Yum! Brands, Inc., KFC Corporation, Pizza Hut, Inc. and Taco Bell Corp. v. MICHELE BERTOLDI / PLCS, INC.
Claim Number: FA1510001643233
Complainant is Yum! Brands, Inc., KFC Corporation, Pizza Hut, Inc. and Taco Bell Corp. (“Complainant”), represented by Leanne Stendell of Yum! Brands, Inc., Texas, USA. Respondent is MICHELE BERTOLDI / PLCS, INC. (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kfcdelivers.com>, <pizzahutdelivers.com>, and <tacobelldelivers.com>, registered with FastDomain Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 20, 2015; the Forum received payment on October 20, 2015.
On October 21, 2015, FastDomain Inc. confirmed by e-mail to the Forum that the <kfcdelivers.com>, <pizzahutdelivers.com>, and <tacobelldelivers.com> domain names are registered with FastDomain Inc. and that Respondent is the current registrant of the names. FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 22, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@kfcdelivers.com, postmaster@pizzahutdelivers.com, and postmaster@tacobelldelivers.com. Also on October 22, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on December 7, 2015.
On December 8, 2015 Complainant submitted its Additional Submission pursuant to the Forum’s Supp. Rule 7.
On December 14, 2015 Respondent submitted its Additional Submission pursuant to the Forum’s Supp. Rule 7.
On December 15, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant uses the KFC, PIZZA HUT, and TACO BELL marks in connection with operation of over 39,000 restaurants throughout the world.
Complainant has rights in the KFC, PIZZA HUT, and TACO BELL marks through numerous trademark registrations throughout the world including registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,209,310, registered September 14, 1982; Reg. No. 729,847, registered April 10, 1962; Reg. No. 846,432, registered March 19, 1968), respectively. Respondent’s domains <kfcdelivers.com>, <pizzahutdelivers.com>, and <tacobelldelivers.com> are confusingly similar to the KFC, PIZZA HUT, and TACO BELL marks.
The disputed domains merely add the generic term “delivers” to the marks as well as the generic top-level domain (“gTLD”) “.com.” These differences do not differentiate the domains from the marks to an extent that would prevent a finding of confusing similarity.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not and has not ever been commonly known by the disputed domain names. Further, Respondent’s use of the disputed domain names, to display various advertisements related to the marks, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and is using the disputed domain names in bad faith. Respondent registered the domains in order to sell them for an amount in excess of the costs related to registering and hosting the domains. Respondent also has shown a clear pattern of registering domain names that infringe on other prominent marks. Additionally, Respondent’s display of advertisements on the confusingly similar domains demonstrates an effort to confuse and attract internet users for commercial profit. Finally, Respondent registered the disputed domain names with knowledge of Complainant’s marks.
B. Respondent
Respondent contends as follows;
Respondent’s domain names are not confusingly similar and Respondent has no intention of trying to confuse anyone.
Respondent’s purchase of the disputed domain names was a speculative investment that Respondent undertook with the hope of future profit if a restaurant saw value in the domains. Respondent’s ownership of the disputed domain names should be considered like ownership of a parcel of real property and Respondent would not be forced to relinquish real property.
Respondent believes Complainant Yum Brands is contemplating entering the food delivery business and has become interested in Respondent domains for their business interests, which again are simply online pieces of real estate. The domain names could be used for food delivery business relating to Complainant’s brands.
Respondent did not register and has not used the disputed domain names in bad faith. Respondent has not used the disputed domains at all. Respondent is only hosting the domains at Blue Host. Respondent has never attempted to sell the disputed domains and only informed Complainant that they could purchase them after Complainant demanded that Respondent transfer the domains.
C. Additional Submissions
In its additional submission Complainant contends as follows:
Respondent does not discuss or support that the domain names are not confusingly similar.
Respondent admits that he registered the at-issue domain names for an investment that he might sell for a profit to trademark owners. Such is not a defense showing rights and interests.
Complainants are, to varying degrees, in the business of providing home delivery services.
Respondent’s statement that it registered the domain names as investments and is not using them because they are unassigned does not preclude a finding of bad faith or suggest a finding that Respondent has rights and interests in the domain names.
It is not possible to conceive of any plausible actual or contemplated use of the at-issue domain names that would not be an infringement of Complainant’s rights under trademark law.
Respondent’s upped the amount he would sell the domain names for to a collective amount of $100 million because of how crucial they are to Complainant’s business thus confirming that the primary purpose of acquiring the at-issue domain names was to profit by transferring them to the trademark holder(s) for a profit.
In its additional submission Respondent contends as follows:
Respondent takes issue with how Complainant defines bad faith. The definition of bad faith includes the words “dishonest” and “mislead”
Respondent did nothing “dishonest” or “misleading” in purchasing the at-issue domain names. Respondent’s acted honestly in purchasing the domain names.
Respondent did not first contact Complainant to try to sell the domain names. Complainant contacted Respondent and made demands and then Respondent replied that he would not give them away but would sell them.
Complainant has rights in the relevant trademarks through its registration of such marks with the USPTO.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademarks in any capacity.
