KFC Corporation v. Domain Admin / Whois protection, this company does not own this domain name s.r.o.
Claim Number: FA1610001697817
Complainant is KFC Corporation (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Domain Admin / Whois protection, this company does not own this domain name s.r.o. (“Respondent”), Czech Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kfclistens.com>, registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 12, 2016; the Forum received payment on October 12, 2016.
On October 17, 2016, Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com confirmed by e-mail to the Forum that the <kfclistens.com> domain name is registered with Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com and that Respondent is the current registrant of the name. Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com has verified that Respondent is bound by the Hebei Guoji Maoyi (Shanghai) LTD dba HebeiDomains.com 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 19, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 8, 2016 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@kfclistens.com. Also on October 19, 2016, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
(UDRP Rule 11)
To the best of KFC’s knowledge, the language of the Registration Agreement applicable to the disputed domain name is Finnish. KFC requests that the language of proceedings be English and provides the following supporting arguments and evidence. The “spirit of paragraph 11 is to ensure fairness in the selection of language by giving full consideration, inter alia, to the parties’ level of comfort with each language, expenses to be incurred, and possibility of delay in the proceeding in the event translations are required and other relevant factors.” Adidas AG v. Daehyeon Kim, D2013-1904 (WIPO January 19, 2014) (finding that although the registration agreement was in Korean, the administrative proceeding would be conducted in English because, inter alia, (1) the disputed domain name contained an English word; (2) the respondent registered the disputed domain name in connection with the “.com” generic Top-Level Domain, which primarily targets English-speaking Internet users; and (3) the complainant was unable to communicate efficiently in Korean).
In the present case, KFC is a US-based company that conducts its daily operations in English. Thus, it would be “cumbersome and to [KFC’s] disadvantage to be forced to” conduct this proceeding in Finnish. Wordpress Foundation v. duanxiangwang, D2011-0836 (WIPO July 6, 2011) (“The Complainant is a United States headquartered company. It would therefore be cumbersome and to the Complainant’s disadvantage to be forced to translate the entire Complaint in Chinese”). Moreover, the disputed domain name identically reproduces the term "KFC," as well as the generic English term “listens.” The disputed domain name is registered in connection with the “.com” generic Top-Level Domain, which primarily targets English-speaking Internet users. Adidas AG v. Daehyeon Kim, D2013-1904 (WIPO January 19, 2014) (finding that “.com” generic Top-Level Domains primarily target English-speaking Internet users). It is also significant that all the content displayed by Respondent on the webpage for the disputed domain name is in English. See Swarovski Aktiengesellschaft v. wutianhao, D2010-0503 (WIPO May 24, 2010) (conducting proceeding in English in part because the website displayed at the infringing domain name “displays the contents in English.”). KFC contends that since Respondent is clearly capable of corresponding in English, and because KFC’s counsel cannot correspond in Finnish without enduring cumbersome and costly efforts, in the spirit of fairness under paragraph 11, the language of proceedings should be English.
[a.] The Domain Name is Identical or Confusingly Similar to Complainant’s Mark (UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i))
1. Complainant KFC is an international chicken restaurant chain founded by the famed Colonel Sanders over 70 years ago. There are over 18,000 restaurants worldwide in over 115 countries. KFC makes extensive use of its KFC Mark on the Internet, and along with its affiliates owns dozens of KFC-inclusive domain names including kfc.com, kfcfranchise.com, howdoyoukfc.com, kfcdelivers.com, kfcfusion.com, jobs-kfc.com, kfc.us, and kfcathome.com and many more.
2. Complainant’s Mark has been used continuously in connection with restaurant services and food products since the restaurant’s founding. Complainant and its affiliates own at least 333 active KFC trademark registrations in over 100 countries. The KFC Mark is trademarked 332 times with 128 different trademark authorities in a wide variety of countries.
