ADMINISTRATIVE PANEL DECISION
Kentucky Fried Chicken International Holdings, Inc. v. Kimbeomsung
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 the Respondent.
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 6’600 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 Respondent’s 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 Registrations:
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 – Class 2(L)
KFC No. 259446 – Class 3(L)
KCF No. 256654 – Class 7(L)
KFC No. 20175 – Class 112
c) in Romania
KFC No. 22413 – IC 29, 30 and 42
KFC No. 22415 – 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. Parties’ 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.Com’s 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 Database".
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 "email@example.com", 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 Complainant’s intentions was sent but still without success.
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 favor:
(i) that the <kfc.ro> domain name registered by Respondent is identical or confusingly similar to the mark owned by Complainant;
(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 Complainant’s 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, Respondent’s 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 domain name.
None of the three circumstances provided in paragraph 4(c) of the Policy for demonstrating a Respondent’s 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 Complainant’s 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 Complainant’s 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 Complainant’s knowledge, Respondent is not known by the kfc.ro domain name. To Complainant’s knowledge, "kfc" is neither Respondent’s name, Respondent’s nickname, the name or nickname of any other member of Respondent’s family, nor the name of a household pet; nor is it, to Complainant’s knowledge, related in any other way to Respondent. To Complainant’s knowledge, none of the above conditions is met either in Romania, or in Respondent’s home country (South Korea).
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 Complainant’s 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 gain….
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 Complainant’s business and/or that of a legitimate and local franchisee.
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, paragraph 7.7.
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 Respondent’s 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 relevant:
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. …
The concept of a domain name "being used in bad faith" is not limited to positive action; inaction is within the concept.
Telstra, paragraph 7.9. The Panel found for Complainant because Complainant’s 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 Complainant’s 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 Respondent’s bad faith. A second Complaint is indeed simultaneously submitted to Administrative Panel’s 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 Respondent’s 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 Complainant’s 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 ComplainantÂ´s 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 Marshmallows,WIPO 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 Respondent’s 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