DECISION

 

KFC Corporation / Pizza Hut, Inc. v. Arti Ramelan / InNetMedia

Claim Number: FA1905001841449

 

PARTIES

Complainant is KFC Corporation / Pizza Hut, Inc. (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA.  Respondent is Arti Ramelan / InNetMedia (“Respondent”), Indonesia.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <my-kfc-experience.com> and <tell-pizza-hut.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on May 1, 2019; the Forum received payment on May 1, 2019.

 

On May 2, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <my-kfc-experience.com> and <tell-pizza-hut.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 May 2, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 22, 2019 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@my-kfc-experience.com, postmaster@tell-pizza-hut.com.  Also on May 2, 2019, 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 May 23, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant:

1.    Complainant uses its marks in connection with food products, restaurant services, and a vast range of related offerings. Complainant has rights in the KFC (e.g. Reg. No. 1,209,310, registered Sep. 14, 1982) and PIZZA HUT (e.g. Reg. No. 729,847, registered Apr. 10, 1962) marks through its registration of the marks with the United States Patent and Trademark Office (“USPTO”). See Compl. Annexes F and G. Respondent’s <my-kfc-experience.com> and <tell-pizza-hut.com> domain names are identical or confusingly similar to Complainant’s marks as they each incorporate one of Complainant’s marks and add non-distinctive terms, hyphens, and the “.com” generic top-level domain (“gTLD”).

 

2.    Respondent has no rights or legitimate interests in the <my-kfc-experience.com> and <tell-pizza-hut.com> domain names. Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or otherwise permitted Respondent to use either of the marks. Further, Respondent does not use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent attempts to pass off as Complainant through the domain names to host survey websites, offering gift cards to users to take the surveys which later redirect users to third-party websites used to phish for personal information. See Compl. Annexes L-O.

 

3.    Respondent registered and uses the <my-kfc-experience.com> and <tell-pizza-hut.com> domain names in bad faith. Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s KFC and PIZZA HUT marks as to the source, affiliation, or endorsement of Respondent’s websites. Respondent creates this confusion to phish for information following the completion of surveys displayed on the resolving webpages. See Compl. Annexes L-O. Further, given the longstanding fame and recognition associated with the KFC and PIZZA HUT marks, Respondent must have had actual and constructive knowledge of Complainant’s rights in the marks.

 

B.   Respondent:

1.  Respondent failed to submit a response in this proceeding.

 

FINDINGS

1.    Respondent’s <my-kfc-experience.com> and <tell-pizza-hut.com> domain names are confusingly similar to Complainant’s KFC and PIZZA HUT marks.

 

2.    Respondent does not have any rights or legitimate interests in the <my-kfc-experience.com> and <tell-pizza-hut.com> domain names.

 

3.    Respondent registered or used the <my-kfc-experience.com> and <tell-pizza-hut.com> domain names in bad faith.

 

DISCUSSION

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.

 

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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).

 

Preliminary Issue: Multiple Complainants

In the instant proceedings, there are two 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 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.”  The two Complainants herein satisfy the sufficient nexus criteria regarding all domain names listed in the Complaint.  

 

Identical and/or Confusingly Similar

Complainant claims rights in the KFC (e.g. Reg. No. 1,209,310, registered Sep. 14, 1982) and PIZZA HUT (e.g. Reg. No. 729,847, registered Apr. 10, 1962) marks through its registration of the marks with the USPTO. See Compl. Annexes F and G. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the KFC and PIZZA HUT marks for the purposes of Policy ¶ 4(a)(i).

 

Complainant next argues that Respondent’s <my-kfc-experience.com> and <tell-pizza-hut.com> domain names are identical or confusingly similar to Complainant’s marks as they each incorporate one of Complainant’s marks and add non-distinctive terms, hyphens, and a gTLD. The addition of terms, hyphens, and gTLDs to a complainant’s mark are generally considered insufficient to distinguish a domain name from a mark for the purposes of Policy ¶ 4(a)(i). See AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that the respondent failed to differentiate the <aimprofiles.com> domain name from the complainant’s AIM mark by merely adding the term “profiles”); see also Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum  July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark); see also Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.”). Here, the <my-kfc-experience.com> domain name adds the terms “my” and “experience” to the KFC mark along with adding two hyphens and the “.com” gTLD. The <tell-pizza-hut.com> domain name adds the term “tell” to the PIZZA HUT mark along with two hyphens and the “.com” gTLD. Complainant also notes that it owns and operates the <mykfcexperience.com> and <tellpizzahut.com> domain names. The Panel therefore finds that the <my-kfc-experience.com> and <tell-pizza-hut.com> domain names are confusingly similar to the KFC and PIZZA HUT marks, respectively, under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that 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 does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).