3. For more than half a century, Complainant has actively and prominently used and promoted the KFC Mark through advertising, sales, on the Internet, and in various other ways. These efforts have reached hundreds of millions of people in the U.S. and around the world. As a result, Complainant’s Mark has acquired substantial goodwill and become a valuable intellectual property asset of Complainant. Complainant’s Mark serves to identify and indicate the source of Complainant’s products and services to the consuming public, and to distinguish its products and services from those of others. Recognizing this, Interbrand ranked Complainant’s brand in 2015 as the 75th most valuable brand in the world, valued at over $5.5 billion, and Millward Brown Optimor (“MBO”), a leading brand valuation company, similarly ranked Complainant’s brand in 2015 as 83rd most valuable brand in the world, valued at over $12 billion.
4. The KFC Mark has been found by other UDRP panels to be famous. See KFC Corporation v. Ruhollah Gheisarinia, D2012-1010 (WIPO August 6, 2012) (“The Panel is aware that 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.”) See also Yum! Brands, Inc., KFC Corporation, Pizza Hut, Inc. and Taco Bell Corp. v. MICHELE BERTOLDI / PLCS, INC., Case No. FA 1643233 (Forum 2015) (acknowledging KFC Mark’s notoriety).
5. The Domain Name is being used to feature pay-per-click advertising content. Users accessing the domain name kfclistens.com arrive at a homepage entitled “KFCListens.Com” The website displays several links with names like “KFC Experience Survey,” “KFC Customer Service,” and “Customer Satisfaction of KFC”. Each link leads to third-party commercial websites or other landing pages that link to third-party commercial websites, which may include those of direct restaurant competitors.
6. Upon information and belief, the various website owners who are linked through the www.kfclistens.com website provide monetary compensation for the placements of their addresses and sites. Upon information and belief, this compensation is based on the number of hits the website owners get from being listed on Respondent’s sites. Accordingly, Respondent receives a direct financial benefit from its diversion of Complainant’s potential customers to its sites. “In cases such as this, the Panel presumes that Respondent is collecting click-through fees and attempting to profit by creating a likelihood of confusion between Complainant’s … mark and the confusingly similar … domain name.” Exxon Mobil Corp. v. mga enters. ltd., FA 1273445 (Forum Aug. 26, 2009).
7. On July 22, 2016, after discovering the kfclistens.com domain name, Complainant’s counsel sent Respondent through the privacy protection service, a cease-and-desist letter, advising Respondent that its acts constituted infringement and instructing Respondent to deactivate and transfer kfclistens.com to Complainant KFC. No response was received from Respondent.
8. The Domain Name is identical or confusingly similar to Complainant’s Mark because it incorporates Complainant’s famous and distinctive KFC trademark in its entirety. See Chanel, Inc. v. Estco Tech. Group, D2000-0413 (WIPO Sept. 18, 2000). See also Yum! Brands, Inc., 1643233 (Forum 2015) (<kfcdelivers.com> contains Complainant’s KFC mark in its entirety and is confusingly similar); KFC Corporation, D2012-1010 (WIPO 2012) (<kfciran.com> “fully incorporates the Complainant’s highly distinctive and well-known KFC Marks” and is confusingly similar).
9. Given the fame of Complainant’s Mark, Respondent’s misappropriation of the Mark in the Domain Name is particularly likely to cause confusion. See AT&T Corp. v. Alamuddin, D2000-0249 (WIPO 2000), (noting that when a trademark is well-known internationally, there is a high likelihood that a domain name incorporating the mark will create confusion).
10. Respondent’s addition of the gTLD “.com” to the Domain Name does not distinguish the Domain Name from the KFC Mark. See Altria Group, Inc. and Altria Group Distribution Company v. geosum, FA1602001659288 (Forum March 16, 2016) (finding that the “.website” gTLD is inadequate to distinguish <altria.website> from Complainant’s ALTRIA mark and that the <altria.website> domain name is identical to the ALTRIA mark under the Policy); State Farm Mutual Automobile Insurance Company v. geosum, FA1511001649433 (Forum Dec. 23, 2015) (finding that the addition of the “.website” gTLD did not adequately distinguish the disputed domain name from the famous and registered marks of the complainant); Statoil ASA v. Geosum, D2015-1541 (WIPO Oct. 18, 2015) (finding that “generic meaning gTLDs [such as “.website”] are usually not taken into account for the purposes of determining confusing similarity under the Policy.”); Intesa Sanpaolo S.p.A. v. Geosum / N/A, D2015-1283 (WIPO Sept. 25, 2015) (finding there are no differences between the disputed <intesasanpaolo.website> domain name and the complainant’s INTESA SANPAOLO mark); BHP Billiton Innovation Pty Ltd v. Geosum, D2015-1272 (WIPO Sept. 7, 2015) (“UDRP panels have commonly disregarded the generic Top-Level Domain (“gTLD”) suffix in evaluating identity or confusing similarity.”)
