WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

McDonald’s Corporation v. Easy Property

Case No. D2006-1142

 

1. The Parties

The Complainant is McDonald’s Corporation, Illinois, United States of America, represented by Neal, Gerber & Eisenberg, United States of America.

The Respondent is Easy Property of Beijing, China.

2. The Domain Name and Registrar

The disputed domain name <mcdonalds.biz> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 6, 2006. On September 8, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On September 11, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 25, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 15, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2006.

The Center appointed Debrett Lyons as the Sole Panelist in this matter on October 30, 2006. 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 widely-known restaurant chain owner. It has used the trademark McDONALD’S (the Mark) continuously since 1955 and it now appears on over 30,000 restaurants worldwide. The Mark is globally recognized and has been registered for many years in the United States, China and other countries too numerous to list here. The Complainant is also the owner of <mcdonalds.com> and many other domain names consisting of the Mark in combination with a gTLD.

The Respondent registered the disputed domain name on June 13, 2004.

In July 2006, the Complainant became aware that the disputed domain name redirected Internet users to “www.wendys.com”, a website operated by Wendy’s International Inc., a competitor of the Complainant.

The Complainant seeks transfer of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is identical to the Mark, that the Respondent has no rights or legitimate interests in it, and that the Respondent both registered and used the domain name in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact the Respondent failed to submit a reply.

According to Paragraph 4(a) of the Policy, the Complainant must prove that:

(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 was registered and is being used in bad faith.

Having considered the Complainant’s case and the available evidence, the Panel finds the following:

A. Identical or Confusingly Similar

The Panel has no hesitation in finding that the Complainant has both registered and common law rights in the Mark, and that these rights predate the date of registration of the disputed domain name by many years.

The Panel agrees with the Complainant that “.biz” and other gTLD designations are inconsequential for the purposes of comparison, and holds that the domain name is identical to the Mark. This also represents the consensus view of panels in previous decisions under the Policy.

The Complainant has accordingly satisfied the first limb of the Policy.

B. Rights or Legitimate Interests

In light of the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the Mark or to apply for or use any domain name incorporating the Mark, the circumstances here are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interest in the disputed domain name and to shift the evidentiary burden to the Respondent to show that it does have rights or legitimate interests in that name: See Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, and the cases referred to there.

The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name and so the Panel has no basis on which to find that the Respondent has rights or legitimate interests in the domain name.

The only evidence of any kind as to the Respondent’s activities or intentions is the Complainant’s allegation that at one point the disputed domain name redirected Internet users to the website of one of its main competitors. The Panel however notes that neither in Exhibit 9 of the Complaint nor anywhere else is there conclusive evidence of that claim.

The Panel nonetheless finds that the burden of proof which fell to the Respondent was not discharged and so holds that the Complainant has also satisfied the second limb of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy identifies four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The precise wording of this paragraph is as follows:

“Evidence of Registration and Use in Bad Faith.

For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

Having failed to show any rights or legitimate interests in the disputed domain name and in the face of the international reputation of the Mark, the Panel holds that the only plausible conclusion to be reached is that the domain name was registered by the Respondent in bad faith. Leaving to one side the unproven claim that the Respondent was at one time linking the domain name to a website of a competitor of the Complainant, there is no positive use of the domain name. Paragraph 4(b) of the Policy identifies, without limitation, circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, for the purposes of paragraph 4(a)(iii) and the Panel endorses the earlier decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO case No. D2000-0003, where it was said that:

“[o]nly one of these circumstances (paragraph 4(b)(iv)), by necessity, involves a positive action post-registration undertaken in relation to the domain name (using the name to attract custom to a website or other on-line location). The other three circumstances contemplate either a positive action or inaction in relation to the domain name. That is to say, the circumstances identified in paragraphs 4(b)(i), (ii) and (iii) can be found in a situation involving a passive holding of the domain name registration. Of course, these three paragraphs require additional facts (an intention to sell, rent or transfer the registration, for paragraph 4(b)(i); a pattern of conduct preventing a trademark owner’s use of the registration, for paragraph 4(b)(ii); the primary purpose of disrupting the business of a competitor, for paragraph 4(b)(iii)). Nevertheless, the point is that paragraph 4(b) recognises that inaction (e.g. passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith. Furthermore, it must be recalled that the circumstances identified in paragraph 4(b) are “without limitation” - that is, paragraph 4(b) expressly recognises that other circumstances can be evidence that a domain name was registered and is being used in bad faith.

“… The question that then arises is what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith? This question cannot be answered in the abstract; the question can only be answered in respect of the particular facts of a specific case. That is to say, in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the Administrative Panel must give close attention to all the circumstances of the Respondent’s behaviour. A remedy can be obtained under the Uniform Policy only if those circumstances show that the Respondent’s passive holding amounts to acting in bad faith.

“… The Administrative Panel has considered whether, in the circumstances of this particular Complaint, the passive holding of the domain name by the Respondent amounts to the Respondent acting in bad faith. It concludes that it does. The particular circumstances of this case which lead to this conclusion are:

(i) the Complainant’s trademark has a strong reputation and is widely known, as evidenced by its substantial use in Australia and in other countries,

(ii) the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name,

(iii) the Respondent has taken active steps to conceal its true identity, by operating under a name that is not a registered business name,

(iv) the Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement, and

(v) taking into account all of the above, it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as by being a passing off, an infringement of consumer protection legislation, or an infringement of the Complainant’s rights under trademark law.

In light of these particular circumstances, the Administrative Panel concludes that the Respondent’s passive holding of the domain name in this particular case satisfies the requirement of paragraph 4(a)(iii) that the domain name ‘is being used in bad faith’ by Respondent.”

The decision in Telstra Corporation Limited v. Nuclear Marshmallows has been cited in numerous subsequent similar fact decisions where, as in this case, there is a conclusive finding of registration of the disputed domain in bad faith but subsequent passive holding of the name by a respondent (see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions at “http://www.wipo.int/amc/en/domains/search/overview/index.html”).

The Panel finds that on the facts of this case the Respondent has both registered and used the disputed domain name in bad faith and so the Complainant has satisfied the third and final limb of the Policy.

7. 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, <mcdonalds.biz> be transferred to the Complainant.


Debrett Lyons
Sole Panelist

Dated: November 13, 2006