WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kentucky Fried Chicken International Holdings, Inc. v.
Case No. DRO2002-0004
1. The Parties
The Complainant is Kentucky Fried Chicken International
Holdings, Inc., a corporation of the state of Delaware, with its
principal place of business in Louisville, Kentucky, United
States of America.
The Respondent is Kimbeomsung, an individual resident in
Kyunggi-do, Republic of Korea.
2. The Domain Name and Registrar
The domain name at issue is <kfc.ro> which is
registered with Register Com ("the Registrar") of
New York, United States of America.
3. Procedural History
A Complaint was submitted by e-mail to the World Intellectual
Property Organization Arbitration and Mediation Center (the
"Center") on August 29, 2002, and in
hardcopy on August 30, 2002. An addendum to the
Complaint was received by the Center on August 30, 2002,
and an Amendment was received by the Center on September 10, 2002.
An Acknowledgment of Receipt was sent by the Center to the
Complainant, dated August 30, 2002.
On August 30, 2002, a Request for Registrar
Verification was transmitted to the Registrar.
On September 6, 2002, the Registrar stated that it was not in
receipt of the Complaint, but confirmed that the domain name at
issue, was registered with the Registrar and that the Respondent
was the current registrant of the name. The Registrar also
forwarded the requested WHOIS details and confirmed that the
Uniform Domain Name Dispute Resolution Policy (the "Policy")
applies to the domain name.
The Registrar has currently incorporated the Policy in its
agreements. The Policy was adopted by the Internet Corporation
for Assigned Names and Numbers ("ICANN") on August 26, 1999.
There is no evidence that the Respondent ever requested that the
domain names at issue be deleted from the domain name database.
Accordingly, the Respondent is bound by the provisions of Policy.
The Panel has determined that the Complaint is in formal
compliance with the requirements of the Policy, the Rules for
Uniform Domain Name Dispute Resolution Policy, as approved by
ICANN on October 24, 1999, (the "Rules"),
and the WIPO Supplemental Rules for Uniform Domain Dispute
Resolution Policy, in effect as of December 1, 1999 (the
"Supplemental Rules"). The required fees for a
single-member Panel were paid on time and in the required amount
by the Complainant.
On September 12, 2002, a Notification of Complaint and
Commencement of Administrative Proceeding (the "Commencement
Notification") was transmitted to the Respondent (with
copies to the Complainant, the Registrar and ICANN), setting a
deadline of October 2, 2002, by which the Respondent could
file a Response to the Complaint. The Commencement Notification
was transmitted to the Respondent by post/courier and e-mail to
the addresses indicated in the Complaint.
On October 3, 2002, having received no Response from the
Respondent the Center transmitted to the parties a Notification
of Respondent Default. On October 21, 2002, the Center
issued to both parties a Notification of Appointment of
Administrative Panel and Projected Decision Date. This
Notification informed the parties that the Administrative Panel
would be comprised of a sole Panelist, Mr. Jonas Gulliksson.
The Sole Panelist finds that the Administrative Panel was
properly constituted and appointed in accordance with the Rules
and Supplemental Rules. The Administrative Panel shall issue its
Decision based on the Complaint, the Policy, the Rules, the
Supplemental Rules, and without the benefit of any Response from
4. Factual Background
The Complainant and its Registered Trademarks
Complainant is an operator of restaurants, offering primarily
fried-chicken products and has sold and advertised its services
under the marks KENTUCKY FRIED CHICKEN or the acronym KFC
throughout the United States and worldwide with nearly 6í600
units and kiosks in more than 55 countries.
The Complainant opened the first KFC restaurant in the
Republic of Korea in April 1984. There are at present 236
KFC restaurants located in Respondentís home country, in 16
major Republic of Korean cities.
Complainant has used its mark with its business for decades
and owns approximately two hundred (200) registrations worldwide
for KFC trademarks in 99 jurisdictions.
In particular, the Complainant owns the following
a) in the United States
KFC No. 97905
KFC No. 1209310
KFC No. 1807753
KFC No. 1798046
b) in the Republic of Korea
KFC No. 258195 Ė Class 2(L)
KFC No. 259446 Ė Class 3(L)
KCF No. 256654 Ė Class 7(L)
KFC No. 20175 Ė Class 112
c) in Romania
KFC No. 22413 Ė IC 29, 30 and 42
KFC No. 22415 Ė IC 29, 30 and 42
Complainant is also the proprietor of the following domains:
a) gTLD domain names:
b) ccTLD domain names
kfc.co.uk (United Kingdom)
5. Partiesí Contentions
The Complainant has alleged the following:
"Recently, following a decision to begin using the ccTLD
"KFC" in Romania to permit an on-line accessibility
for his local franchisee, Complainant learned that Respondent
had registered the domain name kfc.ro. See Register.Comís web
page where a flashing banner indicates that to acquire this
domain name, an anonymous offer of minimum $ 200.00 might be
considered. Instead of immediately placing an offer, Complainant
contacted the Romanian Domain Name Registry <nic.ro> and
finally found out the Respondent identity through the "Whois
Complainant instructed its Swiss attorneys, Katzarov S.A. to
contact Respondent in an attempt to amicably settle the matter.