11. Respondent’s addition of the word “listens” likewise does not abate the likelihood of confusion created by Respondent’s use of the KFC Mark in the Domain Name, because the word “listens” has an obvious relationship to Complainant’s provision of customer service and listening to feedback from customers. The term “listen,” when used in connection with companies, refers to listening to customers, as in customer satisfaction feedback. The top hits for an internet search of “KFC listens” reveals several websites of Complainant, including www.kfclistens.ca, regarding guest experience and customer satisfaction. Because the word “listens” is directly related to Complainant’s business, the addition of this word to the Domain Name causes rather than abates a likelihood of confusion. See Yum! Brands, Inc., 1643233 (Forum Dec. 16, 2015) (<kfcdelivers.com> is confusingly similar to the KFC Mark despite addition of generic/descriptive word “delivers” and a gLTD); Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Forum Apr. 30, 2007) (<whitneynationalbankers.com> is confusingly similar to WHITNEY despite additional words because “national” and “bankers” are related to complainant’s business).
12. Because the Domain Name incorporates the famous KFC Mark in its entirety in addition to a non-distinctive term that is directly related to Complainant’s business, the Domain Name is identical or confusingly similar to Complainant’s Mark.
[b.] Respondent Has No Rights or Legitimate Interests in the Domain Name (UDRP Rule 3(b)(ix)(2); Policy ¶4(a)(ii))
13. The primary factors the Panel considers when evaluating whether Respondent has rights or legitimate interests in the domain name are: i) whether Respondent previously used the domain name in connection with bona fide offering of goods or services; ii) whether Respondent has been commonly known by the domain name; and iii) whether Respondent is making a legitimate noncommercial or fair use of the domain name. See Policy Para. 4(c). “[I]t is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to Respondent to rebut Complainant’s contentions. If Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.” Tumblr, Inc. v. Duanxiangwang, D2013-0441 (WIPO May 18, 2013).
14. Respondent is not using, and has not used, the Domain Name in connection with any bona fide offering of goods or services, nor has it made any legitimate noncommercial or fair use of the Domain Name. Rather, the demonstrated purpose and use of the Domain Name is to exploit Complainant’s Mark for profit by confusing and diverting consumers to Respondent’s site in order to aggregate advertising revenue through the use of sponsored links. Panels have frequently held that such “link farms” or click-through advertising websites demonstrate a domain name is not being used for either 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). See generally Balglow Finance v. Name Administration Inc. (BVI), D2008-1216. See also Exxon Mobil Corp. v. McCausland, FA 1218131 (Forum Sept. 17, 2008), (link farm “constitutes neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)”); Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names.)
15. Respondent is not currently known and has never been known as kfclistens.com, nor any variation thereof. Given the fame and distinctive nature of Complainant’s Mark, it would be impossible for Respondent to claim to be “commonly known by” any derivative of the Mark KFC. See Nike, Inc. v. de Boer, D2000-1397 (WIPO Dec. 29, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing the complainant’s distinctive and famous NIKE trademark). The presumption is that the no one can be commonly known by a famous mark or trade name other than the owner of the mark. See Pepsico, Inc. v. Thompson, FA 114678 (Forum Aug. 7, 2002).
16. The content of the website to which the Domain Name resolves demonstrates Respondent does not have any reason to use the distinctive term “KFC” and has no rights in the term “KFC”. Complainant’s Mark is not generic or descriptive such that Respondent would need to use the term “KFC”. Moreover, nothing about Respondent’s website indicates a reason for using the term “KFC” in the domain. When no logical legitimate reason exists for using another’s distinctive mark as a domain name, this weighs against any rights or legitimate interest in the domain name. See, e.g. Belupo d.d. v. WACHEM d.o.o., D2004-0110 (WIPO Apr. 14, 2004) (concluding Respondent’s claim that the domain was an abbreviation of a business name was illogical and contrived).
