WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

McDonald's Corporation v. Li Tro / Geren

Case No. D2015-0659

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 Li Tro / Geren of “nanfang”, China.

2. The Domain Name and Registrar

The disputed domain name <maidanlao.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2015. On April 14, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 15, 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 proceeding commenced on April 22, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was May 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 13, 2015.

The Center appointed Jonathan Agmon as the sole panelist in this matter on May 21, 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.

4. Factual Background

The Complainant, McDonald’s Corporation, is an American Company whose business consists of operating, franchising, and servicing an extensive system of fast-food restaurants worldwide. The Complaint was established in 1955 and has since become one of the world’s largest food service retailers. The Complainant operates over 35,000 restaurants worldwide, out of which over 1,900 restaurants are located in China where the Respondent is located.

The Complainant is the owner of multiple trademark registrations for the MCDONALD’S marks around the world, including in China where the Respondent is located. The Complainant’s trademark registrations include MCDONALD’S (in English), 麦当劳 (McDonald’s in Simplified Chinese), and MAI DANG LAO (McDonald’s in Pinyin). Among many other, the Complainant owns Chinese trademark registration No. 10040306 – MAI DANG LAO, in class 29, filed on October 9, 2011.

The MCDONALD’S (in English) mark has been used in connection with the Complainant’s business for over 60 years, and the McDonald’s in Simplified Chinese characters was adopted by the Complainant and has been used in China since at least as early as the 1990s.

Through extensive use around the world, the MCDONALD’S’s trademarks have generated vast goodwill and have become well-known.

The Complainant also developed an extensive presence on the Internet and is the owner of multiple domain names, including over 120 domain name registrations in China.

The disputed domain name <maidanlao.com> was registered on April 13, 2014.

The disputed domain name redirects to another website operating in Chinese and displaying the Complainant’s well-known MCDONALD’S marks.

The Complainant sent the Respondent a cease-and-desist letter, on December 31, 2014, demanding that Respondent cease and desist from any further use of the disputed domain name or the Complainant’s marks. On January 1, 2015, the Respondent responded to the Complainant’s letter via email, claiming that any and all infringing content would be removed from the disputed domain name by January 15, 2015. On January 16, 2015 the Complainant sent the Respondent an additional request that the disputed domain name be transferred to the Complainant, to which no response was received.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the disputed domain name is confusingly similar to the Complainant’s MAI DANG LAO trademark and name. The Complainant further contends that the omission of the letter “g” from the word “DANG” does not avoid a finding of confusing similarity.

The Complainant further argues that the MCDONALD’S trademarks including the MAI DANG LAO trademark have generated vast good will through the Complainant’s extensive use around the world and specifically in China and have become a well-known trademarks.

The Complainant further argues that the public associates the mark MAI DANG LAO exclusively with the products and services offered by the Complainant.

The Complainant further argues it has not licensed or otherwise permitted the Respondent to use its MAI DANG LAO trademark and is not affiliated or otherwise connected to the Respondent.

The Complainant further argues that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant argues that the disputed domain name was improperly registered and is being improperly used. The Complainant argues the disputed domain name is being used to confuse consumers into believing that the website operated under the disputed domain name is an official McDonald’s website and is affiliated with the Complainant.

The Complainant further argues that the Respondent has not only used the MAI DANG LAO mark under the disputed domain name, but also displays the various McDonald’s trademarks on the website the disputed domain name redirects to.

The Complainant further argues that it is inconceivable that the Respondent was not aware of the Complainant and the Complainant’s famous and well-known trademark when registering the disputed domain name.

The Complainant further argues that the Respondent has done nothing to identify himself as being independent from the Complainant. On the contrary, the Respondent incorporates the Complainant’s trademark in the website to which the disputed domain name redirects.

The Complainant argues that it sent the Respondent a cease-and-desist letter in an attempt to resolve the dispute outside the administrative proceeding, but the Respondent failed to cease and desist from infringing the Complainant’s trademarks.

For all of the above reasons, the Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant is the owner of multiple trademark registrations for the MCDONALD’S marks (including the MAI DANG LAO mark) around the world, including in China where the Respondent is located. For example: Chinese trademark registration No. 10040306 – MAI DANG LAO, in class 29, filed on October 9, 2011, registered on January 28, 2013.

Also, the Complainant’s rights in the well-known MCDONALD’S marks have been established in numerous UDRP decisions.

The use of a phonetic equivalent of a Chinese character mark and/or a transliteration of the mark into Latin Script is sufficient to find confusingly similarity. In this case, the Complainant also owns separate registrations for the MAI DANG LAO (in Latin characters) mark.

The disputed domain name differs from the registered MAI DANG LAO trademark by the omission of the letter “g” from the word “DANG” and the additional generic Top-Level Domain (“gTLD”) “.com”.

The omission of the letter g from the word “DANG” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s trademark.

Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain name. Paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent has failed to assert any such rights or legitimate interests.

The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the McDonald’s trademarks including the MAI DANG LAO trademark, or a variation thereof, and the evidence presented indicates that the Respondent is not engaged in a bona fide offering of goods or services, as discussed further below.

The Respondent has not submitted any Response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii) of the Policy.

The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant registered and began using its trademark, which is widely known. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).

Paragraph 4(b)(iv) of the Policy provides that it will be evidence of bad faith registration and use by a respondent, if by using the disputed domain name, the respondent had intentionally attempted to attract, for commercial gain, Internet users to the websites or other online locations to which the disputed domain name redirected to, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites or locations or of a product or service on the websites or locations to which the disputed domain name resolves.

The disputed domain name is confusingly similar to the Complainant’s trademark. Previous UDRP panels have ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.

The use of the Complainant’s trademarks on the website to which the disputed domain name redirects is also suggestive of the Respondent’s bad faith. It was held in previous UDRP decisions that it is presumptive that using a highly distinctive trademark with longstanding reputation is intended to make an impression of an association with the Complainant.

Thus, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain name. However, the Respondent has chosen not to respond to the Complainant’s allegations in the Complaint and this leads the Panel to conclude that the disputed domain name was registered and is being used by the Respondent in bad faith with the intent to create an impression of an association with the Complainant and its products and services, and profit therefore.

Indeed, “when a domain name is so obviously connected with a Complainant, it’s very use by a registrant with no connection to the Complainant suggests opportunistic bad faith” (Tata Sons Limited v. TATA Telecom Inc/Tata-telecom.com, Mr. Singh, WIPO Case No. D2009-0671).

Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the distinctiveness of the Complainant’s trademarks and the Respondent’s use of the disputed domain name, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.

The Respondent’s lack of response to the second cease-and-desist letter sent by the Complainant, is a further indication of the Respondent’s bad faith registration and use of the disputed domain name.

Based on the evidence presented to the Panel, including the late registration of the disputed domain name, the use of the Complainant’s trademark in the disputed domain name and the similarity between the disputed domain name and the Complainant’s mark, and failure to answer the second cease-and-desist letter, the Panel draws the inference that the disputed domain name was registered and used in bad faith.

Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy.

7. Decision

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 <maidanlao.com> be transferred to the Complainant.

Jonathan Agmon
Sole Panelist
Date: June 3, 2015