DECISION

 

YUM! Brands Inc. and KFC Corporation v. Ether Graphics a/k/a Andrew Gruner

Claim Number: FA0311000212651

 

PARTIES

Complainants are YUM! Brands Inc. and KFC Corporation (“Complainant”), represented by Julia Anne Matheson, of Finnegan Henderson Farabow Garrett & Dunner L.L.P., 1300 I Street NW, Washington, DC 20005.  Respondent is Ether Graphics a/k/a Andrew Gruner (“Respondent”), 13305 NE 171 St. Apt. J264, Woodinville, WA 98072.

 

REGISTRAR AND DISPUTED domain NAME 

The domain name at issue is <colonelsanders.com>, registered with Tucows.

 

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.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainants submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 19, 2003; the Forum received a hard copy of the Complaint on November 20, 2003.

 

On November 20, 2003, Tucows confirmed by e-mail to the Forum that the domain name <colonelsanders.com> is registered with Tucows and that Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform domain name Dispute Resolution Policy (the “Policy”).

 

On November 21, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 11, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@colonelsanders.com by e-mail.

 

A timely Response was received and determined to be complete on December 10, 2003.

 

On December 22, 2003, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

RELIEF SOUGHT

Complainants request that the domain name be transferred from Respondent to Complainant KFC Corporation.

 

PARTIES’ CONTENTIONS

A. Complainant

1.      YUM! Brands, KFC, and their Products and Services

YUM! Brands is the world’s largest restaurant company in terms of system units with more than 33,000 restaurants in more than 100 countries and territories.  YUM! Brands, a Fortune 300 company publicly traded on the New York Stock Exchange, owns and operates American restaurant favorites KFC, Pizza Hut, Taco Bell, Long John Silver’s, and A&W All-American Food.

KFC is one of the most popular chicken restaurant chains in the world.  From its humble beginnings in the front room of founder Colonel Harland Sanders’ Corbin, Kentucky gas station over 50 years ago, the business that evolved into KFC serves more than 300 different products to nearly 8 million customers daily in more than 12,000 restaurants in 88 countries and territories around the world. 

KFC’s success owes much to the vision, energy, and heart of its founder and corporate icon, Colonel Sanders.  Colonel Sanders developed the special cooking process and created the blend of 11 secret herbs and spices known to the world today as Original Recipe Kentucky Fried Chicken.  In KFC, Colonel Sanders offered customers high quality, wholesome, tasty food at reasonable prices in clean and friendly surroundings.  Today, the company continues to maintain rigorous quality control programs to ensure that its customers around the world enjoy the highest possible quality restaurant services and food products. 

The image of company founder Colonel Harland Sanders (one of the most widely recognized individuals in the world), and the KFC Logo (comprised of a combination of the KFC trademark and the image of Colonel Sanders) are each famous marks that enjoy instantaneous recognition.  The image of Colonel Sanders appears in numerous aspects of KFC’s business:  from the bucket in which KFC’s famous chicken is sold and served, to its store signage, menus, posters, billboards, TV commercials, and Internet websites. 

KFC engages in substantial advertising and promotion of its trademarks, its restaurant services, and its food products.  KFC spends hundreds of millions of dollars each year to promote its products and services under the COLONEL SANDERS marks.

KFC’s marketing efforts reach its ever-increasing number of customers through virtually every type of media.  In the U.S. alone, users encounter KFC trademarks, including the image of Colonel Sanders and other COLONEL SANDERS-formative marks, in advertisements on broadcast television and cable television, in radio and print ads, in newspaper inserts, on outdoor signage and billboards, on product packaging, and menus, and as a result of the numerous sponsorships and community events KFC participates in every single year. 

In addition to its more traditional marketing efforts, KFC also reaches out to its customers online through a number of associated websites.  The company’s primary website is located at the domain name <kfc.com>.

The extraordinary success of KFC’s efforts is evident from KFC’s annual sales figures.  In 2002, KFC’s worldwide system sales totaled $9 billion.  The reach, fame, and popularity of the KFC brands is beyond question. 

2.      KFC’s Trademark Holdings

KFC owns numerous U.S. trademark registrations and applications for COLONEL SANDERS-formative marks, including the following

Registration No. 805,773 for the mark COLONEL SANDERS’ RECIPE, first used December, 1956, issued March 15, 1966, covering services in International Class 42 (restaurant services).