Respondent registered the at‑issue domain names after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain name as an investment and desired to sell the domain names to Complainant or other interested party. Respondent offered the domain names for sale to Complainant for $100 million. The at-issue domain names are used to address webpages displaying advertisements.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are four Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Complainants KFC Corporation, Pizza Hut, Inc. and Taco Bell Corp. are each sister companies that are wholly owned subsidiaries of Complainant Yum! Brands, Inc. The Panel therefore finds that the Complainants (elsewhere herein referred to collectively as Complainant) have a sufficient nexus to each other and to the matters complained of such that they shall be treated as if a single entity. See Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003) (treating the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names); see also, Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004) (finding a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark).
Complainant establishes its rights in the KFC, PIZZA HUT, and TACO BELL trademarks through its relevant trademark registrations of such marks with the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
The <kfcdelivers.com>, <pizzahutdelivers.com>, and <tacobelldelivers.com> respectively contain Complainant’s KFC, PIZZA HUT, and TACO BELL trademarks in their entirety, less any spaces, with the generic/descriptive term “delivers” added thereto. Each domain name concludes with the top level “.com” appended to the trademark laden string. These trivial differences between each at-issue domain names and its relevant trademark is inconsequential in differentiating one from the other under Policy ¶ 4(a)(i). Therefore the Panel finds that each at-issue domain name is confusing similar to one of Complainant’s trademarks. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also, Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Respondent lacks both rights and legitimate interests in respect of the each at-issue domain name. Respondent is not authorized to use Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name lists “MICHELE BERTOLDI / PLCS, INC.” as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by any of the <kfcdelivers.com>, <pizzahutdelivers.com>, and <tacobelldelivers.com> domain names. Therefore, the Panel finds that Respondent is not commonly known by any of the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent admits in its papers that it registered the confusingly similar domain names as investments and has offered them for sale to Complainant for an amount far in excess of its out of pocket costs. Respondent appears to use the at-issue domain names to host pay-per-click links to goods and services related to the trademark embedded in a relevant domain name. For example, at <kfcdelivers.com> advertisements for Complainant and Complainant’s competitors are listed with titles such as, “Burgerking Delivery,” “Chicken Delivery,” and “Pizza Deliver Number.” Further, the disputed domains <pizzahutdelivers.com> and <tacobelldelivers.com> resolve to websites that display similar competing advertisements. Using the domain names in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent offers no competent evidence or argument suggesting that notwithstanding the adverse Policy ¶ 4(a)(ii) findings discussed above that Respondent nevertheless has rights or interests in respect of one or more of the at-issue domain names. Therefore the Panel concludes Respondent’s has no rights or interest in respect of any of the at-issue domain names. See Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The domain names were registered and used in bad faith. As discussed below, Policy ¶ 4(b) specific bad faith circumstances as well as other circumstance are present which compel the Panel to conclude that Respondent acted in bad faith regarding each at-issue domain name pursuant to paragraph 4(a)(iii) of the Policy.
First, Respondent registered the confusingly similar domain names in order to sell them for an amount in excess of the costs. Email correspondence between Complainant and Respondent shows that after Complainant requested transfer of the domains Respondent offered to sell <tacobelldelivers.com> at a price of $1.64 million. After Complainant initiated the instant proceeding Respondent rescinded its original offer and demanded $100 million for the three trademark bearing domain names. Respondent’s conduct shows its bad faith pursuant to Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Second, Respondent has a clear pattern of registering domain names that infringe on other prominent trademarks. In addition to the three domains at issue in this proceeding, Respondent appears to have registered the domains names <applebeesdelivery.com>, <bonefishdelivers.com>, <bonefishdelivery.com>, <carrabbasdelivery.com>, <chick-fil-a-delivers.com>, <chilisfooddelivery.com>, <in-n-out-delivers.com>, <in-n-out-delivery.com>, <mcdonaldsdelivers.com>, <mcdonaldstakeout.com>, <olivegardenonlinedelivery.com>, and <tgifridaysonlinedelivery.com>. Respondent’s multiple domain name registrations which combine a generic term suggesting home delivery with a third party trademark, suggests bad faith registration and use of the instant at-issue domain names under Policy ¶ 4(b)(ii). See Gen. Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that the respondent engaged in a pattern of conduct, by registering over fifty domain names such as <amazondirect.com> and <lycosdirect.com>, and intended to prevent holders from using their marks in corresponding domain names).
Third, as mentioned above Respondent’s domain names address webpages with advertisements for Complainant and Complainant’s competitors such as “Burgerking Delivery,” “Chicken Delivery,” and “Pizza Deliver Number.” Respondent’s apparent for profit use of the confusingly similar domain names to address webpages displaying competing advertisements demonstrates bad faith under Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
Finally, Respondent registered the three at-issue domain names knowing that Complainant had trademark rights in each domain name’s embedded trademark, namely KFC, PIZZA HUT, and TACO BELL. Respondent’s prior knowledge is evident from the notoriety of Complainant’s trademarks and from Respondent’s admission that it acquired the confusingly similar domain names as investments. Given the forgoing, it is clear that Respondent intentionally registered the at-issue domain names to improperly exploit their trademark value, rather than for some benign reason. Respondent’s prior knowledge of Complainant's trademarks further indicates that Respondent registered and used the <kfcdelivers.com>, <pizzahutdelivers.com>, and <tacobelldelivers.com> domain names in bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kfcdelivers.com>, <pizzahutdelivers.com>, and <tacobelldelivers.com> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 16, 2015
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