The Complainant is Kentucky Fried Chicken International LLC of Plano, Texas, United States of America (“USA”), represented by Adams & Adams Attorneys, South Africa.
The Respondent is Donmai Inc, Frank Makange of Osaka, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with Extreme Web Technologies Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2016. On November 29, 2016, the Center transmitted by email to tzNIC and the Registrar a request for registrar verification in connection with the disputed domain name. On December 15, 2016, tzNIC and the Registrar transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy for .TZ (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy for .TZ (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 20, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2017. The Respondent filed a Response on January 9, 2017.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 23, 2017. 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 is the member of the Kentucky Fried Chicken corporate group which, amongst other things, holds the group’s trademarks.
The business of the Kentucky Fried Chicken group started in about 1952 in Kentucky, USA. It has since expanded to have 18,875 outlets in 118 countries around the world. The first Kentucky Fried Chicken outlet in Japan, where the Respondent is located, opened in 1970. The Japanese affiliate was listed on the Tokyo Stock Exchange in August 1990. The Complainant’s group currently has more than 1,000 outlets in Japan.
The Kentucky Fried Chicken group currently has five outlets in Tanzania, the first of which opened in Dar Es Salaam in 2013. In 2013, the Kentucky Fried Chicken group generated approximately USD 713,000 in revenue in Tanzania by reference to the trademark, KFC. In 2014, revenue in Tanzania increased to over USD 1,250,000. In 2015, revenue in Tanzania by reference to KFC was about USD 2,800,000.
Amongst other things, the Complainant owns registered trademarks in both Tanganyka and Zanzibar dating from 1995. These include:
(a) Registered Trademark Number 32 in Tanganyika for KFC in respect of a wide range of retail, wholesale and restaurant services in class 42 which was registered on March 10, 1995;
(b) Registered Trademark Number 24118 in Tanganyika for KFC in respect of all goods in class 30 registered on March 4, 1996;
(c) Registered Trademark Number 24119 in Tanganyika for KFC in respect of all goods in class 29 registered on March 4, 1996; and
(d) Registered Trademark No 830/1999 in Zanzibar for KFC in respect of all goods [sic] in class 42 registered on December 22, 1999.
The trademark KFC has of course been used very widely around the world in respect of the Kentucky Fried Chicken group’s fried chicken and other products.
The disputed domain name was registered on December 6, 2015.
To date, it has not resolved to an active website. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered or subsequently used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that the Panel deems applicable.
Given the many similarities between the terms of the Policy and the terms of the Uniform Dispute Resolution Policy (“UDRP”), the Panel draws on approaches taken under the UDRP where appropriate as has been the practice in disputes under other country code Top-Level Domains. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s name, trademark or service mark.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be identical or confusingly similar to the trademark.
For present purposes, it is sufficient to note that the Complainant has proven ownership of the registered trademarks for KFC referred to in section 4 above.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s trademark: see for example, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
The disputed domain name differs from the Complainant’s registered trademarks only by the addition of the second level domain name and the country code Top-Level Domain, “.”. As these are functional elements of the domain name system, they may be disregarded for the purposes of this inquiry.
Accordingly, the disputed domain name is identical to the Complainant’s trademarks. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which a respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Given the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., WIPO Overview 2.0 paragraph 2.1.
The Respondent is not part of the Kentucky Fried Chicken corporate group. Nor has the Respondent been authorised by the Complainant or any other member of the Kentucky Fried Chicken corporate group to use “KFC” or the disputed domain name. The disputed domain name is plainly not derived from the Respondent’s name.
Having regard to the length and extent of user of KFC by the Kentucky Fried Chicken corporate group, these factors are sufficient to raise a prima facie case that the Respondent does not have rights or legitimate interests in the disputed domain name.
The Respondent does not dispute the matters advanced by the Complainant. Instead, the Respondent contends he has rights or legitimate interests in the disputed domain name.
According to the Response, while the Respondent resides in Japan, Mr. Makange grew up in Tanzania, near the internationally famous Mount Kilimanjaro and still maintains a residence there. The Respondent says that Mount Kilimanjaro’s ecosystem is coming under increasing pressure due to over-population and climate change. The Respondent says that the disputed domain name was registered in connection with the “Kilimanjaro Future Conservation”, which has been formed, or is being formed, to promote awareness about the ecological problems being faced at Mount Kilimanjaro.