Registration No. 814,610 for the mark COL. SANDERS’ RECIPE, first used December, 1956, issued September 6, 1966, covering goods in International Classes 29 (meats and processed foods) and 30 (staple foods).

Registration No. 838,062 for the mark COLONEL SANDERS’ RECIPE KENTUCKY FRIED CHICKEN, first used December, 1950, issued October 31, 1967, covering services in International Class 42 (restaurant services).

Registration No. 813,559 for the mark COLONEL SANDERS’ RECIPE KENTUCKY FRIED CHICKEN, first used December, 1950, issued October 31, 1967, covering goods in International Classes 29 (meats and processed foods) and 30 (staple foods).

Registration No. 810,835 for the design mark image of Colonel Sanders (hereinafter “COLONELS’ FACE DESIGN”), first used December, 1956, issued July 5, 1966, covering goods in International Class 29 (meats and processed foods).

Registration No. 806,104 for COLONELS’ FACE DESIGN mark, first used December, 1956, issued March 22, 1966, covering services in International Class 42 (restaurant services).

Registration No. 1,491,641 for the design mark depicting a container with the COLONELS’ FACE DESIGN mark and the words KENTUCKY FRIED CHICKEN, first used July 20, 1970, issued July 7, 1988, covering services in International Class 42 (restaurant services).

The dominant portion of KFC’s trademarks is COLONEL SANDERS and/or the image of Colonel Sanders, as shown by KFC’s disclaimers of the words “recipe” and “fried chicken” in its above-listed registrations.

 

KFC’s trademark rights in the COLONEL SANDERS marks and variations thereof, based on its trademark filings and on its common law rights acquired through the use of those marks, long predate Respondent’s registration of the domain name.

 

3.      Respondent’s Infringing Activities and Bad Faith Acts

Respondent registered the domain name <colonelsanders.com> on March 5, 2002, long after Complainant began using its COLONEL SANDERS marks and long after those marks became famous worldwide.

After registering the domain name, Respondent commenced use of it for a website displaying, without Complainant’s authorization, Complainant’s COLONELS’ FACE DESIGN mark (as memorialized in Registration Nos. 810,835 and 806,104) surrounded by the nonsensical slogans “War is Peace,” Big Brother is Watching You,” “Ignorance is Strength,” and “Freedom is Slavery.”  The adulterated version of Complainant’s logo included a link to his e-mail address andrew@andrewgruner.com.   

On May 22, 2003, Complainant sent Respondent a cease-and-desist letter[1] demanding the transfer of the domain name to Complainant. 

After receiving Complainant’s objection, Respondent ceased using the domain name for a website.  The website is currently inactive.

Respondent further responded to Complainant’s objection by offering to sell the domain name for $5,000 in order for Complainant to “avoid the expenses involved if this were to proceed to legal action,” a statement offered without explanation.  Respondent claimed that his unauthorized use of the domain name and KFC’s COLONELS’ FACE DESIGN mark was done in the “context of political satire” and that he has “made no money from this site.”  Respondent failed to explain how the taking of Complainant’s logo coupled with nonsensical slogans conveyed any message. 

On July 23, 2003, Complainant replied to Respondent, stating that his offer to sell the domain name for $5,000 constituted bad faith and offering to reimburse Respondent for his actual costs, not to exceed $100, for the transfer of the domain name.   

On August 20, 2003, Respondent again offered to sell the domain name for $5,000, stating “many popular domain names [sell] in that range.”  Respondent also claimed that his offer to sell the domain name was not in bad faith because he did not initially contact KFC with his offer.

Respondent is a graphic designer who operates a website at the domain name <andrewgruner.com>. In connection with his promotion of his graphic design business, Respondent currently displays a series of images on that website, including the infringing version of Complainant’s logo earlier displayed on his <colonelsanders.com> website, as well as various additional images incorporating famous marks such as the ABSOLUT logo and the APPLE logo, combined with copies of famous paintings, “Starry Night” by Vincent Van Gogh and “The Son of Man” by René Magritte.  Respondent’s résumé and website promote that Respondent has designed logos for various companies.

