WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

McDonald Jones Homes Pty Limited v. Michael Midkif

Case No. D2020-1839

1. The Parties

The Complainant is McDonald Jones Homes Pty Limited, Australia, represented by K&L Gates, Australia.

The Respondent is Michael Midkif, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <mcdonaldjoneshomes-au.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2020. On July 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 2020, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 1, 2020.

The Center appointed David Taylor as the sole panelist in this matter on September 15, 2020. 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 an Australian company, established in 1987, engaged in designing and building homes. For use in connection with its activities in the construction industry, the Complainant has registered, inter alia, the following trademarks:

- Australian Trademark Registration No. 1445896, MCONALD JONES HOMES, registered on December 7, 2012; and

- Australian Trademark Registration No. 1830179, MCDONALD JONES HOMES, registered on October 5, 2017.

The Complainant is also the registrant of the domain name <mcdonaldjoneshomes.com.au>, which resolves to the Complainant’s consumer-facing website.

The disputed domain name was registered on September 17, 2019. At the time of filing the Complaint, the disputed domain name resolved to a website (the “Respondent’s website”) that reproduced much of the content of the Complainant’s website available at “www.mcdonaldjoneshomes.com.au” in September 2019. The Respondent’s website included links to the Complainant’s social-media pages, as well as to the Complainant’s customer portal.

On July 8, 2020, the Complainant sent a cease-and-desist letter to the Respondent by email requesting transfer of the disputed domain name. The Respondent did not reply to the Complainant’s letter.

5. Parties’ Contentions

A. Complainant

The Complainant asserts rights in the MCDONALD JONES HOMES trademark. The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s trademark, in that it shares the same key features as the Complainant’s trademark, and is arranged in the exact same way as the phrase comprising the Complainant’s trademark.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that the Respondent is not making use of the disputed domain name in connection with any bona fide offering of goods or services. Rather, the Respondent has created a website at the disputed domain name that is nearly identical to the Complainant’s website, in an attempt to pass itself off as the Complainant. The Complainant asserts that the Respondent’s website makes use of copyright protected content (text and images) that has been taken from the Complainant’s website. The Complainant argues that the Respondent is using the disputed domain name to divert consumers from the Complainant’s website in order to mislead them into providing their personal information and potentially making payments to the Respondent. The Complainant submits that the Respondent is not commonly known by the disputed domain name, nor is the Respondent making any legitimate noncommercial or fair use of the disputed domain name.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. The Complainant notes that the disputed domain name was registered some eight years after the Complainant filed for its trademark, and asserts that the disputed domain name was registered with knowledge of the Complainant and its rights in the MCDONALD JONES HOMES trademark. The Complainant asserts that the disputed domain name hosts a fake website that is impersonating the Complainant, and that is attempting to divert business from the Complainant. The Complainant submits that by registering and using the disputed domain name, the Respondent has attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the services offered therein.

The Complainant requests transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

In order to prevail in its Complaint, the Complainant is required to prove, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark 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 was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has established rights in the MCDONALD JONES HOMES trademark by virtue of its registration and use, the details of which are provided in the factual background section above.

The disputed domain name comprises the Complainant’s MCDONALD JONES HOMES trademark in its entirety, omitting the spaces, which are incapable of representation in a domain name per se, together with the letters “au”, ostensibly as a reference to Australia, separated from the Complainant’s trademark by a hyphen, under the generic Top-Level Domain (“gTLD”) “.com”.

Prior UDRP panels have consistently held that where a complainant’s trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element; see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

The Panel finds that the addition of the element “-au” does not prevent a finding of confusing similarity with the Complainant’s trademark, which is clearly recognizable as the leading element of the disputed domain name. The gTLD “.com” may be disregarded for the purposes of comparison under the first element; see WIPO Overview 3.0, section 1.11.1.

The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. The Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

As shown in screen captures produced in evidence by the Complainant, the disputed domain name has been used to resolve to a website that appears to have copied substantial portions of text and images from the Complainant’s website. The Respondent does not appear to have any connection with the Complainant, and there is no suggestion that the Respondent has in any way been authorized to make use of the Complainant’s trademark. The Panel infers that the Respondent’s use of the disputed domain name evidences an attempt on the part of the Respondent to mislead Internet users into believing that the Respondent’s website was operated by or otherwise affiliated with the Complainant. Prior UDRP panels have categorically held that use of a domain name for illegal activity (e.g., impersonation, passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent. The Panel does not consider the Respondent’s use of the disputed domain name to amount to a bona fide offering of goods or services, as contemplated by paragraph 4(c)(i) of the Policy.

The Panel finds that Respondent cannot legitimately claim to be commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. Nor has the Respondent made any legitimate noncommercial or fair use of the disputed domain name pursuant to paragraph 4(c)(iii) of the Policy.

Despite being duly notified of the present proceeding, the Respondent has not come forward to oppose the Complainant’s case against it. In the circumstances, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant’s trademark pre-dates the registration of the disputed domain name by several years. The disputed domain name comprises the Complainant’s trademark in its entirety, together with the element

“-au”, which may be interpreted as a reference to Australia, where the Complainant is located. Not only is the disputed domain name confusingly similar to the Complainant’s trademark – it also closely resembles the Complainant’s domain name <mcdonaldjoneshomes.com.au>. Moreover, it is clear, from the contents of the Respondent’s website, that the Respondent had the Complainant in mind when registering the disputed domain name.

By reproducing the contents of the Complainant’s website from September 2019 – the time at which the disputed domain name was registered – the Respondent has attempted to mislead Internet users into believing that the Respondent’s website was either operated by or otherwise affiliated with the Complainant. Prior UDRP panels have held that given that the use of a domain name for per se illegitimate activity, such as impersonation of a complainant, can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith; see WIPO Overview 3.0, section 3.1.4. In the circumstances, the Panel cannot conceive of any legitimate reasons on the part of the Respondent for registering the disputed domain name, or for creating such a website. The Panel considers it is more likely than not that the Respondent registered the disputed domain name in an opportunistic attempt to mislead Internet users, and to capitalize on the Complainant’s trademark rights by creating a likelihood of confusion with the Complainant’s trademark and domain name.

For reasons set out above, the Panel finds that the disputed domain name was registered and is being used in bad faith. The Complainant has satisfied the requirements of 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 <mcdonaldjoneshomes-au.com> be transferred to the Complainant.

David Taylor
Sole Panelist
Date: September 30, 2020