WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
McDonald’s Corporation v. Eburg City (“Gene C.”)
Case No. D2019-2164
1. The Parties
Complainant is McDonald’s Corporation, United States of America (“United States”), represented by Neal, Gerber & Eisenberg, United States.
Respondent is Eburg City (“Gene C.”), United States, represented by Lake Hills Legal Services, P.C., United States.
2. The Domain Names and Registrar
The disputed domain names <partnersmcd.com>, <storesmcd.com>, and <usstoresmcd.com> are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was originally filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2019. On September 2, 2019, Respondent’s attorney filed an appearance. On September 4, 2019, Complainant filed its Complaint (removing a subdomain from the dispute) with the Center. On September 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 6, 2019, the Registrar transmitted by email to the Center its verification response confirming that 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 12, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2019. Upon request of Respondent, the due date for Response was automatically extended to October 6, 2019, pursuant to the Rules, paragraph 5(b). The due date for Response was further extended to October 11, 2019, pursuant to the Rules, paragraph 5(e). The Response was filed with the Center October 11, 2019.
On October 19, 2019, the Center received a first supplemental filing from Complainant. On November 7, 2019, the Center received a second supplemental filing from Complainant.
The Center appointed Georges Nahitchevansky, Lynda M. Braun, and Martin Schwimmer as panelists in this matter on November 12, 2019. The Panel finds that it was properly constituted. Each member of 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 November 13, 2019, the Center received a third supplemental filing from Complainant. On November 18, 2019, the Panel issued a first procedural order in which the Panel accepted the factual portions of the three supplemental submissions by Complainant and provided Respondent an opportunity to respond by November 25, 2019. Respondent duly filed its supplemental response on November 25, 2019. On December 2, 2019, the Center received a fourth supplemental filing from Complainant.
4. Factual Background
Complainant, McDonald’s Corporation, is in the business of developing, operating, franchising, and servicing a system of restaurants offering quickly-prepared, modestly priced foods and beverages. Complainant’s restaurants feature the name and mark MCDONALD’S. There are currently over 35,000 McDonald’s restaurants around the world. Complainant has made some use of the short form identifier “McD” to refer to Complainant and for some of its services. Complainant owns several trademark registrations for the mark MCD for various goods and services in several jurisdictions around the world. These include, inter alia, a United States registration that issued on April 13, 1976 (No. 1,037,773) for MCD, a Canadian registration that issued on August 22, 2017 (No. TMA979063) for MCD’S, and a European Union registration that issued on September 28, 2010 (No. 008503931) for MCD.
Complainant has also owned the domain name <mcd.com> since 1993. Complainant has used the <mcd.com> domain name for email purposes for its employees and executives. In particular, Complainant has created and assigned email addresses to its employees and executives, personnel in certain company-owned restaurants in the United States and/or franchisee-owned restaurants that have endings such as “@us.mcd.com,” “@us.stores.mcd.com,” and “partners.mcd.com.”
Respondent registered the disputed domain names in July 2019. As evidenced in the Complaint, Respondent has used the disputed domain names with a parked page generated through GoDaddy.com, the Registrar for the disputed domain names. Beginning in August 2019, Respondent wrote Complainant regarding misdirected emails that Respondent had received through the disputed domain names. In a communication dated August 12, 2019, Respondent advised as follows:
“I’ve been registering a lot of domain names with catch-all email accounts. I’m fed up with futilely trying to explain, and trying to be nice, wasting my time and straining my eyesight on the computer. Many months and countless hours have been spent futility trying to explain to others, all for naught. Everything takes time and costs money. (I have no income.)
Basically, the matter involves misdirected emails with sometimes important, private and confidential information.
The Catch-all mailbox allows one to receive e-mails sent to the domain that might be misaddressed or misspelled (for example, Bob@ instead of email@example.com).
The matter involves hundreds – perhaps weekly – of misdirected emails meant for the McDonald’s Partners (and corporate) in which they don’t receive.”
On August 19, 2019, Complainant’s representative wrote to GoDaddy.com, the Registrar to seek to disable the disputed domain names and to obtain a transfer of such. GoDaddy does not appear have taken any action in regards to Complainant’s August 19 letter. Complainant and Respondent then had some direct communications but the matter was not resolved. The disputed domain names currently do not resolve to any active website or web page.
