The Complainant is Kentucky Fried Chicken International Holdings LLC, United States of America, represented by Fidus Law Chambers, India.
The Respondents are Prasit Nepal, Social Media Promotion Pvt. Ltd., Nepal; and KKFC Nepal, Nepal. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 11, 2020. On September 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 14, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent “Prasit Nepal, Social Media Promotion Pvt. Ltd.” is listed as the registrant and providing the contact details. The Center requested from the Complainant for a clarification on September 14, 2020, regarding the mutual jurisdiction. The Complainant submitted an amended Complaint on September 15, 2020, in response to the latter request. 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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent, Prasit Nepal, Social Media Promotion Pvt. Ltd., of the Complaint, and the proceedings commenced on September 18, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2020. On October 9, 2020, the Center received an informal communication from Social Media Promotion Pvt. Ltd., claiming that it registered the Domain Name on behalf of KKFC Nepal, and provided the contact details of KKFC Nepal. The Center acknowledged receipt of this email on October 14, 2020 also copying to the email address of KKFC Nepal provided by Social Media Promotion Pvt. Ltd. However, no further communications were received from the Respondents. Accordingly, the Center notified the Parties that it was proceeding to panel appointment on October 14, 2020. The Center appointed Willem J. H. Leppink as the sole panelist in this matter on October 27, 2020. 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 the Rules, paragraph 7. 4. Factual Background The Complainant, Kentucky Fried Chicken International Holdings LLC (known and referred to as “KFC”), is a wholly owned subsidiary of Yum! Brands, Inc., an American fast-food corporation. The Complainant is a prominent and globally renowned franchisor in the field of fast-food services and is famous for its fried chicken since 1952. As of today, the Complainant, by way of its franchisees, operate more than 23,000 outlets in more than 140 countries, including in Nepal since 2009. The Complainant owns numerous trademark registrations for the word mark KFC in several jurisdictions including Nepal, inter alia, through the Nepalese Trademark Registration No. 22274 for the word mark KFC, with registration date November 24, 2004, and Indonesian Trademark Registration No. IDM000474948 for KFC, with registration date May 5, 2015. The above mentioned trademarks are hereinafter referred to as the “Trademark”. The Domain Name was registered on November 19, 2017. The Domain Name resolves to a website (the “Website”). On the Website services from the fast-food chain KKFC, which apparently stands for Krispy Krunchy Fried Chicken, are provided. Visitors can order meals and can reserve a table at one of its restaurants. 5. Parties’ Contentions A. Complainant The Complainant has named “Prasit Nepal, Social Media Promotion Pvt. Ltd.” as the Respondent. The following is a summary of the Complainant’s contentions. The Domain Name is confusingly similar to the Trademark. The Domain Name subsumes the Trademark in its entirety, with only an addition of the letter “k” as a prefix and the term “Nepal” as a suffix. The additions in the Domain Name are not sufficient to establish dissimilarity. This nearly identical variation of the Trademark clearly shows the mala fides intent of the Respondent, namely, to create the impression in the minds of the consumer that it is connected to the Complainant. The Respondent has no rights or a legitimate interest in the Domain Name. The Domain Name was registered decades after the Complainant registered the Trademark which is globally well known. The Complainant has not authorized the Respondent to use the Trademark. The Domain Name is used in connection with offering goods and services which are identical to those offered by the Complainant. Furthermore, the Respondent uses a nearly identical colour combination of red and white on its Website, which colors are identical to the colors used by the Complainant. By using the Domain Name, the Respondent misleads the consumers into believing that the Website is affiliated with the Complainant. The sole purpose of the registration of the Domain Name is to misappropriate the reputation associated with the Complainant’s well-known Trademark. The Domain Name is registered and is being used in bad faith. The Domain Name is almost identical to the globally well-known and distinctive Trademark. Therefore, the Respondent must have been aware of the Trademark and registered the Domain Name in bad faith. As the Respondent provides identical services through the Website and uses the same colour scheme as the Complainant, the primary aim of the Respondent seems to disrupt the business of the Complainant as well as take advantage of the goodwill and reputation of the Trademark. It is clear that the Domain Name was registered for the sole purpose to mislead consumers. By doing so, the Respondent has intentionally attempted to create a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Domain Name, which constitutes registration and use of the Domain Name in bad faith. B. Respondents The Respondent, Social Media Promotion Pvt. Ltd., replied to the Complainant’s contentions with a short email dated October 9, 2020 indicating that it is a digital marketing agency, providing digital services for its clients, including KKFC Nepal. It has built its website and purchased the Domain Name for KKFC Nepal. It is not associated with KKFC Nepal at all. Finally, the Respondent, Social Media Promotion Pvt. Ltd., requests to contact KKFC Nepal for further legal actions, and provides contact details of the owner of KKFC Nepal. 