17. Because Respondent is neither using the Domain Name for a bona fide offering of goods or services, nor making a legitimate noncommercial or fair use of the Domain Name, nor is known by either the Domain Name or KFC Mark, Respondent is not making any legitimate use of the Domain Name and lacks any rights or legitimate interests in the Domain Name.
[c.] Respondent registered and has been using the Domain Name in bad faith (UDRP Rule 3(b)(ix)(3); Policy ¶4(a)(iii))
18. Respondent’s use of the Domain Name to create confusion with Complainant’s Mark and to divert customers from Complainant’s legitimate sites for Respondent’s own commercial gain, is evidence of bad faith registration and use of the Domain Name. See Policy ¶4(b)(iv); University of Houston Sys. v. Salvia Corp., FA 637920 (Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).” See also Exxon Mobil Corp. v. mga enters. ltd., FA 1273445 (Forum Aug. 26, 2009) (using complainant’s mark to divert internet users to a page of third-party links for the purpose of collecting click-through fees is evidence of bad faith). See also Homer TLC v. Kang, FA 573872 (Forum Nov. 22, 2005) (“The Panel infers that Respondent receives click-through fees for diverting Internet users to various commercial websites. Respondent registered and used the disputed domain name in bad faith under Policy ¶4(b)(iv) as Respondent is using the <hamptonbay.com> domain name to intentionally attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of its website.”)
19. Because Complainant’s KFC Mark is famous, Respondent had actual or constructive knowledge of Complainant’s rights when it selected the confusingly similar Domain Name, and as such the Domain Name was registered in bad faith. See KFC Corporation v. Ruhollah Gheisarinia, D2012-1010 (WIPO August 6, 2012) (“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 Respondent registered the disputed domain name without knowledge of the Complainant’s rights.”). Respondent had at the very least constructive knowledge of the KFC Mark, which is registered on the Principal Register of the United States Trademark Office and has been used for over 50 years. See, e.g., Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F. Supp. 2d 1339, 1349 (S.D. Fla. 2001) ( “a Principal Register registration … is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072). See also, e.g., Option One Mortgage Corp. v. Option One Lending, D2004-1052 (WIPO Feb. 27, 2004)(“The fact that the Complainant’s mark is an easily discovered, … registered trademark of exactly the kind frequently trademarked … leads the Panel to conclude that the … Respondent, when registering the domain name, acted in disregard of the rights of third parties and therefore in bad faith. In the circumstances of this case, if the Respondent did not know of the Complainant’s mark, it should have known.”) Therefore, Respondent registered the Domain Name in bad faith. See Tumblr, Inc. v. Privacy Protect.org/Jiangchunyuan, D2013-0243 (WIPO March 15, 2013) (bad faith where panel “finds it difficult to believe that Respondent was unaware of the TUMBLR mark and of the Complainant prior to registering the disputed domain name” and “draws the inference that the disputed domain name must have had its value to the Respondent because of the confusing similarity to the Complainant’s TUMBLR mark and <tumblr.com> domain name.”); Charleston Alexander Jewelers, Inc. v. Virtual Sky, FA0504000452231 (Forum May 19, 2005) (“Registration of a domain name that is confusingly similar to another’s mark despite actual or constructive knowledge of the mark holder’s superior rights is tantamount to bad faith registration and use pursuant to Policy Paragraph 4(a)(iii).”).
20. In conclusion, based on the circumstances enumerated above, it is clear that Respondent registered and is using the Domain Name in bad faith and in violation of the Policy. Respondent registered a domain that is confusingly similar to the KFC Mark and Respondent has no legitimate interest in the Infringing Domain Name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Language Request
Complainant requests the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Finnish language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would evince a familiarity with the English language, filing of a trademark registration with an entity which evinces an understanding of the English language, and any evidence (or lack thereof) evincing Respondent’s understanding of the Finnish language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Finnish language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). A fair bit of the WHOIS information seems to be in English. The dynamic parking pages also seem to be in English. The additional word in the domain name (“listens”) is an English word.