4.      The domain name is confusingly similar to KFC’S COLONEL SANDERS marks

The test of confusing similarity under the UDRP is confined to a consideration of the disputed domain name and Complainant’s trademark without reference to other issues.  See Microsoft Corporation v. WDW Inc., D2002-0412 (WIPO July 1, 2002).  Here, the domain name <colonelsanders.com> is confusingly similar to KFC’s COLONEL SANDERS marks, namely, COLONEL SANDERS’ RECIPE and COLONEL SANDERS’ KENTUCKY FRIED CHICKEN, because the domain name incorporates the dominant portion of those marks, COLONEL SANDERS.  Indeed, as shown on KFC’s trademark registrations, it disclaims the “recipe” and “fried chicken”  portions of the COLONEL SANDERS marks, thus establishing that the dominant portion of those marks is COLONEL SANDERS.  Respondent’s subtraction of the words “recipe” and/or “kentucky fried chicken” does not distinguish the domain name from KFC’s COLONEL SANDERS marks. 

Pursuant to Section 4(a)(i) of the UDRP, KFC’s burden is to show that “the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights” (emphasis added).  As shown above, KFC owns federal trademark registrations for the marks COLONEL SANDERS’ RECIPE and COLONEL SANDERS’ KENTUCKY FRIED CHICKEN.  KFC does not need to show, as Respondent implies in his August 20, 2003 letter, that it owns a trademark that is identical to the domain name.  Rather, KFC’s burden is to prove that it owns a trademark to which the domain name is confusingly similar, which KFC has done.

Further, the interconnection between the domain name and KFC’s COLONEL SANDERS marks is clearly shown by Respondent’s use of the domain name for a website displaying an unauthorized copy of another of KFC’s trademarks, namely, the COLONEL’S FACE DESIGN mark.

5.      Respondent has no rights or legitimate interests in the domain name

Respondent is not using and has not used or is not demonstrating and has not demonstrated an intent to use the domain name in connection with a bona fide offering of goods or services.  See Ciccon v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“use which intentionally trades on the fame of another can not constitute a ‘bona fide’ offering of goods and services.  To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy”).

Respondent is not and has not been commonly known by the domain name. 

Respondent is not making legitimate noncommercial or fair use of the domain name, without intending to mislead and divert consumers or to tarnish KFC’s COLONEL SANDERS marks for commercial gain.  Respondent’s registration and use of the domain name to post an adulterated version of KFC’s famous and federally registered COLONELS’ FACE DESIGN coupled with a series of nonsensical statements unrelated to the Colonel, KFC, or its general business is not fair use under the UDRP and U.S. law.

Respondent’s mere assertion that he registered the domain name for a website featuring “political satire” is insufficient to support a finding of fair use.  Respondent does not offer a discernable message other than an attempt to promote his graphic design business with the improper use of third party trademarks.  Second, Respondent’s website is neither satire nor parody.  In an analogous case relating to copyright law, Campbell v. Acuff Rose Music, 510 U.S. 569 (1994), the U.S. Supreme Court held  “. . . the heart of any parodist’s claim to quote from existing material, is the use of some elements of a prior author’s composition to create a new one that, at least in part, comments on that author’s works. [citation omitted.]  If, on the contrary, the commentary has no critical bearing on the substance or style of the original composition, which the alleged infringer merely uses to get attention or to avoid the drudgery in working up something fresh, the claim to fairness in borrowing from another’s work diminishes accordingly (if it does not vanish), and other factors, like the extent of its commerciality, loom larger.  Parody needs to mimic an original to make its point, and so has some claim to use the creation of its victim’s (or collective victims’) imagination, whereas satire can stand on its own two feet and so requires justification for the very act of borrowing” (emphasis added).  In this case, Respondent’s website does not qualify as parody because it has “no critical bearing” on KFC and/or KFC’s famous COLONEL SANDERS marks.  Further, Respondent has no justification for his unauthorized use of KFC’s COLONEL SANDERS marks, let alone the higher threshold of justification required for satire.  Simply put, Respondent had no need to use KFC’s famous COLONEL SANDERS marks in the domain name and on his website.  It is clear that Respondent misappropriated KFC’s trademarks to “avoid the drudgery in working up something fresh.”

