WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
McDonald's Corporation v. Private Whois mailesong.org
Case No. D2012-0481
1. The Parties
The Complainant is McDonald's Corporation of Oak Brook, Illinois, United States of America, represented by Neal, Gerber & Eisenberg, United States of America.
The Respondent is Private Whois mailesong.org of Nassau, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <mailesong.org> is registered with Internet.bs Corp.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2012. On March 12, 2012, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On March 14, 2012, Internet.bs Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.
The Center has verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 proceeding commenced on March 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for the Response was April 9, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the parties of the Respondent’s default on April 10, 2012.
The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on April 20, 2012. 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 a company incorporated in the State of Delaware in the United States of America and the owner of a registration in China for the Chinese character trade mark 麦乐送dating from March 28, 2010 (the “Trade Mark”).
The identity of the Respondent is unknown.
C. The Disputed Domain Name
The disputed domain name was registered on August 23, 2011.
5. Parties’ Contentions
The Complainant made the following submissions in the Complaint:
Established in 1955, the Complainant is the world’s largest food service company, with more than 33,000 restaurants worldwide, including 1,400 restaurants in China, and annual revenue of over USD 20 billion.
The Trade Mark, pronounced “mai le song”, is the Chinese language version of the Complainant’s McDELIVERY trade mark, and is used by the Complainant in China.
The disputed domain name is confusingly similar to the Trade Mark. The disputed domain name comprises the pinyin phonetic transliteration in Roman script of the Trade Mark.
The disputed domain name is resolved to a website which features, without authorisation, the famous red and yellow trade dress of the Complainant, including its famous golden arches, as well as various other trade marks and logos of the Complainant (including the Trade Mark), and copies some of the content of the Complainant’s Chinese language website used in China (the “Website”). The Respondent is generating income by hosting advertisements on the Website.
The Respondent is not commonly known under the disputed domain name and does not have any rights or legitimate interests in respect of the disputed domain name.
The Respondent has not been licensed or authorised by the Complainant to use the Trade Mark or to register the disputed domain name. The Respondent is not making a bona fide offering of goods or services under the disputed domain name.
The Respondent has registered and is using the disputed domain name in bad faith. The Respondent is using the disputed domain name primarily for the purpose of intentionally attracting, for commercial gain, Internet users to the Website, in order to profit from the repute of the Trade Mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Mark acquired through use and registration which predate the date of registration of the disputed domain name.
The disputed domain name is identical to the pinyin phonetic transliteration of the Trade Mark. It is well established under UDRP jurisprudence that domain names comprising phonetic transliterations of Chinese language trade marks are confusingly similar to such trade marks under the Policy. See e.g. 丹佛斯有限公司, Danfoss A/S v. 郑功乾, Zhenggongqian, WIPO Case No. D2011-2243; Danfoss A/S v. d7r9e1a1m/淄博丹佛斯测控仪表有限公司, WIPO Case No. D2007-0934.
The Panel finds that the disputed domain name is confusingly similar to the Trade Mark.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the 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 organisation) 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.”
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Mark. The Complainant has prior rights in the Trade Mark which precede the Respondent’s registration of the disputed domain name. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).
The Respondent has appropriated on the Website some of the content of the Complainant’s official website in China. The Website also features the trade marks and logos of the Complainant (including the Trade Mark), the Complainant’s corporate livery, and images of the Complainant’s products, all without the authorisation or approval of the Complainant.
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name is used in connection with a bona fide offering of goods or services.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. To the contrary, the evidence shows the Respondent is using the Website in order to generate advertising revenue through capitalising on consumer confusion between the disputed domain name, the Website and the Complainant.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“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.”
The evidence shows the Respondent has registered the disputed domain name and set up the Website in order to capitalise on the fame of the Complainant and gain advertising revenue through attracting consumers to the Website.
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith. Accordingly, the third condition of paragraph 4(a) of the Policy has been fulfilled.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <mailesong.org> be transferred to the Complainant.
Sebastian M.W. Hughes
Dated: April 26, 2012