5. Parties’ Contentions
Complainant contends that it owns rights in the mark MCD by virtue of Complainant’s use and registration of the MCD mark many years before Respondent registered the disputed domain names. Complainant also contends that it owns common law rights in the MCD mark on account of Complainant’s use of MCD as a stock ticker symbol and in the name of a mobile application owned by Complainant (“My McD’s”), and because consumers and the trade routinely use and understand MCD as a shorthand reference that refers to Complainant and its services.
Complainant asserts that the disputed domain names are confusingly similar to Complainant’s MCD mark as they each incorporate the MCD mark in its entirety and are based on the endings of email addresses used by Complainant for its employees, personnel in company-owned stores, and franchisees in the United States. In that regard, Complainant maintains that the disputed domain names, which are based on these email address endings used by Complainant, have resulted in potentially confidential emails to be misdirected to Respondent.
Complainant argues that Respondent has no legitimate interest in the disputed domain names as Respondent (i) registered the disputed domain names well after Complainant had obtained rights in the MCD mark and had extensively used the email extensions “@us.mcd.com”, “@partners.mcd.com”, and “@us.stores.mcd.com”; (ii) has not developed any legitimate business relating to or incorporating the MCD mark; (iii) is not commonly known by the MCD name and mark and has no affiliation with Complainant; and (iv) registered the disputed domain names with the intent of receiving misdirected email communications intended for Complainant’s employees and franchisees by setting up “catch-all” email inboxes.
Lastly, Complainant contends that Respondent registered and has used the disputed domain names in bad faith given that Respondent has no rights in the MCD mark and was likely aware of Complainant’s rights in the MCD mark when Respondent registered the disputed domain names that are all based on Complainant’s MCD mark and email extensions. Complainant also argues that Respondent’s bad faith is established by the fact that Respondent registered the disputed domain names to likely obtain misdirected emails intended for Complainant and then by sending emails to Complainant about the misdirected emails received by Respondent and threatening to publicly disclose the matter to media outlets such as the Wall Street Journal and the New York Timesunless Complainant provided some compensation to Respondent for the time spent by Respondent in notifying and redirecting such misdirected emails to Complainant.
Respondent rejects Complainant’s contentions and maintains that Complainant has failed to satisfy the three required elements under paragraph 4(a) of the Policy.
Respondent argues that Complainant has not established rights in the name and mark MCD. In that regard, Respondent asserts that there is no evidence that Complainant has used the name and mark MCD for any of its restaurants anywhere in the United States. Respondent further argues that Complainant’s registration in the United States for MCD is for cleaning products and that Complainant does not currently market or sell any cleaning products under the MCD mark. Respondent also contends that while Complainant’s mobile application was originally called “McD App,” Complainant changed the name of the mobile application in 2016 to “McDonald’s app”. Respondent further contends that the disputed domain names cannot be confused with any websites maintained by Complainant, particularly as there are a number of other parties using the designation “MCD” to refer to themselves or as an abbreviation for things that are unrelated to Complainant, such as “mad cow disease”.
Respondent contends that it has rights and a legitimate interest in the disputed domain names, as Respondent registered the disputed domain names along with two additional domain names, <mcd.us.com> and <mcd.ceo>, for the purpose of creating a “gripe” website criticizing Complainant. Respondent maintains that its gripe website, which can be found at the domain name <mcd.ceo>, is still in the early stages of development and will be updated and expanded in the future. Respondent asserts that the reason the disputed domain names do not currently resolve to Respondent’s gripe website is due to the fact that after Complainant initiated the UDRP, GoDaddy.com, the registrar, deactivated Respondent’s ability to redirect the disputed domain names or to post content at the disputed domain names.
Lastly, Respondent argues that Complainant has failed to prove bad faith registration and use of the disputed domain names by Respondent. In support of that contention, Respondent asserts that it has never asked Complainant for any money for selling, renting, or transferring the disputed domain names and that Respondent is not engaged in any business that could be considered to compete with Complainant and its restaurant services. Respondent also maintains that there is no possibility of website confusion as Complainant does not maintain any active websites using the McD name and mark and Respondent’s gripe website cannot possibly be confused or mistaken for any actual website maintained by Complainant.
C. The Parties’ Supplemental Submissions
Complainant has submitted three supplemental filings on October 19, 2019, November 7, 2019, and November 19, 2019, and Respondent filed its response to these submissions, as allowed by the Panel, on November 25, 2019.