Even if Respondent’s <colonelsanders.com> website qualified as parody, that still would not justify his registration and use of the domain name because the domain name itself does not convey a parody.  See People for the Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001) (holding the defendant’s registration and use of the domain name <peta.org> caused confusion because it was likely to prevent Internet users from reaching the website of the People for Ethical Treatment of Animals (“PETA”), and rejected the defendant’s parody defense because the domain name <peta.org> itself did not convey a parody and any parody could not be realized until after the visitor went to the defendant’s website). 

6.      RESPONDENT’S BAD FAITH UNDER SECTION 4(B) OF THE UDRP

Given the fame of Complainant’s COLONEL SANDERS marks, and the fact that Respondent’s <colonelsanders.com> domain name and website were used to display an adulterated version of KFC’s logo, there is no question that Respondent knew of Complainant’s rights in the COLONEL SANDERS marks when he registered the domain name.  In addition, as a graphic designer who creates logos, Respondent is well-aware of the rights associated with trademarks and design trademarks. By registering the domain name with knowledge of Complainant’s rights in its COLONEL SANDERS marks, Respondent acted in bad faith.  See Compaq Info. Techs. Group, L.P. v. Dealer Direct, Inc., FA 97062 (Nat. Arb. Forum June 14, 2002) (finding respondent registered the domain name in bad faith because it was on notice of complainant’s rights); see also Yahoo! Inc. v. Kelvin Pham, FA 109699 (Nat. Arb. Forum May 21, 2002) (same); see also Europay Int’l S.A. v. domaines Ltd., D2000-0513 (WIPO July 31, 2000) (holding that respondents must have known they were infringing upon complainant’s exceptionally well known mark by registering it as a domain name).

The names COLONEL SANDERS and KFC are inextricably intertwined in the public’s eye because Colonel Sanders is both the name of the company’s founder and is the personification of the company and its public image.  Further, Complainant’s COLONEL SANDERS marks are famous worldwide.  There is therefore no question that Internet users typing in <colonelsanders.com> expect to reach KFC’s website, and that many Internet users will do so, as Respondent admitted when he described the domain name as “popular.” Respondent registered the domain name for that very reason, namely, to trade on the fame and goodwill of Complainant’s COLONEL SANDERS marks and to intentionally attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with Complainant’s COLONEL SANDERS marks to the source, sponsorship, affiliation and endorsement of his website.  Because his website included a way for consumers to contact him and because he is using the adulterated COLONEL SANDERS logo to promote his graphic design business on his <andrewgruner.com> website, Respondent was using the <colonelsanders.com> website to generate potential customers for his graphic design business.  As such, Respondent’s registration and use of the domain name meet the bad faith element set forth in Section 4(b)(iv) of the UDRP.  Furthermore, even if Respondent’s claim that he did not intend to profit from his <colonelsanders.com> website were true, Respondent’s registration and use of the domain name that is confusingly similar to Complainant’s COLONEL SANDERS marks must be assumed to logically benefit Respondent to the detriment of Complainant, and therefore are in bad faith.  See David Taylor Cadillac/Buick Co. v. Spider Webs Ltd., FA 95832 (Nat. Arb. Forum Nov. 30, 2002) (finding bad faith in Respondent’s use of the domain name for a free, consumer website because “confusion can result regardless of whether the content on [Respondent’s] website is commercial or noncommercial”). 

Respondent’s claim that he did not intend to profit from the domain name, however, is directly contradicted by the undisputable evidence that he offered to sell the domain name to Complainant for $5,000, an amount that well exceeds his expenses for registering the domain name.  As established above, soon after registering the domain name, Respondent offered to sell the domain name to Complaint for $5,000.  Respondent rejected Complainant’s offer to reimburse him for $100 in expenses, instead reiterated his offer to sell the domain name for $5,000, citing the “popularity” of the domain name, a popularity which is inextricably rooted in the fame of the COLONEL SANDERS marks.  As such, Respondent’s activities constitute textbook bad faith pursuant to Section 4(b)(i) of the UDRP.  See, e.g., Federal Home Loan Mortgage Corp. v. Arshad, FA 116767 (Nat. Arb. Forum Sept. 19, 2002) (finding bad faith in Respondent’s offer to sell the disputed domain name to complainant). 

