WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
KFC Corporation v. Ruhollah Gheisarinia
Case No. D2012-1010
1. The Parties
The Complainant is KFC Corporation of Louisville, Kentucky, United States of America (“United States” or “U.S.”), represented by Fross Zelnick Lehrman & Zissu P.C., United States.
The Respondent is Ruhollah Gheisarinia of Najafabad, Esfahan, Iran.
2. The Domain Name and Registrar
The disputed domain name <irankfc.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2012. On May 14, 2012, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the disputed domain name. On May 15, 2012, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 21, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 25, 2012.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 4, 2012. In accordance with paragraph 5(a) of the Rules, the due date for Response was June 24, 2012. On June 8, 2012, Domain ID Shield, the privacy service which used to shield the Respondent’s contact information in the WhoIs register, transmitted an email communication to the Center. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2012.
The Center appointed Brigitte Joppich as the sole panelist in this matter on July 25, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
4. Factual Background
The Complainant, directly and through its franchisees, operates the KFC (Kentucky Fried Chicken) restaurant chain. The Complainant and its predecessors-in-interest began operating restaurants in the early 1950s, and there are now more than 5,000 franchised and company-owned KFC restaurants in the United States and more than 12,000 KFC restaurants outside the United States. The Complainant spends in excess of USD 1 billion annually promoting the KFC mark, menu items and restaurants. The Complainant serves more than 8 million customers each day in over 80 countries and territories around the world, with annual revenues in excess of USD 5 billion. The KFC brand is considered one of the top 20 franchise brands in the United States, most recently ranked number 17 on Entrepreneur Magazine’s Franchise 500 Rankings in 2012, and has been recognized as a top worldwide brand, ranked number 62 of the Best Global Brands in 2011 by the branding organization Interbrand.
The Complainant is the registered owner of numerous trademarks for KFC, inter alia US trademark registrations No. 979,050 KFC registered on February 19, 1974, No. 1,209,310 KFC registered on September 14, 1982, No. 1,798,046 KFC registered on October 12, 1993, and No. 1,807,753 KFC registered on November 30, 1993 (hereinafter referred to as the “KFC Marks”). Furthermore, the Complainant has developed a prominent Internet presence using its KFC Marks, including on its website at “www.kfc.com”.
The disputed domain name was registered on February 3, 2010 and is used in connection with a website falsely announcing that the Complainant granted the website operator a license to use the KFC Marks in Iran and authority to act on its behalf in Iran, to develop and hire employees for authorized Iran restaurant locations, and to advertise said locations to Internet users. In fact, the Complainant has no authorized franchisees or licensees in Iran as it is forbidden for U.S. companies to do business in Iran by the U.S. Comprehensive Iran Sanctions, Accountability, and Divestment Act of 2010, which prohibits U.S. companies from engaging in certain foreign exchange, banking, and property transactions in Iran.
The website available at the disputed domain name also shows the KFC Marks on almost every page and images of KFC goods, which the Respondent copied from the Complainant’s official website.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The Complainant contends that the disputed domain name is confusingly similar to the KFC Marks as it consists solely of the Complainant’s well-known KFC Marks preceded by the geographic and descriptive term IRAN in a format that mimics KFC franchisees’ similar geographic domain name designations.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as it is not a franchisee of the Complainant, as the Complainant has not granted the Respondent any license, permission, or other right by which the Respondent could own or use any domain name incorporating the KFC Marks, as the Complainant is prohibited by federal U.S. statute from authorizing a KFC restaurant business in Iran and, accordingly, has no representatives in Iran and has never authorized any KFC-related activities to take place in Iran, and as the disputed domain name is not, nor could be contended to be, a name or nickname of the Respondent.
(3) With regard to bad faith, the Complainant contends that, based on the international recognition which the KFC Marks enjoy, it is inconceivable that the Respondent was unaware of the Complainant’s trademarks when it registered the disputed domain name and that the fact that the Respondent uses the Complainant’s own photographs, images, marks and logos on the website associated with the disputed domain name is further proof that the Respondent was and is aware of the fame of the KFC Marks. The Complainant further states that the Respondent is also using the disputed domain name in bad faith as the registration and commercial use of a domain name wholly incorporating the KFC Marks evidences the Respondent’s bad faith, as the Respondent has used the disputed domain name for a website on which the Respondent holds itself out falsely as the Complainant’s authorized representative, and as the Respondent has thereby unfairly capitalized on the goodwill and fame of the Complainant’s KFC Marks, attracted traffic and potential customers.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant’s trade mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s highly distinctive and well-known KFC Marks.
The additional word “Iran” is merely a geographical identifier. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of geographical identifiers, such as “Iran” (cf. Hewlett-Packard Development Company, L.P. and Hewlett-Packard Company and Compaq Trademark B.V. v. Reza Rasti aka A.R.C. c/o reza rasti, NAF Claim No. 1293423 (<hp-iran.com> et al.); Nokia Corporation v. Arzanesh Nezhad Hanzali, NAF Claim No. 1271506 (<irannokia.com> et al.); Dell Inc. v. fadaei, NAF Claim No. 636421 (<delliran.com>); Amazon.com, Inc. v. Rayaneh Net, NAF Claim No. 196217 (<amazoniran.com>)).
Furthermore, it is well established that the generic Top-Level Domain (“gTLD”) suffix is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among UDRP panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name.
Based on the evidence before the Panel, the Respondent’s use of the disputed domain name was not bona fide under the Policy. The Respondent uses the disputed domain name not only to provide a website falsely announcing that the Complainant granted the website operator a license to use the KFC Marks in Iran and authority to act on its behalf in Iran, to develop and hire employees for authorized Iran restaurant locations, and to advertise said locations to Internet users, but also to advertise food and beverage products from the Complainant’s competitors. Such use does not establish rights or legitimate interests under paragraph 4(c)(i) of the Policy.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out of pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the KFC Marks. The Panel is aware that the Complainant’s KFC Marks have been used for more than 50 years and that such marks are very well-established because of their long standing and extensive use. It is therefore inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant’s rights. This finding is supported by the fact that the Respondent uses the disputed domain name in connection with a website including the KFC Marks on almost every page of his website and copied the Complainant’s images from its official website. The Panel is therefore satisfied that the Respondent registered the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy.
As to bad faith use, by using the disputed domain name in connection with a website which falsely states that the Respondent is the Complainant’s licensee in Iran and by copying the Complainant’s website’s content to his own, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to another online location for commercial gain as set out under paragraph 4(b)(iv) of the Policy.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has also satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <irankfc.com> be transferred to the Complainant.
Date: August 6, 2012