KFC Corporation v. Dong Na Chen / Chen Dong Na
Claim Number: FA1811001817460
Complainant is KFC Corporation (“Complainant”), represented by Megan R. Myers of Pirkey Barber PLLC, Texas, USA. Respondent is Dong Na Chen / Chen Dong Na (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sgkfc.com> (‘the Domain Name’), registered with Alibaba Cloud Computing (Beijing) Co., Ltd.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Dawn Osborne as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 20, 2018; the Forum received payment on November 20, 2018.
On November 22, 2018, Alibaba Cloud Computing (Beijing) Co., Ltd. confirmed by e-mail to the Forum that the <sgkfc.com> domain name is registered with Alibaba Cloud Computing (Beijing) Co., Ltd. and that Respondent is the current registrant of the name. Alibaba Cloud Computing (Beijing) Co., Ltd. has verified that Respondent is bound by the Alibaba Cloud Computing (Beijing) Co., Ltd. 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 November 28, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 18, 2018 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@sgkfc.com. Also on November 28, 2018, 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 December 19, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne 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
Complainant’s contentions can be summarized as follows:
Complainant is the owner of the trade mark KFC registered, inter alia in the USA, China and Singapore for restaurant services with first use in commerce recorded as 1970 in the USA. Its Singapore specific web site is kfc.com.sg and its twitter handle for Singapore is @KFC_SG.
The Domain Name registered in 2018 contains Complainant’s KFC mark in its entirety merely adding the two letters ‘sg’ frequently used as the country code for Singapore. The gTLD.com does not prevent confusing similarity between the Domain Name and Complainant’s trade mark.
Respondent does not have rights or a legitimate interest in the Domain Name. Respondent is not commonly known by the Domain Name and is not authorized by Complainant. The Domain Name has been used for adult oriented material which is not a bona fide use of a domain name containing a trade mark with a reputation and since the use is commercial this cannot be non-legitimate noncommercial or fair use. It is bad faith use and registration and confuses and diverts Internet users for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is the owner of the trade mark KFC registered, inter alia in the USA, China and Singapore for restaurant services with first use in commerce recorded as 1970 in the USA. Its Singapore specific web site is kfc.com.sg and its twitter handle for Singapore is @KFC_SG.
The Domain Name registered in 2018 has been used for adult oriented material.
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 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.”).
Identical and/or Confusingly Similar
The Domain Name in this Complaint combines Complainant’s KFC mark (registered in the USA, China and Singapore for restaurant services with first use in commerce recorded as 1970 in the USA), the generic term ‘sg’ indicating Singapore and the gTLD .com. KFC is a well-known mark.
The addition of the generic term ‘sg’ indicating Singapore does not serve to distinguish the Domain Name from Complainant’s KFC mark. See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of generic terms do not adequately distinguish a disputed domain name from complainant’s mark under Policy 4(a)(i)).
The gTLD .com does not serve to distinguish the Domain Name from the KFC mark, which is the distinctive component of the Domain Name. See Red Hat Inc v. Haecke, FA 726010 (Forum July 24, 2006) (concluding that the redhat.org domain name is identical to the complainant's red hat mark because the mere addition of the gTLD was insufficient to differentiate the disputed domain name from the mark).
Accordingly, the Panel finds that the Domain Name is confusingly similar to a mark in which Complainant has rights for the purposes of the Policy.
Rights or Legitimate Interests
Respondent has not provided any evidence that it is commonly known by the Domain Name. Complainant has not authorised Respondent to use its KFC mark. The use of the Domain Name is commercial and so cannot be legitimate non-commercial use.
The use of a domain name containing a well-known mark to resolve to adult orientated material cannot constitute a bona fide use. See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA 1732665 (Forum July 7, 2017).
As such the Panelist finds that Respondent does not have rights or a legitimate interest in the Domain Name and that Complainant has satisfied the second limb of the Policy.
Registration and Use in Bad Faith
Respondent has not answered the Complaint or explained why is should be permitted to register a domain name containing Complainant’s mark and point it to adult orientated content and has not denied it was aware of Complainant and its business at the time of registration of the Domain Name. Use of a domain name containing a trade mark in relation to a web page hosting adult material is evidence of bad faith registration and use under Policy 4 (b)(iii). See Molson Canada 2005 v. JEAN LUCAS/DOMCHARME GROUP, FA 1412001596702 (Forum Feb. 10, 2015). There is, therefore, no need to consider any additional grounds of bad faith. The fact that Respondent’s web sites look different to Complainant is not relevant where a complainant’s trade mark has been used for adult content.
As such, the Panelist believes that Complainant has made out its case that the Domain Name was registered and used in bad faith and has satisfied the third limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sgkfc.com> domain name be TRANSFERRED from Respondent to Complainant.
Dawn Osborne, Panelist
Dated: December 19, 2018
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