The Respondent admits that the disputed domain name is inactive. The Respondent says this is because the website/blog is still under construction. According to the Respondent, “we are expecting to launch the website within this year after officially launching our cause”.
The Panel accepts that promoting the conservation of Mount Kilimanjaro could be a laudable project and at least arguably a legitimate noncommercial use under the Policy.
The first problem with the Respondent’s claim, however, is that the Respondent has not provided any corroboration of this claim. Although the disputed domain name was registered in December 2015 – over a year before the Complaint was filed, the Respondent has not provided any explanation of any particular obstacles preventing the launch of either the Kilimanjaro Future Conservation or the claimed website at the disputed domain name. Indeed, there is no evidence that such a thing as the Kilimanjaro Future Conservation in fact exists (even if it has not been officially launched). There is no evidence of any steps that may have been taken to establish the Kilimanjaro Future Conservation. Further, while the Respondent says that the website is under construction, there is no evidence of any steps that have been taken either to design or to set up a website for the proposed purpose (apart from the registration of the disputed domain name). The Panel accepts that the letters KFC do not necessarily refer only to the Kentucky Fried Chicken group’s trademark and products. For many people around the world (including it would seem Tanzania), however, it is likely that the acronym KFC would immediately suggest and be understood as a reference to the Kentucky Fried Chicken group. As the Respondent is based in Japan (which is the Kentucky Fried Chicken group’s third largest market), it is highly likely that the Respondent was well aware of the Complainant’s trademark when the disputed domain name was registered. The Respondent does not deny knowledge of the Kentucky Fried Chicken group when the disputed domain name was registered.
In the absence of some objective materials corroborating the existence of the Kilimanjaro Future Conservation and, more particularly, the work that has been undertaken to launch the website, or a convincing explanation why such materials are not available, therefore, the Panel is unable to accept the Respondent’s claim that the disputed domain name has been registered for a legitimate noncommercial or fair use. Bare assertion of the claimed purpose is not sufficient; there must be some sufficient demonstration of use or (by analogy with paragraph 4(c)(i) of the Policy) demonstrable preparations to use the disputed domain name in accordance with the asserted legitimate use.
Accordingly, the Respondent has failed to displace the prima facie case established by the Complainant and the Panel finds that the Complainant has established the second requirement under the Policy. C. Registered or Used in Bad Faith
In contrast to the UDRP, the Complainant must establish only that the disputed domain name has been either registered or subsequently used in bad faith by the Respondent under the third requirement of the Policy.
As noted above, it does not appear to be in dispute that the Respondent knew of the Complainant’s trademark when the disputed domain name was registered. In those circumstances and having regard to the failure of the Respondent’s claim that the Respondent has rights or legitimate interests in using the disputed domain name, it follows that the disputed domain name was registered in bad faith.
In light of that finding, it is strictly unnecessary to make a finding on use in bad faith. It is well-established, however, that a finding of use in bad faith can be made even in the case of a domain name which has not been used actively: Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 and JC Decaux SA v. Salum Ally,WIPO Case No. DTZ2015-0001.
When the Complainant approached the Respondent about a transfer of the disputed domain name, the Respondent indicated that a sum in the order of USD 50,000 would be required. The Respondent says the disputed domain name was never offered for sale, but this sum was advanced to cover the disruption and costs that would be incurred if ownership of the disputed domain name were transferred. In the circumstances of this case, the Panel cannot accept this claim. There is simply no evidence to support a claim of disruption and costs that would be incurred on anything like this scale. What might be justifiable in the case of a long running and well established business where the owner had rights or legitimate interests in the associated domain name is one thing. It is another thing entirely where it does not even appear that the business, or project, has even been launched and the disputed domain name appears to have been registered in the face of, and with knowledge of, the Complainant’s trademarks. In the absence of any corroboration of the costs likely to be incurred, the Panel accepts the Complainant’s charge that the Respondent has also used the disputed domain name in bad faith.
Therefore, the Complainant has established the third requirement under the Policy. 6. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, , be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: February 6, 2017
1 According to the Response, the respondent company is a corporate vehicle used by Mr. Makange. Accordingly, it is unnecessary to distinguish between the two respondents for the purposes of deciding this proceeding.
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