WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
McDonald's Corporation v. Kamil Akdogan, Fibanet
Case No. D2015-0303
1. The Parties
The Complainant is McDonald's Corporation of Oak Brook, Illinois, United States of America, represented by Reed Smith LLP, United States of America.
The Respondent is Kamil Akdogan, Fibanet of Konya, Turkey, self-represented.
2. The Domain Name and Registrar
The domain name in issue <mcdcafe.com> (the "Disputed Domain Name") is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 24, 2015. On February 25, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 26, 2015, the Registrar 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 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2015. The Respondent filed a Response in Turkish on March 24, 2015. On March 25, 2015, the Center notified the Respondent the language of the Registration Agreement for the Disputed Domain Name was English and requested the Respondent to submit a Response in English. On March 25, 2015, the Respondent filed what the Panel understands to be a translation of its original Response into English. That document has been translated in a manner which renders the English difficult to understand and it did not attach any translations of any of the various Annexes to the Respondent's original Response, all of which were in Turkish.
The Center appointed Nick J. Gardner as the sole panelist in this matter on April 1, 2015. 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.
On April 8, 2015 the Complainant lodged an unsolicited supplemental filing, described as a Reply in Support of Complainant's Complaint.
On April 13, 2015 the Panel issued a Procedural Order, the substantive part of which provided as follows:
"(1)The language of these proceedings is English; (2) The Respondent is permitted, if it wishes, to refile a revised translation of its Response into English having had it translated by an appropriately qualified translator. At the same time the Respondent may, if it wishes, file translations into English, again translated by a suitably qualified translator, of any of the Annexes to its original Response if it wishes the Panel to consider the contents of those Annexes. If the Respondent does not file a translation of any Annexes the Panel will not attach any weight to the Annexes in question; (3) The Panel in its discretion will admit the Complainant's supplemental filing of April 8, 2015. The Respondent may, if it wishes, also file a supplemental filing, in English, dealing only with matters raised by the Complainant in its supplemental filing. Any such filing by the Respondent shall not exceed 1,500 words in length; (4) Any filings by the Respondent pursuant to (2) or (3) above shall be made by April 26, 2015; (5) The due date for the Panel to render a decision is extended to May 3, 2015."
On April 17, 2015 the Respondent filed a further statement in English (see below). With the exception of an accompanying Annex 20 which had text in Turkish and English, no translations of any of the Annexes to the Response were filed.
4. Factual Background
The relevant facts can be summarized as follows:
The Complainant is the well known restaurant operator and has developed a global reputation as one of the world's leading companies in this sector. For more than 60 years, the Complainant has been in the business of developing, operating, franchising, and servicing an extensive system of restaurants that prepare, package, and sell a variety of quickly-prepared, modestly-priced foods and beverages. Today it operates via over 35,000 locations worldwide serving approximately 69 million customers in over 100 countries each day, and has approximately USD 36.6 billion in worldwide assets. As part of its business, the Complainant has extensively used the terms McCafe and McDCafe, including use of the MCDCAFE mark in Turkey, to advertise, promote and sell its restaurant services and a wide variety of specialty food and drink products, including but not limited to smoothies, milk-based beverages containing coffee, fruit and fruit juice, coffee, tea, sandwiches, biscuits, breads, cookies, oatmeal, pastries, and chocolate.
On or around September 3, 2014, an individual by the name of Sefa Aslan registered the Disputed Domain Name. On or around February 5, 2015, Mr. Aslan transferred the Disputed Domain Name to the Respondent, who subsequently registered the Disputed Domain Name with a new registrar (PDR Ltd. d/b/a PublicDomainRegistry.com).
The Complainant has filed evidence of numerous registered trademarks in many countries in respect of the terms "McCafe" and "McDCafe". By way of example Turkish trade mark 2012 27982 for the term MCDCAFE was registered on July 25, 2013 in respect of inter alia "Drinks made from coffee, milk based drinks containing coffee (…), sweet pastries, muffins, cakes, cookies, biscuits and sandwiches".