The gist of the primary factual contention in Complainant’s October 19, 2019 supplemental filing is that Respondent registered the domain name <mcd.ceo> on September 4, 2019, five days after the Complaint was first filed by Complainant and two days after Respondent’s attorney submitted an appearance with the Center. Complainant further asserts that on September 5, 2019, Respondent sent an email to Complainant’s executives and franchisees to introduce Respondent’s new website at “www.mcd.ceo”. Complainant notes that many statements on the website at “www.mcd.ceo” mirror statements made by Respondent’s attorney in his appearance on September 2, 2019. Lastly, Complainant alleges that Respondent, whose identity was unknown until after the Complaint was filed, has a number of prior arrest records for a variety of offenses. Complainant contends that such evidence demonstrates a pattern of bad faith conduct by Respondent.
Complainant’s supplemental filing on November 7, 2019 essentially relates to additional communications received by Complainant from Respondent on November 6, 2019, in which Respondent notified Complainant that Respondent had received another misdirected confidential email intended for a McDonald’s employee or franchisee. Complainant’s November 13, 2019 supplemental submission similarly provides another communication received from Respondent on November 11, 2019, forwarding yet another misdirected email that had been received by Respondent and in which Respondent asserted “Please start providing substantial monetary compensation for good deeds that takes … considerable expense, time, effort and labor”.
Respondent’s November 25, 2019 supplemental submission objects to Complainant’s assertions regarding Respondent’s alleged arrest record and argues that such are not only scurrilous and inflammatory but inadmissible in this proceeding. Respondent reiterates that Complainant has no rights in the MCD name and mark and has failed to provide evidence of its use of MCD. Lastly, Respondent contends that Complainant has failed to provide evidence that the disputed domain names infringe upon a registered domain name of Complainant, particularly as Complainant owns no rights in marks that mirror the disputed domain names.
Complainant’s December 2, 2019 supplemental filing references and attaches a November 27, 2019 decision to transfer the subdomain <mcd.us.com> (the subdomain included in the original Complaint filing and subsequently removed) from Respondent to Complainant.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names were registered and are being used in bad faith.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Complainant has provided evidence that it owns valid and subsisting trademark registrations for its MCD mark that issued to registration before Respondent registered the disputed domain names. Complainant has also provided some evidence regarding its use of the MCD mark and that consumers and the trade often refer to Complainant using the MCD name and mark.
With Complainant’s rights in the MCD mark established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the generic Top-Level Domain “.com”) are identical or confusingly similar to Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical or a confusingly similar mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, for purposes of the first element the Panel concludes that the disputed domain names are confusingly similar to Complainant’s MCD mark as each of the disputed domain names fully incorporate MCD. The addition of common terms such as “store,” “partners” or “us” (as an abbreviation for the United States) do not distinguish the disputed domain names. WIPO Overview 3.0, sections 1.7 and 1.8. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s MCD mark and in showing that the disputed domain names are identical or confusingly similar to that trademark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
In this proceeding, Respondent claims that it registered the disputed domain names for a “gripe” website that Respondent is allegedly developing to criticize Complainant. In support of that contention, Respondent has provided copies of pages from a website that Respondent has posted at “www.mcd.ceo” that contains the header “Problems at McDonald’s!” and some bullet points concerning Complainant and the meaning of “McD”. Respondent claims that its “gripe” website is still in the early stages of development and will be updated and expanded in the future.
The Panel has reviewed the evidence submitted by the Parties in this proceeding and concludes that Respondent’s claim of having registered the disputed domain names for an alleged “gripe” website is not only pretextual but likely a post hoc justification created after Complainant filed its original Complaint in this matter on August 30, 2019. WIPO Overview 3.0, section 2.11. In that original Complaint, Complainant listed the three disputed domain names and <mcd.us.com>, a subdomain based on the second-level domain <us.com> that Respondent had registered through CentralNic, the owner of <us.com>. On September 2, 2019, Respondent’s attorney filed an appearance and submitted some initial objections to Complainant’s Complaint, including an objection to the inclusion of the subdomain <mcd.us.com>. On September 4, 2019, Complainant resubmitted its Complaint and dropped the <mcd.us.com> subdomain name from the list of disputed domain names (although Complainant asserted that it was filing a separate claim regarding the <mdc.us.com> subdomain). On the same day, Respondent registered the domain name <mcd.ceo> and at some point thereafter Respondent’s alleged “gripe” website appeared. Indeed, the web pages submitted by Respondent showing the alleged “gripe” website are dated October 11, 2019, further establishing that this “gripe” website was likely one that was created by Respondent after this proceeding was initiated by Complainant.
