepsico's third successful Uniform Domain Name Dispute Resolution Policy proceeding this year, following the transfers of 'pepsico.us' and 'pepsicola.us' in July.
Leeds had registered and was using the domain name as the address for a commercial website that acted as a portal to numerous chat forums on a number of general topics, as well as access to sites offering products or services for sale.
The panel held that 'pepsibottling.us' was confusingly similar to Pepsico's PEPSI and PEPSI-COLA trademarks, as well as its trade name The Pepsi Bottling Group. It also found that Pepsico's marks and trade name are famous worldwide and that Leeds had knowledge of Pepsico's rights in them. Leeds therefore had no legitimate interest in the domain name, and had registered and used it in bad faith.
The most notable aspect of the decision is the panel's conclusion that the use of a complainant's mark to deceive internet users into believing they are accessing a website in some way connected to the complainant is not protected by the First Amendment. The panel held that 'pepsibottling.us' was:
- used merely to direct traffic to Leeds's site;
- was not part of a communicative message; and
- had no expressive content to distinguish Leeds from Pepsico.
Thus, while the content of Leeds's site may have enjoyed First Amendment and fair-use protection, those protections did not equate to rights or a legitimate interest in the domain name.
Jeanette Lee, Bereskin & Parr, Toronto
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