 

Complainant contends that Respondent has no rights or legitimate interests in the <my-kfc-experience.com> and <tell-pizza-hut.com> domain name as Respondent is not commonly known by the disputed domain names, nor has Complainant authorized or otherwise permitted Respondent to use either of its marks. Relevant information includes the WHOIS, assertions by a complainant regarding the nature of its relationship with a respondent, and other evidence in the record to support these assertions. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same); see also Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum Sep. 4, 2018) (concluding that Respondent was not commonly known by the disputed domain name where “the WHOIS of record identifies the Respondent as “Bhawana Chandel,” and no information in the record shows that Respondent was authorized to use Complainant’s mark in any way.”). The WHOIS identifies “Arti Ramelan / InNetMedia” as the registrant for each domain name, and nothing in the record indicates that Complainant authorized Respondent to use the mark for any purpose. See Compl. Annex B. Accordingly, the Panel agrees that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).

 

Next, Complainant argues that Respondent attempts to pass off as Complainant through the domain names to host survey websites, offering gift cards to users to take the surveys which later redirect users to third-party websites used to phish for personal information. Using a domain name to offer compensation for completing various surveys and to phish for information can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Homer TLC, Inc. v. Wang, FA 1336037 (Forum Aug. 23, 2010) (holding that, where a disputed domain name purports to offer Internet users a gift card as compensation for filling out surveys, the respondent’s use of the disputed domain name amounts to 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)); see also Enterprise Holdings, Inc. v. I S / Internet Consulting Services Inc., FA 1785242 (Forum June 5, 2018) (“On its face, the use of a domain name that is confusingly similar to the mark of another in order to facilitate a phishing scheme cannot be described as 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).”). Complainant provides various screenshots of the resolving webpages associated with the domain names. Both domain names prompt users to select a “Take The Survey” to receive various prizes, and are then redirected to a different website requesting users to input their email addresses. See Compl. Annexes L-O. Accordingly, the Panel agrees and finds that Respondent’s use of the domain names in connection with survey websites and phishing fails to confer rights and legitimate interests in the domain name under Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant claims that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s KFC and PIZZA HUT marks as to the source, affiliation, or endorsement of Respondent’s websites. Using a confusingly similar domain name to trade upon the goodwill of a complainant’s mark for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See Menard, Inc. v. Domain Admin / Whois Privacy Corp., FA 1785761 (Forum June 13, 2018) (“A respondent’s appropriation of a complainant’s mark in a confusingly similar domain name to divert potential consumers to its own web site is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). Complainant asserts that the confusion caused is only heightened by the fact that Complainant uses the <mykfcexperience.com> and <tellpizzahut.com> domain names as its legitimate feedback websites. Accordingly, the Panel agrees that Respondent attempted to commercially benefit off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).

 

Next, Complainant claims that Respondent uses the domain names in connection with survey and phishing websites. Using a confusingly similar domain name to phish for information through surveys can provide evidence of bad faith registration and use within the meaning of Policy ¶ 4(a)(iii). See Citigroup Inc. v. Domain MANAGER / Domain Brokers, FA1505001621817 (Forum July 13, 2015) (finding that the respondent’s use of a survey, in which Internet users were encouraged to enter personal information to complete, indicated bad faith registration and use pursuant to Policy ¶ 4(a)(iii)). Both domain names prompt users to select a “Take The Survey” to receive various prizes, and are then redirected to a different website requesting users to input their email addresses. See Compl. Annexes L-O. Accordingly, the Panel agrees that Respondent attempts to phish for information through survey sites in bad faith under Policy ¶ 4(a)(iii).

 

Finally, Complainant argues that Respondent had actual or constructive knowledge of Complainant’s KFC and PIZZA HUT marks at the time of registering the two infringing domain names. The Panel may disregard arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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.”). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge does adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant contends that Respondent’s knowledge can be inferred given the longstanding fame and recognition associated with the KFC and PIZZA HUT marks in commerce. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <my-kfc-experience.com> and <tell-pizza-hut.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  June 6, 2019