6. Discussion and Findings 6.1 Preliminary Issue: Identity of the Respondents As a preliminary issue the Panel notes that the identity of the Respondents is unclear. Paragraph 1 of the Rules defines the respondent as “the holder of a domain-name registration against which a complaint is initiated”. In the present case, according to the Registrar, the registrant of the disputed domain name is “Prasit Nepal, Social Media Promotion Pvt. Ltd.” However, Social Media Promotion Pvt. Ltd. in its email communication to the Center claimed to be a digital marketing agency who registered the disputed domain name for its client KKFC Nepal and provided contact details of KKFC Nepal. The Panel further notes that the Website offers crispy crunchy fried chickens for sale in Nepal under the name of KKFC. In these circumstances, “Prasit Nepal, Social Media Promotion Pvt. Ltd.” would typically be regarded as the Respondent in this administrative proceeding. However, although the actual registrant of the Domain Name seems to be “Prasit Nepal, Social Media Promotion Pvt. Ltd.”, the beneficial holder of the Domain Name seems to be “KKFC Nepal”. The Panel notes that it retains discretion to determine the respondent against which the case should proceed. Accordingly, the Panel concludes that both parties will collectively be referred to and treated as the “Respondent” in this matter. 6.2 Substantive Issues Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant must demonstrate that it has rights in a trademark or service mark and, if so, the Domain Name must be shown to be identical or confusingly similar to that mark. It is not disputed that the Complainant has rights in the Trademark. This satisfies the Panel that the Complainant has established that it owns trademark rights in KFC for the purposes of the Policy. As set out in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Name and the Trademark involves a relatively straightforward comparison. In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark. The Domain Name consists of the element “kfc”, which is identical to the Trademark, and is accompanied by the letter “k” as a prefix and the term “Nepal” as a suffix. The addition of the geographical term “Nepal” does not avoid a finding of confusing similarity for purposes of the first element. See WIPO Overview 3.0, section 1.8 which it is set out that if the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element and see, e.g., Playboy Enterprises International Inc. v. Melancia, WIPO Case No. D2006-1106; AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553; Six Continents Hotels, Inc. v. CredoNic.com / Domain Name for Sale,WIPO Case No. D2005-0755; Six Continents Hotels, Inc. v. Midas Search Limited,WIPO Case No. D2004-0986; Six Continents Hotels, Inc, Inter-Continental Hotels Corporation. v. South East Asia Tours,WIPO Case No. D2004-0388. Furthermore, the addition of the letter “k” as a prefix does not prevent a finding of confusing similarity. Therefore, the Panel is satisfied that the first element of the Policy is met. B. Rights or Legitimate Interests The Respondent did not formally reply to the Complainant’s contentions. For that reason, the Panel has taken careful note of the factual assertions that have been made and supported by evidence provided by the Complainant. In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as: (i) use or preparation to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute; or (ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or (iii) making legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the Domain Name, once the Complainant has made a prima facie showing. The Complainant has done so in this proceeding, by pointing out that the Domain Name includes a famous global Trademark, well established in commerce. The Respondent has not submitted a material response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case and finds nothing from which the Panel might conclude the Respondent’s rights or legitimate interests in the Domain Name. Based on the record in this proceeding the Panel considers it most likely that the Respondent was aware of the Complainant and the Complainant’s Trademark when registering the Domain Name. Furthermore, where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. The Trademark is fully incorporated in the Domain Name and the Domain Name is used for the provision of identical goods and services as provided by the Complainant, using a highly similar colour scheme on the Website. Taking the above into consideration, the Panel finds that the use made of the Domain Name, cannot be considered as fair use, as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. In the absence of any reply by the Respondent, the Panel concludes that the Respondent registered the Domain Name in order to trade on the goodwill and reputation of the Trademark through the creation of confusion amongst Internet users. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774. The Panel concludes that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith The Panel finds that the Domain Name was registered and is being used in bad faith. The Panel refers to its considerations under section 6.2B and adds the following. In light of the evidence filed by the Complainant, the Panel finds that the Trademark and the Complainant’s activities are well known throughout the world. In particular, the Complainant’s first outlet in Nepal was opened in 2009 through its franchisee Devyani International. Accordingly, in the Panel’s view, the Respondent must have been aware of the Complainant’s existence and rights at the time the Respondent registered the Domain Name. By using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its Website, by creating a likelihood of confusion with the Complainant and its Trademark as to the source, affiliation or endorsement of its Domain Name and Website, with a highly similar look and feel as the website of the Complainant. The Respondent has not provided any explanation why it would be entitled to register a domain name equivalent to the Complainant’s well-known Trademark with only the letter “k” and the geographical term “Nepal” added. In the absence of a formal Response from the Respondent, considering the fame of the Complainant and the nature of the services and goods provided on the Website, the Panel is satisfied that the Complainant has shown that the Respondent has registered the Domain Name in bad faith. The Respondent has used the Domain Name to attract Internet traffic to the Website for commercial gain by creating a likelihood of confusion that its Website is connected to the Complainant. Further, the use of the Domain Name disrupts the Complainant’s business. As such, the Domain Name has been both registered and is being used in bad faith. In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name is registered and is being used in bad faith. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name Willem J. H. Leppink
Sole Panelist
Date: November 9, 2020
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