Further undermining Respondent’s contention that it registered the disputed domain names for a “gripe” website are Respondent’s own communications with Complainant in August 2019, shortly after Respondent registered the disputed domain names. In those communications, Respondent makes no mention whatsoever about an alleged “gripe” website. Instead, Respondent expressly advised that his intent was to register domain names for catch-all email accounts. The fact that Respondent registered disputed domain names that closely tracked several email address endings used by Complainant suggests that Respondent was not only well aware of Complainant and its email usage, but understood that catch-all email inboxes with these disputed domain names could result in possible misdirected emails coming to Respondent. That this is more likely than not is further confirmed by Respondent’s communications to Complainant regarding Respondent’s receipt of misdirected confidential emails, the oblique demands by Respondent for payments to redirect emails to the correct parties, and Respondent’s veiled threats of contacting media organizations if Complainant failed to compensate Respondent in some way. Simply put, Respondent is not pursuing a bona fide or legitimate purpose but is trying to profit from a clever scheme of registering disputed domain names that specifically mirror email address endings used by Complainant.
In view of the evidence before the Panel, it strains credibility that the disputed domain names were in fact registered for an alleged “gripe” website. Apart from the fact that none of the disputed domains even remotely communicate a critical message about Complainant or its restaurant and associated services, it appears quite suspect that the alleged disputed domain names, which track the “@us.stores.mcd.com” and “@partners.mcd.com” email endings used by Complainant, would have been registered for an alleged “gripe” website as opposed to trying to capture inadvertently sent emails that forgot to include the dots used in Complainant’s email endings. Respondent has provided no valid explanation or evidence for why it specifically chose to register these disputed domain names that mirror Complainant’s email address endings with the MCD name and mark
Given that Complainant has established with sufficient evidence that it owns rights in the MCD mark, and given Respondent’s above noted actions, the Panel concludes that Respondent does not have any rights or legitimate interests in the disputed domain names, and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
C. Registered and Used in Bad Faith
Given Respondent’s actions as noted above, it is easy to infer that Respondent’s registration and use of the disputed domain names, which consist of Complainant’s MCD mark and track Complainant’s email endings, has been done in bad faith. It is evident that Respondent was aware of Complainant when Respondent registered the disputed domain names, particularly in view of Respondent’s own admission of having registered the disputed domain names for catch-all email accounts and subsequent demand for compensation from Complainant. The fact that Respondent has now claimed that the disputed domain names were registered for an alleged “gripe” site criticizing Complainant further underscores that Respondent was clearly aware of Complainant and that the MCD mark would likely be understood to refer to Complainant. Given this awareness, Respondent’s actions since registering the disputed domain names can only be seen as having been undertaken in bad faith.
The evidence before the Panel shows that Respondent registered the disputed domain names, that the disputed domain names were used to capture a number of misdirected emails intended for employees or partners of Complainant and that Respondent then tried to profit from such by trying to obtain some form of compensation from Complainant to forward the emails to the correct parties. Although Respondent now asserts that the disputed domain names were registered for an alleged “gripe” website, such contention, as already noted, appears to be pretextual and created after the filing of the Complaint by Complainant. Simply put, the evidence before the Panel, makes its more likely than not that Respondent registered the disputed domain names that are based on Complainant’s MCD mark to profit in bad faith from their connection to Complainant’s email address endings and the misdirected emails that Respondent likely knew it would receive from the catch-all email inboxes Respondent created with the disputed domain names.1
Accordingly, the Panel finds that Complainant succeeds under this element of the Policy.
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 names, <partnersmcd.com>, <storesmcd.com>, and <usstoresmcd.com>, be transferred to Complainant.
Lynda M. Braun
Date: December 3, 2019
1 In reaching its decision, the Panel wants to make clear that it not consider Complainant’s evidence of alleged arrests involving Respondent to be relevant in this proceeding, particularly as this purported evidence does not establish a pattern of bad faith registration and use of domain names based on the marks or names of others. Similarly, the Panel has not considered Complainant’s supplemental filing on December 2, 2019, as it is not relevant to the Panel’s decision in this proceeding.