WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Pizza Hut International, LLC v. Kim Beom Sung
Case No. DRO2002-0003
1. The Parties
Complainant is Pizza Hut International, LLC, a Delaware
limited liability company with its principal place of business
in Dallas, Texas, U.S.A. ('Complainant'). Complainant's
authorized representative is Milana Pantelic of Katzarov SA,
with offices in Geneva, Switzerland.
Respondent is Kim Beom Sung, of Kyunggi-do, 427-030, the
Republic of Korea ('Respondent').
2. The Domain Name and Registrar
The domain name at issue is <pizzahut.ro> ('the Domain
The registrar is Register.com of New York, New York, U.S.A.
3. Procedural History
The Complaint, in accordance with the Uniform Domain Name
Dispute Resolution Policy ("the Policy"), was
electronically filed with the World Intellectual Property
Organization (WIPO) Arbitration and Mediation Center ("the
Center") on August 29, 2002. The hardcopy version
of the Complaint was received on August 30, 2002. An
Acknowledgement of Receipt was sent by the Center to Complainant
by e-mail on August 30, 2002.
On August 30, 2002, Complainant's authorized representative
forwarded to the Center an e-mail, sent on the same date by
Respondent to Complainant's authorized representative in reply
to earlier e-mails as an addendum to the Complaint. On the same
date, the Center acknowledged the receipt of the addendum. On
September 4, 2002, Complainant's authorized
representative forwarded to the Center a fax sent by Respondent
with content identical to the August 30, 2002, e-mail.
On August 30, 2002, a Request for Registrar Verification was
transmitted to the Registrar. Reminders were sent on September 3
and September 6, 2002. On September 9, 2002,
the Registrar confirmed by e-mail that the Domain Name is
registered through the Registrar, that Respondent is the current
registrant of the Domain Name and that the Policy is applicable
to the Domain Name.
On September 9, 2002, a Complaint Deficiency Notification was
sent to Complainant with copy to Respondent, stating that
Complainant had failed to properly designate, as demanded by the
Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"),
which mutual jurisdiction should apply to submit any challenges
that may be made by Respondent to a Decision of the Panel to
transfer the Domain Name. On September 10, 2002,
Complainant's authorized representative cured the deficiency in
the Complaint by adapting paragraph VIII of the Complaint.
On September 12, 2002, a Notification of Complaint and
Commencement of Administrative Proceedings ("the
Commencement Notification") was transmitted by email and by
courier to Respondent, setting a deadline on October 2, 2002,
by which Respondent could make a Response to the Complaint.
Respondent did not file a Response, and on October 3, 2002,
the Center sent a Notification of Respondent Default to
On October 10, 2002, the Center sent a Notification of
Appointment of Administrative Panel and Projected Decision Date
by email to the parties, in which Wolter Wefers Bettink was
appointed as the Sole Panelist and the Projected Decision Date
was set at October 24, 2002.
4. Factual Background
The following facts, supported by evidence and not disputed
by Respondent, are established.
Complainant was founded in 1958, and has become a leading and
widely known operator of restaurants, offering primarily pizza,
pasta and other Italian-style food items. It is active
throughout the United States and worldwide with nearly 12.000
units and kiosks in more than 88 countries. In 2001, worldwide
sales exceeded 7,6 billion USD. The Republic of Korea, the
country of residence of Respondent, and Rumania, the country of
the ".ro" ccTLD, are among the countries in which
Complainant is active.
Complainant has registered its name PIZZA Hut as a trademark
or service mark in several countries.
Complainant recently learned that Respondent had registered
the Domain Name when it wished to register the Domain Name to
permit an on-line accessibility for its Rumanian franchisee.
The Domain Name currently shows a web page generated by the
Registrar with the title: "COMING SOON!", which
shows advertisements for the Registrar's domain name
registration and other services, and a banner for Wells Fargo.
5. Applicable Rules
Paragraph 4(a) of the Policy directs that Complainant, to
obtain the requested remedy, must prove each of the following:
(i) that the domain name in issue is identical or confusingly
similar to Complainant's trademark, and
(ii) Respondent has no rights or legitimate interest in
respect of the domain name, and
(iii) the domain name has been registered and is being used
in bad faith.
6. Partiesí Contentions
Complainant contends that the Domain Name is identical or
confusingly similar to several "PIZZA HUT" marks owned
by Complainant, as it is in no real sense distinguishable from
Complainant's numerous trade and service mark registrations. The
fact that the Complainant's trademark PIZZA HUT consists of
separate words and the Domain Name is a contraction of those two
words is immaterial.
