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 Name').
The registrar is Register.com of New York, New York, U.S.A. ('the Registrar').
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 Respondent.
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. Parties’ 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 Complainant’s authorized representative, the Panel concludes that this email address is active and that this address is used by Respondent.
The Panel therefore assumes that Respondent has received the Complaint and is aware of the proceedings, but has chosen not to respond.
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, and Rumania.
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 bad faith.
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