5. Parties' Contentions
The Complainant's contentions are set out in considerable detail and cite numerous previous UDRP cases. The Complainant's case can however be summarized as follows:
The Disputed Domain Name is identical to its trade mark MCDCAFE in which it clearly has rights. It is also similar to its trademark MCCAFE.
The Respondent has no rights or legitimate interests in the term "MCDCAFE". There is no other meaning associated with that term other than in relation to the Complainant. The Complainant has not authorized the Respondent to use the term "MCDCAFE".
The Disputed Domain Name was registered and is being used in bad faith. The Respondent has no legitimate business associated with the name, the name has no meaning other than in relation to the Complainant so no good faith use is possible. Its present use is for a website associated with the Disputed Domain Name which contains random quotations but which is being used to promote other websites operated by the Respondent or associates of the Respondent, which websites in turn provide click through links to other products and services unrelated to the Complainant. This amounts to registration and use in bad faith.
The Respondent originally filed an email from a Fatih GEZGİÇ with an email address of […]@fibanet.com which as the Panel understands it amounted to its Response in Turkish (which is not a language the Panel understands). As indicated above following correspondence with the Center which informed the Respondent that the language of the proceedings was English, the Respondent filed a further email which contains what the Panel understands to be a translation of its response into English, although it is difficult to understand. For convenience the Panel sets it out verbatim as follows (all spelling/grammatical mistakes are present in the original):
We were informed about reference of McDonalds company to your side in march 5, 2015. Attorney of company Dear Ömer, demanded "www.mcdcafe.com" domain adress by contact us in january 19, 2015.(annex1)The name of domain derived MUCİT word.because of in use "www.mctcafe.com" ,(annex2) that word can be used MUCİD(annex3) and such as MUCİTCAFE-MUCİDCAFE words arent global, besides in branding we think that create problem as MUCİT-CAFE general used words, we decided MCDCAFE brand.
While in search of process brand MCDCAFE, we determined that mcdonalds company uses the branch in branch class of numbers 29,30,32,43 and determined that company uses as domain address "www.mcdcafe.com.tr" (annex 4-5). Because of in not use www.mcdcafe.com and our field 42.class of brand is available (annex6), we bought the "www.mcdcafe.com" from "www.isimtescil.com".
Before starting to work of branding, as we know mcdonalds company uses the brand in active and we think that is not ethic behaviour,we notified the company as sending e-mail to […]@mcdonalds.com.tr in 23 September 23, 2014 but couldnt get the answer(annex 7-8). Because of Mcdonalds company didn't answer, for not make any problem, we notified (the agency of company) Clock Work company to […]@clockwork.com.tr in December 15, 2014(annex 9), but couldn't get the answer again.
In activity field of planning is a social network Project in which the people Express their mind, Project and ideas. besides our Project provides the social beneficiary and solidarity.our Project progresses with new ideas.
For our Project, we started to working with avaliable of brand and patent and we agreed with some business partners and even made prepay (annex 10-11-12).our Project that advancing slowly because of monetary problems, we had to stop it because of brand problem.in the case of getting our domain from us, all our working goes to waste and we incur very serious.the responsible of this process is mcdonalds company that couldnt follow the process of branding and althought we notified twice but no answer.
Because of the company's venture and allegations, our working stopped and we suspended the reference of 42.class brand. "www.mccafe.com","www.mcdonald.com","www.mcdonalds.net" adresses that the company has are for sale.some malicious persons can make a problem with these adresses.why the company allow this situation? why the company doesn't buy them just paying 10$?(annex 13-14-15-16-17) About to correspondence of company Attorney,(annex 18-19) our working is out of class brand of the company.there arent any unfair competition and nothing to harm the brand and even wont.we dont want to hurt anybody and nobody hurt us. but the company which first 500 company in the world, install the monetary-spiritual responsibility of his own mistakes to us.we arent malicious and we dont accept such allegation definetely. For these reasons, we dont accept the accusation and allegation of Mcdonalds company to us.besides we cannot document the spending effort and working. Best regards, Fatih GEZGİÇ"
Following the Procedural Order made by the Panel the Respondent filed a further email on April 17, 2015. It does not appear to the Panel to be a revised translation as permitted by the Procedural Order but rather a further statement by the Respondent as to its case. The Panel will nevertheless in its discretion admit this document. Again it is convenient to set it out verbatim:
"We were informed that Mcdonalds Company's answer for our defense in 9 april 2015. The mark of Mcdcafe has patent in class of 29,30,32,43 and class 42 patent is available. As mccafe mark has 42 class patent isnt means that mcdcafe mark has. Both Marks are different from each other. Everybody who wants to get 42 class mark.
