WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
McDonald’s Corporation v. David Gold
Case No. D2007-1105
1. The Parties
The Complainant is McDonald’s Corporation, Oak Brook, Illinois, United States of America, represented by Neal, Gerber & Eisenberg of Chicago, Illinois, United States of America.
The Respondent is David Gold, Emeryville, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with 007Names, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2007. On August 1, 2007, the Center transmitted by email to 007Names, Inc. a request for registrar verification in connection with the domain name at issue. On August 2, 2007, 007Names, Inc. 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”), 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 August 6, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2007.
The Center appointed William R. Towns as the sole panelist in this matter on September 10, 2007. 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 the widely-known restaurant chain owner. It has used the trademark MCDONALD’S continuously since 1955 and the mark currently is used in relation to over 30,000 restaurants worldwide. Since 1966, the Complainant has also used the trademark RONALD MCDONALD in connection with the restaurant business. Both of these marks are globally recognized and have been registered for many years in the United States as well as numerous other countries around the world.
The Complainant also has provided since 1974, through its licensee Ronald McDonald House Charities, temporary lodging and emotional support services and for families with hospitalized children under the name and mark RONALD MCDONALD HOUSE. The Complainant obtained it first federal registration of the RONALD MCDONALD HOUSE mark in the United States of America in 1982.
The Complainant expends billions of dollars annually on marketing and advertising, and there is strong public awareness of the Complainant’s various marks, including MCDONALD’S, RONALD MCDONALD, and RONALD MCDONALD HOUSE.
The Respondent registered the disputed domain name on or about March 10, 2000, according to the current registrar’s WHOIS records. There is no evidence that the Respondent has made or attempted any use of disputed domain name with an active website since then.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that its MCDONALD’S family of marks, including RONALD MCDONALD and RONALD MCDONALD HOUSE, have achieved an extremely high awareness in the minds of consumers by virtue of the Complainant’s extensive use of the marks for more than fifty (50) years, dozens of United States registrations of the marks, and hundreds of international registrations of the marks in jurisdictions around the world. The Complainant maintains that the fame of it MCDONALD’S mark is indisputable.
According to the Complainant, the disputed domain name is identical to the Complainant’s RONALD MCDONALD HOUSE mark. The Complainant contends that the Respondent has no rights or legitimate interest in the domain name, as the Complainant has not licensed or otherwise authorized the Respondent to use the Complainant’s famous RONALD MCDONALD HOUSE mark. The Complainant further contends that the Respondent has never been commonly known by the disputed domain name, and has made no use of the disputed domain name with an active website, but rather has passively held the domain name since it registration in March 2000.
According to the Complainant, the Respondent must have been aware of the Complainant’s trademark rights in RONALD MCDONALD HOUSE and the Complainant’s MCDONALD’S family of marks when he registered the disputed domain name in March 2000. The Complainant concludes that the Respondent registered the domain name primarily to prevent the Complainant from registering a domain name corresponding to its mark, or that the Respondent otherwise acquired the domain name with the intent of exploiting the Complainant’s mark. This establishes bad faith registration and use under the Policy, according to the Complainant. In addition, the Complainant argues that the Respondent’s provision of false contact information when registering the disputed domain name is evidence of bad faith.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See, Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer are the sole remedies provided to a complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is identical to the Complainant’s RONALD MCDONALD HOUSE mark, in which the Complainant unquestionably has established rights through registration and continuous and extensive use. At a minimum, the Complainant’s mark is entitled to a presumption of validity by virtue of their registration with the United States Patent and Trademark Office. See, EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of rights or legitimate interests in the disputed domain. It is uncontroverted that the Complainant has not licensed or otherwise authorized the Respondent to use the Complainant’s RONALD MCDONALD HOUSE mark, or to register a domain name corresponding to that mark. As a result of the Respondent’s registration of the disputed domain name, the Complainant has been prevented from registering a “.com” domain name reflecting its own mark. There is no indication that the Respondent has been commonly known by the disputed domain name. Instead the record reflects the Respondent’s registration and passive holding for more than seven years of a domain name that is identical to the Complainant’s well-known mark. The domain name currently displays no active webpage or content other than an “Error” message.
The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The circumstances as set forth and documented in the Complaint and its Annexes are sufficiently evocative of cybersquatting to require the Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating its rights to or legitimate interests in the disputed domain name.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a formal response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009.1 In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the safe harbors of paragraph 4(c) of the Policy. Nothing in the record indicates that the Respondent has been commonly known by the disputed domain name, or that the Respondent has made any noncommercial or fair use of the domain name. Further, there is no evidence of the Respondent’s use, or, of any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services as contemplated under paragraph 4(c)(i) of the Policy.
Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
It is a reasonable inference from the circumstances in this case that the Respondent was aware of the Complainant’s RONALD MCDONALD HOUSE mark when he adopted the Complainant’s well-known mark for his domain name, and the Panel so finds. The Respondent’s unexplained failure to make any active use of the disputed domain name for more than seven (7) years does not preclude a determination of bad faith registration and use in the circumstances of this case. As noted in Telstra Corp. Ltd., infra, passive holding of a domain name can be considered as bad faith where it is not possible to conceive of any plausible actual or contemplated legitimate active use of the disputed domain name.
Taking into consideration the circumstances of this case as noted above, this Panel cannot conceive of any plausible actual or contemplated legitimate use of the disputed domain name by the Respondent. In view of the foregoing, the Panel concludes that the registration of the disputed domain name was undertaken in bad faith, and that Respondent is continuing to act in bad faith. See, Telstra Corp. Ltd., infra. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
For all of the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
William R. Towns
Sole Panelist
Dated: September 25, 2007
1 Some panels have held that a respondent’s lack of response can be construed as an admission that a respondent has no rights or legitimate interests in a disputed domain name. See, Do the Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent’s failure to reply. See, Charles Jourdan Holding AG v. AAIM,WIPO Case No. D2000-0403.
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