Respondent’s bad faith offer to sell the domain name is not mitigated by the fact that Complainant contacted him first.  Respondent argues that he was “only responding to [KFC’s] request.” Under Respondent’s flawed interpretation of the UDRP, responding to a cease-and-desist letter by offering to sell the trademark-related domain name for a tremendous profit would never be in bad faith, which is clearly an absurd result.  As the Panel noted in Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001), “. . .the Policy’s goal of preventing cybersquatting would not be furthered by excluding evidence of a registrant’s offer to sell or otherwise transfer the domain name for consideration in excess of out-of-pocket costs, even if the offer is made after the registrant is on notice of the dispute.  Cybersquatters often wait until a trademark owner comes calling; they should not be able to avoid the Policy by being the second to speak.”  Further, the fact that Respondent offered to sell the domain name in his letter to Complainant rather on his website is irrelevant, as Respondent’s attempt to make thousands of dollars in profit from his registration and use of the domain name is plainly evident.

Respondent’s subsequent removal of the objectionable material originally posted at the domain name website does not diminish the fact that Respondent registered and used the domain name in bad faith.  See Accu Weather, Inc. v. Global Net 2000, Inc., FA 94645 (Nat. Arb. Forum June 1, 2000) (finding Respondent’s removal of infringing website content at the domain name does not restrict Respondent from “reverting to this or similar behavior in the future”); see also America Online, Inc. v. East Coast Exotics, D2001-061 (WIPO July 10, 2001) (finding changes made to the website after the complaint was filed do not lessen Respondent’s prior bad faith acts); see also Coral Trademarks, Ltd. v. Eastern Net, Inc., D2000-1295 (WIPO Dec. 26, 2000) (same).

Respondent’s current “passive holding” or non-use of the domain name constitutes bad faith.  See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding passive holding constitutes bad faith use of the domain name); see also Aeroturbine, Inc. v. domain Leasing Ltd., FA 93674 (Nat. Arb. Forum Mar. 23, 2000) (same); Estate of Tupac Shakur v. Andronian, AF-0349 (eRes.Sept. 4, 2000) (same); see also CBS Radio Inc. v. Oldies Radio, D2000-1033 (WIPO Oct. 5, 2000) (same); see also Sanrio Co., Ltd.  v. DLI, D2000-0159 (WIPO April 20, 2000) (same).

 

B. Respondent

Respondent has neither the time nor the resources to give sufficient response to what clearly took Complainant several months of preparation. Having received notice of this administrative proceeding at the start of the holiday season, it would appear that the timing of Complainant’s submission was calculated to overwhelm Respondent during an already busy time of year. If this was indeed Complainant’s intent, they have succeeded. The filing of an extension would be of no avail, as an extra twenty days would still heavily overlap the holidays, of which Respondent has prior commitments.

 

Furthermore, Respondent sees no reason to instruct the ignorant in the fundamentals of art interpretation, nor will Respondent pontificate on the staunching of free speech on the Internet at the hands of large corporations. Suffice it to say, this is exactly the kind of nonsense that Respondent was depicting though his artwork.

 

Lastly, the website is not “currently inactive” or in “passive holding” as Complainant contends. On November 16, 2003, prior to receiving any correspondence of this administrative proceeding, the website <colonelsanders.com> was repurposed to feature photo’s of Respondent’s pet guinea pig, known to friends and family as “Colonel Sanders”. The site now bears no resemblance to anything related to KFC.

 

FINDINGS

Based upon the information provided by both parties, the Panel finds:

(1)    The <colonelsanders.com> domain name registered by Respondent is identical or confusingly similar to a trademark in which Complainant has rights;

(2)    Respondent has no rights or legitimate interests with respect to the <colonelsanders.com> domain name; and

(3)    The <colonelsanders.com> domain name was registered and is being used in bad faith.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform domain name Dispute Resolution Policy (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 Complainants 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;

(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.

 

Identical and/or Confusingly Similar

Complainant KFC Corporation has established rights in the COLONEL SANDERS’ formative marks (e.g. COLONEL SANDERS’ RECIPE, COLONEL SANDERS’ RECIPE KENTUCKY FRIED CHICKEN and COLONELS’ FACE DESIGN marks) through registration of those marks on the Principal Register of the U.S. Patent and Trademark Office, as well as through widespread and continuous use of the marks in commerce. 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”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).