We specified previously that our Project in Mcdcafe.com;
"Mcdcafe is a social network; to meeting the investor and entrepreneur for a new product, immediately finding thousands ideas and suggestions to the users which want to improve the product in use, taking ideas from users' products. Moreover, it provides beneficiary to the people in need of assistance anywhere in the world.it is a social network advanced and in true sense needed."
"Mcdcafe is social network for fun purpose and wasting time.it is a platform that aiming benefit to users. it is delayed platform that limited only power of dreams." (annex 1)
Our Project has nothing to do with Mcdonalds company, mccafe mark and its logo and business of company. Moreover, the aforementioned mark is mccafe.but we have domain mcdcafe.com.
[logo graphic omitted]
Mcdonalds company still continues allegations mccafe mark that is irrelevant. so we didnt obtain any gain from domain we have. Hence, the allegation is wrong that we use malicious.
Fatih Gezgic April 14, 2015"
6. Discussion and Findings
Preliminary Issue – language
As a preliminary issue the Panel determined in its Procedural Order that the language of these proceedings was English. The reason is as follows. The language of the registration agreement for the Disputed Domain Name is English. Paragraph 11 of the Rules which are applicable to these proceedings provides as follows: "Language of Proceedings. (a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. (b) The Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding."
Preliminary Issue – Respondent's identity
It is also necessary to consider the identity of the Respondent. It appears from the evidence filed by the Complainant that the original registrant, Mr. Aslan, and the present Respondent Mr. Akdogan are associated and that both are involved with a company or organisation called fibanet, as is Mr. GEZGİÇ who wrote the emails filed on behalf of the Respondent. It seems clear that the Disputed Domain Name was transferred from Mr. Aslan's name to the Respondent after the Complainant had notified Mr. Aslan of its claimed rights. In the absence of any evidence from the Respondent disputing the Complainant's evidence the Panel accepts the Complainant's evidence and proposes to treat both the registration and use as having been carried out by connected parties and attributable to the Respondent.
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) The Disputed Domain Name is identical with or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the trade mark MCDCAFE. The filed evidence establishes the Complainant has carried on business internationally on a huge scale and is very well known. The extent to which the Complainant's reputation and fame extends to the term MCDCAFE as one of the brands it uses in its business is somewhat less clear but it is not in doubt that it does use that brand in relation to its business activities and it has a wide range of registered trade mark rights in the word "MCDCAFE" including in Turkey.
The Disputed Domain Name is identical to the MCDCAFE trade mark, it being well established that the ".com" Top Level Domain suffix is to be typically ignored in making this comparison. Accordingly, the Panel finds that the first condition of paragraph 4(a) of the Policy has been fulfilled. On view of this finding it is unnecessary to consider the Complainant's further arguments based on its MCCAFE trade mark.
B. Rights or Legitimate Interests
"MCDCAFE" is in substance a brand name developed by the Complainant and is a term which has no other meaning save in relation to the Complainant or its products.