On July 26, 2002, a first e-mail was sent to
Respondent at "firstname.lastname@example.org", inviting him to
make an offer for the transfer of <kfc.ro>, including the
reimbursement of all registration and other reasonable fees
incurred. Respondent did not appear willing to negotiate since
no reaction was obtained. On August 20, 2002, a second
e-mail reiterating Complainantís intentions was sent but still
Copy of the above attempts to establish contact with
Respondent is attached.
Paragraph 4(a) of the policy lists the elements that a
Complainant must prove in order to obtain a decision in its
(i) that the <kfc.ro> domain name registered by
Respondent is identical or confusingly similar to the mark owned
(ii) that Respondent has no rights or legitimate interests in
respect of the kfc.ro domain name;
(iii) that the kfc.ro domain name has been registered by
Complainant in bad faith.
Each element is present in this case.
Identity or Confusing Similarity
The <kfc.ro> domain name is identical or confusingly
similar to the marks owned by Complainant. This fact is rather
self-evident. Kentucky Fried Chicken
International Holdings, Inc. has registered and used
the "KFC" mark on an international basis for more than
50 years. The disputed kfc.ro domain name is in no real sense
distinguishable from Complainantís numerous trade and service
mark registrations. Accordingly, the Romanian CCTLD (kfc) is
merely identical to registrations held by Kentucky Fried
Chicken International Holdings, Inc.internationally. This
fact is verified as well in Romania and in South Korea,
Respondentís home country.
The "kfc" letters used in the corresponding
Romanian CCTLD are identical in appearance, sound and meaning to
"KFC" and the marks owned by Complainant. Identity or
confusing similarity is therefore unquestionable and manifest.
Rights or Legitimate Interest
Respondent has no rights or legitimate interests in the
None of the three circumstances provided in paragraph 4(c) of
the Policy for demonstrating a Respondentís rights to and
legitimate interests in a domain name are present in this case.
The three possible justifications are listed and discussed below:
(i) Before any notice to you of the dispute, you use of, or
demonstrable preparations to use the Domain Name or a name
corresponding to the Domain Name in connection with a bona fide
offering the goods or services.
To Complainantís knowledge, Respondent has never used the
<kfc.ro> domain name or a name corresponding to that
domain name in connection with a bona fide offer of goods or
services. Indeed, to Complainantís knowledge, Respondent has
never used the kfc.ro domain name at all.
(ii) You (as an individual, business, or other organization)
have been commonly known by the Domain Name, even if you have
acquired no trademark or service mark rights.
To Complainantís knowledge, Respondent is not known by the
kfc.ro domain name. To Complainantís knowledge, "kfc"
is neither Respondentís name, Respondentís nickname, the
name or nickname of any other member of Respondentís family,
nor the name of a household pet; nor is it, to Complainantís
knowledge, related in any other way to Respondent. To
Complainantís knowledge, none of the above conditions is met
either in Romania, or in Respondentís home country (South
Additionally, Respondent is not and has never been a licensee
or franchisee of Complainant; he has never asked and has never
been permitted in any way by Complainant, to register
Complainantís marks, or to apply for or use any domain name
incorporating any of those marks, he has never been part of any
commercial, or other, relations with either Complainant or any
of its subsidiaries or franchisees.
(iii) You are making a legitimate noncommercial or fair
use of the Domain Name, without intent for commercial gainÖ.
Respondent is not making any legitimate noncommercial fair
use of the kfc.ro domain name. No other rights or legitimate
interests in the name exist or have been asserted by Respondent.
As illustrated above, "KFC" is an extremely
distinctive, coined and well known mark and is therefore not a
name that traders would legitimately choose unless seeking to
create an impression of association with Complainant. Therefore,
no actual or contemplated bona fide or legitimate use of the
<kfc.ro> domain name could be claimed by Respondent. As a
matter of fact, this situation seriously disrupts
Complainantís business and/or that of a legitimate and local
Bad Faith Registration
Respondent has registered the kfc.ro domain name in bad faith.
