WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
McDonald's Corporation v. Lei Wang
Case No. D2012-0624
1. The Parties
The Complainant is McDonald's Corporation of Illinois, United States of America, represented by Neal, Gerber & Eisenberg, United States of America.
The Respondent is Lei Wang of Shadong, China.
2. The Domain Names and Registrars
The Disputed Domain Name <mcdcnalds.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC .
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 23, 2012. On March 26, 2012, the Center transmitted by email to GoDaddy.com, LLC. a request for registrar verification in connection with the Disputed Domain Name. On March 26, 2012, GoDaddy.com, LLC. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied 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 proceedings commenced on March 28, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 17, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2012.
The Center appointed Kar Liang Soh as the sole panelist in this matter on May 1, 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 Complaint is a food service company with over 33,000 restaurants worldwide and annual revenues of over USD 20 billion. The Complainant was established in 1955 and has been using the name MCDONALD’S as a trade mark in relation to its restaurant business since then. Of the 33,000 restaurants, 1,400 are located in China.
The Complainant has obtained registrations for the trade mark MCDONALD’S around the world including:
Jurisdiction Trade mark number Registration date
United States 749,572 January 8, 1963
United States 804,365 February 22, 2006
United States 1,426,681 January 27, 2007
The Complainant has registered the following logo (the “Logo”) as a trade mark in the United States (trade mark number 2,895,568):
The Complainant also owns trade mark registrations in China for the Chinese characters麦当劳 (trade mark number 636097) and麦乐送 (trade mark number 622130).
The Complainant has registered many domain names comprising “mc” formative terms, including <mcdonalds.com>. Delivery orders may also be placed with the Complainant through the website <4008-517-517.cn> operated by McDonald’s (China) Co, Ltd. “4008-517-517” is the telephone hotline for placing orders and is prominently displayed at the top of the homepage. The website prominently displays the trade mark 麦乐送 and the Logo.
The Disputed Domain Name was registered on November 7, 2011, almost 4 decades after the earliest trade mark registration identified above. Information relating to the Respondent is essentially limited to that associated with the WhoIs report on the Disputed Domain Name. The Respondent is an individual by the name of “lei wang” of “shandong, China”. The Disputed Domain Name resolves to a website which purports to advertize products similar to those available on the Complainant’s website at <4008-517-517.cn> under various trade marks of the Complainant, including MCDONALDS, the Logo, 麦乐送 and麦当劳. The website to which the Disputed Domain Name resolves also refers to the Complainant as a large fast-food restaurant franchise with about 30,000 restaurants worldwide. The same hotline number 4008-517-517 is also prominently displayed at the top of the homepage. This website also purportedly provides links for online ordering of麦当劳 meals and meal coupons and contains advertising banners for products and brands which do not appear to bear any relationship with the Complainant
5. Parties’ Contentions
The Complainant contends that:
1) The Disputed Domain Name is confusingly similar to the Complainant’s trade mark MCDONALD’S. The only difference is the Respondent’s replacement of the letter “o” in the Complainant’s trade mark with a “c” and is a clear attempt to typosquat;
2) The Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant has never licensed or otherwise authorized the Respondent’s use of the trade mark MCDONALD’S. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name; and
3) The Respondent has registered and is using the Disputed Domain Name in bad faith. The Complainant’s trade mark MCDONALD’S is well-known and the Respondent registered the Disputed Domain Name with the purpose of intentionally attempting to attract for commercial gain Internet users and consumers to the website resolved from the Disputed Domain Name by creating a likelihood of confusion with the Complainant’s trade mark.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in this proceeding, the Complainant must establish all 3 limbs of paragraph 4(a) of the Policy, namely:
a) that the Disputed Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
b) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
c) that the Disputed Domain Name has been registered and is being used in bad faith.
The Panel will consider each of the above limbs in turn.
A. Identical or Confusingly Similar
The Complainant clearly has rights in the trade mark MCDONALD’S by virtue of the Complainant’s trade mark registrations. The Panel accepts that the only differences between the Disputed Domain Name and the trade mark are the replacement of the letter “o” in the trade mark with a letter “c” in the Disputed Domain Name, and the absence of an apostrophe before the letter “s” in the Disputed Domain Name.
