The Complainant is McDonald’s Corporation of Oak Brook, Illinois, United States of America, represented by Neal, Gerber & Eisenberg, United States of America.
The Respondent is Fundacion Private Whois of Panama, Panama. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2012. On July 16, 2012, the Center transmitted by email to I Corp. a request for registrar verification in connection with the disputed domain name. On July 17, 2012, I Corp. 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 July 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 22, 2012.
The Center appointed Douglas Clark as the sole panelist in this matter on September 3, 2012. 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 a company incorporated in the State of Delaware in the United States of America and the owner of a registration in China for the Chinese character trade mark 麦乐送 (which is transliterated as “mailesong” in Pinyin) dating from March 28, 2010
The disputed domain name was registered on April 23, 2012.
The Complainant brought a very similar complaint in relation to the domain name (McDonald's Corporation v. Private Whois ,WIPO Case No. D2012-0481). The Panel notes that the decision in that case was made on April 26, 2012.
While the true identities of the registrants in both cases were hidden by privacy shields, it is likely that they are the same or related parties. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint:
The trade mark 麦乐送 is the Chinese language version of the Complainant’s McDELIVERY trade mark. The disputed domain name is the phonetic equivalent of McDonald’s 麦乐送 mark and the transliteration of麦乐送into Latin script.
The disputed domain name is confusingly similar to the trade mark麦乐送. The disputed domain name comprises the Pinyin phonetic transliteration in Roman script of the trade mark麦乐送.
The disputed domain name resolves to a website which features numerous trademarks owned by the Complainant. The Respondent is using the disputed domain name to divert Internet users from the Complainant’s websites and generate advertising revenue.
The Respondent has not been licensed or authorised by the Complainant to use its trade marks or to register the disputed domain name.
The Respondent has registered and is using the disputed domain name in bad faith. The Respondent is hosting advertisements on its website, thereby earning income from the diverted traffic. The Respondent is using the disputed domain name primarily for the purpose of intentionally attracting, for commercial gain, Internet users to the website at the disputed domain name, in order to profit from the repute of the Complainant’s trade marks. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
This is a very simple case of domain name hijacking the UDRP was designed to stop. The Panel will therefore only make brief findings. The Panel notes that it agrees with the findings made by the panel in McDonald's Corporation v. Private Whois ,, supra. A. Identical or Confusingly Similar
The disputed domain name is identical to the pinyin transliteration of 麦乐送. It is well established by various UDRP cases that domain names comprising phonetic transliterations of foreign language trade marks are confusingly similar to such trade marks. See e.g. 丹佛斯有限公司, Danfoss A/S v. 郑功乾, Zhenggongqian,WIPO Case No. D2011-2243; Danfoss A/S v. d7r9e1a1m/淄博丹佛斯测控仪表有限公司,WIPO Case No. D2007-0934.
The Panel finds that the disputed domain name is confusingly similar to the trade mark 麦乐送.
The first element of the UDRP is made out. B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint to assert any rights or legitimate interests. None of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.
Since the Complainant has made out a prima facie case that the Respondent has not rebutted, the Panel finds that the second element of the UDRP is made out. C. Registered and Used in Bad Faith
The Panel also finds that the disputed domain name has been registered in bad faith and is being used in bad faith.
This case falls within paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
(iv) “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The third element of the UDRP is made out. 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 be transferred to the Complainant.
Douglas Clark
Sole Panelist
Dated: September 20, 2012
Full & Egal Universal Law Academy