Respondent has no legitimate rights or interests in that domain
name, as shown in paragraph 15. Respondent does not conduct any
legitimate commercial or noncommercial business or activity on
the web site and, given the many trademark registrations for
"KFC " and its wide reputation as shown in previous
paragraphs, it is not plausible that the Respondent could have
been unaware of this at the time of registration. Registration
under such circumstances is bad faith registration. See Telstra
Corporation Limited v. Nuclear Marshmallows, WIPO
Case No D2000-0003, WIPO Administrative Panel Decision,
In accordance with the above decision, Complainant even
contends that Respondent is using the <kfc.ro> domain name
in bad faith. The concept of "bad faith use" in
paragraph 4(b) of the Policy includes not only positive action
but also passive holding. Telstra, paragraph 7.7. In Telstra,
the Panel found that Respondentís domain name did not resolve
to a web site or other on-line presence, and that there was no
sign that Respondent was about to establish one. There was
neither evidence of advertising, promotion or display to the
public of the domain name nor evidence that the Respondent had
offered for sale, rent, or otherwise transfer the domain name to
the Complainant. In short, there was no positive action being
undertaken by the Respondent in relation to the domain name. Telstra,
paragraph 7.8. However, the Panel concluded that inaction does
not preclude a finding of "bad faith use" since what
is not whether the Respondent is undertaking a positive
action in bad faith in relation to the domain name, but instead
whether, in all the circumstances of the case, it can be said
that the Respondent is acting in bad faith. Ö
The concept of a domain name "being used in bad faith"
is not limited to positive action; inaction is within the
Telstra, paragraph 7.9. The Panel found for
Complainant because Complainantís mark had a strong reputation
and was very well known worldwide, while Respondent was neither
using the domain name, nor had shown any good faith use or
intent to use the corresponding web site and it was not possible
to find any possible legitimate use of the domain name by
Respondent. Telstra, paragraph 7.12.
As in Telstra, Complainant is a very well known
corporation, with a strong reputation worldwide and the public
is familiar with Complainantís marks and the products that
they represent; Respondent has no legitimate rights in the name
or to use the name; Respondent is not using the domain name; and
it is implausible that Respondent may have chosen the domain
name for a legitimate reason. As a result, the present situation
is disrupting the business of a legitimate local franchisee.
The interpretation of "bad faith use" as including
a non-justified holding of a domain name without either any
activity on the corresponding web site or any legitimate right
in the name has been approved by the Panel in the later Guerlain
and Nike decisions, WIPO
Cases Nos. D2000-0055 and D2000-0167,
WIPO Administrative Panel Decision, paragraph 6.
Incidentally, another factual circumstance to which attention
must be drawn also militates in favor of Respondentís bad
faith. A second Complaint is indeed simultaneously submitted to
Administrative Panelís consideration for the ccTLD <pizzahut.ro>,
registered by same Respondent. The "Pizza Hut"
denomination and marks enjoy more or less the same worldwide
status as KFC and designate comparable business. The fact that
same Respondent secured both kfc.ro and <pizzahut.ro> domain
names in Romania remains a tangible and additional indication of
Respondentís bad faith in this matter."
Finally, Complainant has requested the Administrative Panel
to issue a decision by which the contested domain name is
transferred to Complainant.
Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules the Panel shall
decide a Complaint in accordance with the Policy, the Rules and
any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that the Complainant
must prove each of the following:
1) that the domain name registered by the Respondent is
identical or confusingly similar to a trademark or service mark
in which the Complainant has rights; and
2) that the Respondent has no legitimate interests in respect
of the domain name; and
3) that the domain name has been registered and is being used
in bad faith.
The Panel is of the opinion that the domain name at issue is
identical to Complainantís mark KFC.
The Respondent has not proven that he has any prior rights or
legitimate interests in the domain name.
The prerequisites in the Policy, Paragraph 4(a)(i) and (ii)
are therefore fulfilled.
Paragraph 4 (a)(iii) of the Policy further provides
registration and use in bad faith.
It is obvious from the facts in the case, i.e. the prior
ownership by Complainant of trademark registrations for KFC
including registrations in the Republic of Korea, the fact that
it is highly improbable that the Respondent has selected the
name without knowledge of the Complainantīs numerous trademark
registrations, the fact that the Respondent is not using the
domain name at issue, the non-contested statement in the
Complaint and the contents of the Policy Paragraphs 4(a)(i-iii)
and 4(b)(i) that the domain name has been registered and
used in bad faith. Cf. Telstra Corporation Limited v. Nuclear
Case No. D2000-0003.
Consequently, all the prerequisites for cancellation or
transfer of the domain name according to Paragraph 4(i) of the
Rules are fulfilled.
The Complainant has requested transfer of the domain name.
In view of the above circumstances and facts the Panel
decides that the domain name <kfc.ro> registered by the
Respondent is identical to the trademark in which the
Complainant has rights, that the Respondent has no rights or
legitimate interests in respect of the domain name at issue, and
that the Respondentís domain name has been registered and is
being used in bad faith. Accordingly, pursuant to Paragraph 4(i)
of the Policy, the Panel requires that the registration of the
domain name <kfc.ro> be transferred to the Complainant.
Dated: November 4, 2002