The apostrophe is not a valid character for domain name registration and the domain name corresponding to a particular word containing an apostrophe typically omits the apostrophe. The omission of an apostrophe in a domain name does not normally change the identity of the original word containing the apostrophe. The Panel is of the view that the omitted apostrophe in the Disputed Domain Name does not assist to distinguish the Disputed Domain Name from the trade mark MCDONALD’S.
From a visual standpoint, the letter “c” is essentially a letter “o” with an opening on the right. When incorporated into a string of other characters, it is reasonable that the typographical difference between these letters may not be apparent at a glance. Accordingly, the replacement of the letter “o” in the Complainant’s trade mark with a “c” in the Disputed Domain Name does not assist to distinguish the Disputed Domain Name from the trade mark MCDONALD’S.
In these circumstances, the Panel holds that the Disputed Domain Name is confusingly similar to the Complainant’s trade mark MCDONALD’S.
B. Rights or Legitimate Interests
The Respondent is an individual. There is no evidence before the Panel to suggest that the Respondent is known by the name “mcdcnalds”. The Complainant has also confirmed that the Respondent has not been licensed or authorized to use the trade mark MCDONALD’S. Based on the guidance of the consensus of past UDRP panel decisions, these conditions support a prima facie case that the Complainant has no rights or legitimate interests in the Disputed Domain Name.
In addition, the Panel notes that the Respondent does not use the word “mcdcnalds” on the website resolved from the Disputed Domain Name. Instead, the only word noticeably similar to the word “mcdcnalds” incorporated within the content of the website is the Complainant’s trade mark MCDONALD’S. The Panel is unable to glean any basis for a reasonable legitimate noncommercial or fair use of the Disputed Domain Name from the available evidence which contradicts the prima facie finding.
Therefore, the Panel determines that the 2nd limb of paragraph 4(a) is also established.
C. Registered and Used in Bad Faith
The Panel accepts on the evidence that the Complainant’s trade mark MCDONALD’S is well-known. The Respondent is clearly aware of the Complainant and the Complainant’s trade marks, including MCDONALD’S, 麦当劳, 麦乐送 and the Logo. The Respondent is evidently also aware of the hotline number 4008-517-517 for placing orders to the Complainant. In the absence of any clarification from the Respondent, which is unfortunately not forthcoming, there is no other reasonable explanation for the copious use of the Complainant’s trade marks on the website resolved from the Disputed Domain Name. Such use cannot be coincidental or accidental.
The website to which the Disputed Domain Name resolves to is designed and presented in such a manner so alike the style and design of the Complainant’s website at <www.4008-517-517.cn> that a reasonable person visiting the Respondent’s website may be easily misled into believing that the website and its content are associated with the Complainant. The Panel is reminded of paragraph 4(b)(iv) of the Policy which states the following as showing bad faith registration and use:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location”
The content of the website resolved from the Disputed Domain Name is strongly suggestive of an objective of commercial gain on the part of the Respondent. The Complainant has alleged that the Respondent is hosting advertisements on the website to earn income, which is clearly a form of commercial gain. In the face of such a serious allegation, the Respondent has chosen to remain silent. If such an allegation were unfounded, a reasonable bona fide registrant and user of a domain name would have at least objected to it. Inexplicably, the Respondent has not done so. The Panel is inclined to draw an adverse inference that there is a basis for the allegation. In view of this, the Panel holds that the Respondent is intentionally attempting to attract Internet users to the website resolved from the Disputed Domain Name for commercial gain.
Confusing similarity between the Disputed Domain Name and the Complainant’s trade mark has already been established. The deliberate adoption of multiple trade marks of the Complainant on the website, purporting to offer online delivery of the Complainant’s products on the website and the overall look and feel of the website all go towards the conclusion that the Respondent is using the Disputed Domain Name to create a likelihood of confusion with the Complainant’s trade mark as to source, sponsorship, affiliation and/or endorsement.
In view of the above, the Panel holds that bad faith registration and use in the form outlined in paragraph 4(b)(iv) of the policy is also established.
For 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, <mcdcnalds.com> be transferred to the Complainant.
Kar Liang Soh
Dated: May 25, 2012