Pursuant to UDRP Rule 11(a), the Panel finds sufficient persuasive evidence has been adduced by Complainant to suggest Respondent is conversant and proficient in the English language. The proceeding should be in English.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims rights in the KFC mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,209,310, registered on September 14, 1982) for use with restaurants and food services (inter alia). USPTO registrations are considered prima facie evidence of complainants’ rights in their asserted marks. See Intel Corp. v. Macare, FA 660685 (Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO) see Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); and see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive and that Respondent has the burden of refuting this assumption). Registration with the USPTO is not required to prove rights in a mark, although registration with some governmental authority makes it easier to prove Complainant’s rights in the mark (in this case Complainant has 332 registrations with 128 different trademark authorities in a wide variety of countries). Complainant is not required to prove it has rights where Respondent is located (which would be difficult to demonstrate because Respondent registered the domain name using a privacy service). Complainant merely has to prove it has some rights some where. Complainant has done this and Respondent has failed to submit a response. Therefore, this Panel finds Complainant has rights in the KFC mark. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
Complainant claims Respondent’s <kfclistens.com> domain name is confusingly similar to the KFC mark because it contains Complainant’s entire mark along with the term “listens” and the gTLD “.com.” The term “listens” is descriptive of Complainant’s business because it is related to customer service (and a number of businesses maintain customer service/feedback web sites with the word “listens” in it). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See EarLens Corporation v. Lisa Katz / Domain Protection LLC, FA 1643578 (Forum Nov. 28, 2015) (holding that the addition of the gTLD “.com” to a complainant’s mark is irrelevant to a Policy ¶4(a)(i) analysis); see also ER Marks, Inc. and QVC, Inc. v. Stefan Hansmann, FA 1381755 (Forum May 6, 2011) (“Neither the addition of country code top-level domains, i.e., ‘.co.,’ ‘.de,’ ‘.cr,’ ‘.es,’ nor the insertion of a gTLD has a distinctive function”). Therefore, this Panel finds the <kfclistens.com> domain name is confusingly similar to the KFC mark. See Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent is not commonly known by the <kfclistens.com> domain name. The WHOIS information bears no relation to the disputed domain name and Respondent has not provided any information to the contrary. Therefore, this Panel has no evidence which would justify a finding Respondent is commonly known by the disputed domain name.
Complainant claims Respondent does not use the <kfclistens.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use. The resolving website contains sponsored links to produce advertising revenue on a click through basis (through a dynamic parking page). Some of these links connect to Complainant’s competitors. Some of the links are “KFC Survey,” “Win Money Online,” and “KFC EXPERIENCE SURVEY.” Respondent does not use the <kfclistens.com> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business).
Furthermore, Respondent acquired no rights to the disputed domain name because Respondent registered the domain name using a privacy service. This means Respondent has done nothing to publicly associate itself with the domain name. The nominal ownership to the domain name is held by a nominee, who has no rights to control the domain name. The person controlling the domain name is not disclosed. Therefore, Respondent acquired no rights by simply registering the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent uses the <kfclistens.com> domain name in bad faith because the resolving website creates confusion and diverts customers to a website containing sponsored links to produce advertising revenue. These links include Complainant’s competitors. The links include “KFC Survey,” “Win Money Online,” and “KFC EXPERIENCE SURVEY.” It seems obvious Respondent seeks to attract users for commercial gain by capitalizing on confusion between Respondent and Complainant, which constitutes bad faith registration and use under Policy ¶4(b)(iv). See Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum June 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶4(b)(iv)); see also Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum August 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained).
Complainant claims Respondent registered and uses the <kfclistens.com> domain name in bad faith because it knows Complainant’s rights in the KFC mark. In light of the circumstances of this case, it sees Respondent registered and uses the domain name to dispute the business of a competitor under Policy ¶4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Finally, Respondent registered the disputed domain name using a privacy service. This raises the rebuttable presumption in a commercial context that Respondent registered and uses the domain name in bad faith. Respondent has not provided any evidence to the contrary. Therefore, this Panel is comfortable finding bad faith registration and use on this ground alone.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <kfclistens.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, November 21, 2016
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