 

The <colonelsanders.com> domain name is confusingly similar to its COLONEL SANDERS’ formative marks, as the dominant portion of each of those marks is the COLONEL SANDERS’ portion of the marks. See Down East Enter. Inc. v. Countywide Communications, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to Complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE); see also Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2000) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name rather than upon the likelihood of confusion test under U.S. trademark law).

 

Rights or Legitimate Interests

Respondent’s use of the domain name to feature Complainant’s COLONELS’ FACE DESIGN mark without authorization, along with phrases such as “War is Peace,” “Big Brother is Watching You” and “Freedom is Slavery” does not evidence a legitimate noncommercial or fair use of the domain name. See Robo Enter., Inc. v. Tobiason, FA 95857 (Nat. Arb. Forum Dec. 24, 2000) (holding that in order to qualify as a protected ‘parody’ which would confer rights or a legitimate interest, the domain name itself must signify critical purposes, as opposed to imitation of the service mark). In this case, the slogans in question had no discernable relationship to the trademarks. Without some relationship between the two, there can be no parody.

 

Respondent’s failure to use the disputed domain name for any bona fide purpose other than to display an adulterated version of Complainant’s mark does not evidence rights or legitimate interests in the disputed domain name. See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (“use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use").

 

Respondent’s offer to sell its domain name registration to Complainant is further evidence (but not conclusive evidence) that Respondent lacks rights or legitimate interests in the disputed domain name. See Am. Nat’l Red Cross v. domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark”); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark).

 

Needless to say, Respondent cannot acquire rights to the Colonel Sanders domain name simply by naming (or possibly even re-naming) his pet guinea pig after (or in honor of) Colonel Sanders. First of all, a pet guinea pig is not a party to this proceeding so Policy ¶ 4(c)(ii) dos not apply (it applies only to respondents and animals cannot be respondents). Second, allowing this defense would simply promote a plethora of pet guinea pig websites (whether the pet guinea pig has died or not), all with rather esoteric names that just happened to be famous trademarks. This Panel declines to walk down that road.

 

Registration and Use in Bad Faith

Respondent’s offer to sell the disputed domain name to Complainant for $5,000 is evidence that the domain name was registered and used in bad faith. See Prudential Ins. Co. of Am. v. TPB Fin., FA 105218 (Nat. Arb. Forum Apr. 8, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(i) where Respondent offered to sell the domain name for $900, specifically noting that it would cost Complainant more to enforce its rights legally than to succumb to Respondent's attempted extortion); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"). Based upon the evidence at hand and the famous nature of these marks, it seems fairly obvious Respondent registered the domain name in bad faith. Putting Complainant’s trademark on Respondent’s website also suggests Respondent knew Complainant’s trademark existed after the website was operational as well.

 

Respondent’s registration and use of the disputed domain name with actual knowledge of Complainant’s rights in the COLONEL SANDERS’ formative marks, including the display of the COLONELS’ FACE DESIGN mark, is evidence that the domain name was registered and used in bad faith. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

 

Respondent’s use of the disputed domain name was not a parody, but rather tarnishes Complainant’s mark, evidence that the disputed domain name was registered and used in bad faith.

 

Respondent’s “use” of the domain name is nominal, and that its passive holding of the disputed domain name is evidence of bad faith registration and use. See Parker Hannifin v. East Bay Website, AF-0587 (eRes. Dec. 22, 2000) (a domain name can be used for several purposes, including: (1) a website (ranging from informational to eCommerce) (2) an address for email, or (3) to prevent another from using the domain name); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale); see also Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (Nov. 26, 2000) (finding bad faith where (1) Respondent failed to use the domain name and (2) it is clear that Respondent registered the domain name as an opportunistic attempt to gain from the goodwill of Complainant).

 

Renaming Respondent’s pet guinea pig “Colonel Sanders” and dedicating the website to him is further evidence that the domain name is being used in bad faith.

 

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 <colonelsanders.com> domain name be TRANSFERRED from Respondent to Complainant KFC Corporation.

  

Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: January 2, 2004

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[1] The May 22, 2003 letter and subsequent correspondence was sent by YUM! Restaurants International, a division of Complainant KFC’s parent company YUM! Brands, Inc., on KFC’s behalf.