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Generic Top Level Domain Name (gTLD) Decisions |
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, [2001] USCA4 201; 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.
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).
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.
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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