Complainant states that Respondent has no rights or
legitimate interests in the Domain Name, as none of the three
circumstances provided in Paragraph 4(c) of the Policy are
present in this case. So far, Respondent has not used the Domain
Name at all, and to Complainant's knowledge, Respondent has not
been commonly known by the Domain Name nor is Respondent making
any legitimate non-commercial use of the Domain Name.
Complainant contends that Respondent registered and is using
the Domain Name in bad faith. Complainant states that it is not
possible that Respondent could have been unaware of
Complainant's trademark at the time of registration and that, as
Respondent's Domain Name does not resolve to a (real) website or
other on-line presence, and without any signs that Respondent is
establishing one, bad faith should be deemed present.
Complainant refers to a number of decisions under the UDRP in
which panels have found that a passive holding of a Domain Name
can constitute use of that Domain Name in bad faith, after
carefully considering all the circumstances of the case e.g. Guerlain
S.A. v. Peikang, WIPO
Case No. D2000-0055.
Respondent has not filed a response.
7. Due Process
Where, as in this case, a Respondent does not submit a
Response, the rules of due process require the Panel to verify,
to the extent possible, that Respondent is aware of the present
proceedings. The Panel is satisfied, on the basis of the file
documentation, that this is the case.
A copy of the Complaint was sent by the Center to Respondent
by courier and by e-mail to the e-mail address of Respondent. As
Respondent answered the emails sent to this email address by
Complainantís authorized representative, the Panel concludes
that this email address is active and that this address is used
The Panel therefore assumes that Respondent has received the
Complaint and is aware of the proceedings, but has chosen not to
8. Discussion and Findings
a. Trademark rights
Complainant has, in annexes to the Complaint, provided ample
evidence of its rights to the word mark PIZZA HUT ("the
PIZZA HUT trademark"), registered for several goods and
services in several classes and in several countries, including
The Republic of Korea, the country of residence of Respondent,
Furthermore, the Panel considers the mark PIZZA HUT to be a
well-known mark, both in the United States and in The Republic
of Korea, the country of residence of Respondent. Complainant
has substantiated this through the fact that the magazine
Business Week ranked the mark PIZZA HUT in the 48th position in
its annual ranking of the world's top 100 best brands, and the
fact that 236 Pizza Hut restaurants are operating in The
Republic of Korea.
b. Identical or confusingly similar
The Domain Name consists of a combination of the word "pizzahut"
and the ".ro" ccTLD suffix. The Panel finds the Domain
Name identical to the PIZZA HUT trademark, as (1) the fact that
the PIZZA HUT trademark consists of separate words and the
Domain Name is a contraction of those words is immaterial, and
(2) the ".ro" suffix only indicates that the Domain
Name is registered in the ".ro" ccTLD.
c. Rights or legitimate interests
By not submitting a Response, Respondent has failed to invoke
any circumstances, which could demonstrate any right or
legitimate interest in the Domain Name.
Furthermore, considering that Respondent has not contested
that he currently does not use the Domain Name (it does not
revolve to a website created by Respondent or some other on-line
presence of Respondent), that there are no indications that
Respondent could demonstrate any right or legitimate interest in
the Domain Name.
The Panel therefore finds that Respondent has no right or
legitimate interest in the Domain Name.
d. Bad faith
In his email of August 30, 2002, e-mail and the subsequent,
identical fax of Respondent to Complainant's authorized
representative, Respondent stated:
" Dear Milana Pantelic, How are you? I am Mr.Kim, Beom
sung.I am sorry for lately reply.I have been to China during 2
months. So, I could not your e-mails. I'd like to sell my
domains, <pizahut.ro> and <kfc.ro>.The prices are
USD100,000.00-(USD ONE HUNDRED THOUSAND DOLLAR). But this prices
are my hope. If you have some good ideas about above two domains,
please let me know as soon as possible. Sincerely yours, Kim,
Beom sung "
Although Respondent implies that he is willing to sell the
Domain Names at a lower price, the amount asked for (USD 100,000
for either domain name or both domain names) far exceeds normal
registration and transfer costs. The Respondent's statements
therefore lead the Panel to conclude that Respondent has
acquired the Domain Name primarily for the purpose of selling it
to Complainant for a valuable consideration in excess of out of
pocket costs directly related to the Domain Name. Paragraph
4(b)(i) of the Policy states that such a circumstance
constitutes evidence of registration and use of a domain name in
The Panel therefore concludes that Complainant has supplied
sufficient evidence that Respondent's registration and use of
the Domain Name have been made in bad faith.
On the basis of the foregoing the Panel decides that
Complainant has provided the required evidence for the requested
order transferring the domain name from Respondent to
Complainant. Accordingly, pursuant to Paragraph 4(i) of the
Policy, the Panel orders the registration of the Domain Name
<pizzahut.ro> be transferred to Complainant.
Wolter Wefers Bettink
October 24, 2002