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 the Disputed Domain Name:
(i) before any notice to the Respondent of the dispute, use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the Disputed Domain Name, even if the Respondent has acquired no trade mark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the MCDCAFE trade mark. The Complainant has prior rights in the MCDCAFE trade mark which precede the Respondent's registration of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see for example 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 Panel does not find either of the Respondent's filings easy to understand. The Panel by its Procedural Order provided the Respondent with an opportunity to provide a better translation of its Response but the Respondent has not availed itself of that opportunity but instead submitted a further statement as to its case again written in English which is difficult to understand. As best the Panel can understand it, the Respondent suggests that because it (or its predecessor) intended to use the Disputed Domain Name in relation to activities that would fall within class 42 of any applicable trade mark registration, and because the Respondent had no registration in class 42, it was free to purchase the Disputed Domain Name and thereby obtain a legitimate interest. That is not correct. As a general rule any available string of characters that is not already registered and which meets the technical requirements for a domain name can be purchased – that does not automatically confer independent rights in that string. The Response appears to acknowledge that the Respondent knew of the Complainant and its use of MCDCAFE but thought it could in any event register that term as a domain name simply because it was available. Absent any separate independent rights in the term in question the fact that it is available is not sufficient to establish rights or a legitimate interest. The relevant test in relation to this issue is not whether or not the Complainant has a trade mark registration in a specific category, but whether the Respondent can demonstrate it has rights or legitimate interests in the term in question. As far as the Panel can understand the Response no independent basis for any rights or legitimate interests are asserted and accordingly the Panel does not find that the Response credibly establishes that the Respondent has any rights or legitimate interests in the Disputed Domain Name.
For completeness the Panel also notes that by its supplemental filing the Complainant provided materials showing it has registered trademarks in at least two countries in class 42 in respect of its MCCAFE trade mark, and that it has extensively used the MCCAFE name on social media, specifically Facebook and Twitter. In view of the Panel's finding above it is not necessary to consider this material in detail, although the Panel briefly notes this is likely to provide a further reason as to why the Respondent's case is incorrect.
Accordingly the second condition of paragraph 4(a) of the Policy has been fulfilled.
C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the MCDCAFE trade mark, and the identical nature of the Disputed Domain Name to the MCDCAFE trade mark, and the lack of any credible explanation from the Respondent as to why it registered the Disputed Domain Name lead the Panel to conclude the registration and use was in bad faith.
In the present case, the Panel again finds great difficulty in understanding the Respondent's case. The Panel assumes the Respondent is advancing a case that it independently coined the term "McDCafe" as an alternative to a Turkish word, for use as a name for some form of social networking site. If that is the Respondent's case the Panel simply does not find it credible. The term is a coined word with no separate meaning and involves the juxtaposition of the abbreviation "McD" with the word "café". Whilst the Panel accepts that the word "café" is of general usage and might readily form part of a name referring to a social networking site, no credible coherent explanation has been advanced by the Respondent as to why it should seek to combine that term with the abbreviation "McD" which does not seem to have any relevance to the Respondent at all. The Panel has further difficulty in accepting the credibility of the Respondent's case, given there is no evidence at all demonstrating the Respondent has in fact used the Disputed Domain Name for its stated purpose, namely some form of social networking site – instead the Disputed Domain Name is simply being used to host a static page with a number of apparently random quotations from various individuals, (such as Julia Roberts and Anton Chekov) translated into Turkish, appearing on it.
The Respondent also appears to assert that the Complainant's rights are only in the term "MCCAFE" and that its use of "MCDCAFE" (i.e., with an additional "D") is therefore permissible. It is not necessary for the Panel to consider the fallacies inherent in that argument as it is in any case factually wrong. As indicated above the Complaint has demonstrated it rights subsist in the term "MCDCAFE".
The Complainant says the Respondent is using its web site to divert traffic to other sites operated by the Respondent or associates of the Respondent and exhibits detail of the source code used by the Respondent on its web site. The Panel has not fully understood this argument as it seems clear the Respondent's web site does not contain active hyperlinks to other sites. If this issue was critical the Panel would need further information in order to understand the Complainant's case better. However the point does not matter – it is well established that even a passive holding may amount to bad faith use – see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and the discussion of this issue at paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
In this case given the distinctive nature of the MCDCAFE trade mark the Panel finds that the holding by the Respondent of the Disputed Domain Name and its use in relation to a static web page containing quotations is itself use in bad faith. Indeed the Panel finds it difficult to conceive of any use which the Respondent could make of the Disputed Domain Name which would be legitimate. Further the Panel notes the Respondent's case as set out in the material it has filed does not advance any case the Panel considers credible as to a good faith use of the Disputed Domain Name. The Panel infers that none exists.
Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled.
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, <mcdcafe.com>, be transferred to the Complainant.
Nick J. Gardner
Date: May 3, 2015