KFC wins UDRP complaint for irankfc.com at WIPO but there is more to that…

KFC Corporation filed a UDRP complaint for the domain name irankfc.com at the World Intelectual Property Organization (WIPO) Arbitration and Mediation Center. The Respondent was Ruhollah Gheisarinia of Najafabad, Esfahan, Iran.  KFC Corporation operates the KFC (Kentucky Fried Chicken) restaurant chain.

The Respondent did not reply to the Complainant’s contentions so it was an easy uncontested win for the KFC Corporation. But what seems like an easy straightforward win has a story behind it.

The disputed domain name was registered on February 3, 2010 and is used in connection with a website falsely announcing that the Complainant granted the website operator a license to use the KFC Marks in Iran and authority to act on its behalf in Iran, to develop and hire employees for authorized Iran restaurant locations, and to advertise said locations to Internet users. In fact, the Complainant has no authorized franchisees or licensees in Iran as it is forbidden for U.S. companies to do business in Iran by the U.S. Comprehensive Iran Sanctions, Accountability, and Divestment Act of 2010, which prohibits U.S. companies from engaging in certain foreign exchange, banking, and property transactions in Iran. The website available at the disputed domain name also shows the KFC Marks on almost every page and images of KFC goods, which the Respondent copied from the Complainant’s official website.

KFC corporation claimed that  Respondent Ruhollah Gheisarinia had no rights or legitimate interests in respect of the disputed domain name as it is not a franchisee of the Complainant, as the Complainant has not granted the Respondent any license, permission, or other right by which the Respondent could own or use any domain name incorporating the KFC Marks, as the Complainant is prohibited by federal U.S. statute from authorizing a KFC restaurant business in Iran and, accordingly, has no representatives in Iran and has never authorized any KFC-related activities to take place in Iran, and as the disputed domain name is not, nor could be contended to be, a name or nickname of the Respondent.

The domain irankfc.com is fully developed and falsely appears to be a legitimate Iranian franchise of the well known KFC restaurant. It has many different pages advertising different KFC menus, a contact page, email addresses, telephone numbers and possibly an address.(I am not sure as the website is in an Arabic language) It even has a link to an active facebook page with 12 friends. The website was created by a Polish web design company at createwebsites.pl. I asked them if they have a comment on this case and I will update this post when and if I get a reply.

The Panelist found in favor or KFC in all elements of the UDRP so she ordered that the disputed domain name irankfc.com be transferred to the Complainant.

It appears that this case is not going to be the end of this domain dispute. KFC’s legal counsel made a big mistake IMHO. Respondent Ruhollah Gheisarinia also owns the domains irankfc.net and irankfc.org that are also registered with registrar OnlineNic.com and also point to the same website as irankfc.com. I don’t understand why these 2 domains were not included in this UDRP complaint as the fee paid to WIPO would have been the same as for a single domain:

For a case filed with the WIPO Center involving between 1 and 5 domain names that is to be decided by a single Panelist, the fee is USD1500.

There are at least 3 more domain names incorporating “KFC” and “Iran” but these have different registrants than the Respondent: iran-kfc.com, kfc-iran.com and kfciran.com.

Finally, KFC issued a statement warning that it would sue anyone taking advantage of the KFC brand in Iran.