The Complainant is McDonald's Corporation of Oak Brook, Illinois, United States of America ("United States"), represented by Reed Smith LLP, United States.
The Respondent is Whois Privacy Protection Service by VALUE DOMAIN of Osaka, Japan / Axelight co., Ltd., of Kyoto, Japan. 2. The Domain Name and Registrar
The disputed domain name is registered with GMO Internet, Inc. d/b/a Discount-D and O (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 26, 2016. On January 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 28, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 29, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on February 1, 2016.
On January 29, 2016, the Center notified the Parties in both English and Japanese that the language of the Registration Agreement for the disputed domain name was Japanese. On February 1, 2016, the Complainant requested for English to be the language of the proceeding, to which the Respondent did not replied.
On February 9, 2016, the Complainant requested a suspension of the administrative proceeding for 30 days in order to explore a settlement. The administrative proceeding was suspended on February 9, 2016. On March 9, 2016 the Complainant requested re-institution of the proceeding. On March 10, 2016, the proceeding was reinstituted.
The Center verified that the Complaint together with the amended 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, both in English and Japanese, and the proceeding commenced on March 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 6, 2016. The Respondent did not submit any response. Accordingly, the Center notified the parties about the commencement of panel appointment process on April 7, 2016.
The Center appointed Keiji Kondo as the sole panelist in this matter on April 21, 2016. 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.
The Center notified the parties on April 21, 2016 that the extended Decision due date would be May 12, 2016.
The Panel, considering the Complainant's request (which demonstrated the Respondent's capacity to communicate in English) and absence of response from the Respondent, has exercised his authority to conduct the proceeding in English. 4. Factual Background
The Complainant adopted, and has continuously been using since at least as early as 1974, the Complainant's RMHC and RONALD MCDONALD formative trademarks (hereinafter the "Marks"). Among others, RMHC was registered on August 31, 1999 in the United States for charitable fundraising services. The Complainant currently owns more than 500 trademark registrations for the Marks in more than 100 countries around the world, including but not limited to registrations in the United States and Japan.
Additionally, the Complainant and its licensed affiliates own and operate more than 150 domain names comprised of the RMH ("Ronald McDonald House") and RMHC ("Ronald McDonald House Charities") acronyms, which the Complainant and its licensed affiliates use in connection with more than 600 Ronald McDonald House Charities programs in 60 different countries and regions around the world. Since 1974, it has been standard practice for the Complainant and its licensed affiliates to register domain names comprised of the RMH and RMHC acronyms along with a geographic descriptor that represents the city, state, country, region, or territory in which the local chapter, house, Family Room, or Care Mobile is located. Among others, is used in connection with Ronald McDonald House of Houston, and is used in connection with Ronald McDonald House of Dallas.
As early as 1966, the Complainant began to use the RONALD MCDONALD mark in connection with its food products and restaurant services. However, the Complainant's success and its use of the Marks are not limited to the food service area. The Complainant provides a wide variety of other goods and services under the Marks through its wholly-owned subsidiaries, independent third party franchisees, and licensed affiliates. For instance, since 1974, the Complainant has provided through its licensee, Ronald McDonald House Charities: (1) temporary lodging and emotional support for families with hospitalized children; (2) charitable fundraising services; (3) mobile healthcare services; (4) grants to non-profit organizations who focus on providing access to health care; and (5) educational scholarships to students in need under the Marks. Today, RMHC operates 334 Ronald McDonald Houses, 187 Ronald McDonald Family Rooms, and 50 Ronald McDonald Care Mobiles.
The disputed domain name was registered on January 20, 2014. 5. Parties' Contentions A. Complainant (a) The disputed domain name is identical or confusingly similar to the Complainant's Marks
The disputed domain name incorporates the acronym RMH in its entirety, and, as such, creates sufficient similarity between the Complainant's RMHC mark and the disputed domain name to render it confusingly similar. In fact, the only difference between the disputed domain name and the Complainant's registered RMHC mark is the omission of the letter "c" and the addition of the geographic descriptor, "Galveston". The addition of "Galveston" actually adds to the confusion as one of the Complainant's Ronald McDonald Houses is actually located in Galveston, Texas. (b) The Respondent has no rights or legitimate interests in the disputed domain name
The Respondent, on the other hand, has no rights or legitimate interests in the disputed domain name. Indeed, the Respondent is not referred to or commonly known by the disputed domain name and has no legal relationship with the Complainant or its licensees. Nor does the Respondent have any identifiable history of using the disputed domain name in connection with a bona fide offering of goods or services. In fact, to the best of the Complainant's knowledge, the Respondent has not developed any legitimate business relating to or incorporating the Marks. Furthermore, the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name. The website associated with the disputed domain name contains graphic imagery and promotes sexually explicitly services, namely, paid phone and webcam sex chats. (c) The disputed domain name has been registered and is being used in bad faith
Given the fame and widespread use of the Marks, any use by the Respondent of the disputed domain name would constitute an infringement of the Complainant's trademark rights. Bad faith can be presumed in that the Respondent was aware of the Complainant's well-known marks and claim of rights therein. Further, the Respondent has acted in bad faith pursuant to paragraph 4(b)(iv) of the Policy by operating a domain name that incorporates the Marks and a geographic descriptor that closely corresponds to the Complainant's Ronald McDonald House in Galveston, Texas, for commercial gain. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has a trademark right in RMHC. The Complainant and its licensed affiliates have registered many domain names comprised of "rmhc" and a geographical descriptor, for example, . It also has rights in RONALD MCDONALD HOUSE. Although the Complainant does not have a trademark registration for "RMH", an acronym of "Ronald McDonald House", the Complainant and its licensed affiliates also have registered domain names comprised of "rmh" and a geographical descriptor, for example, .
The disputed domain name consists of "rmh", "galveston" and the generic Top-Level Domain (gTLD) ".org". "Galveston" is a city in Texas, where one of the Complainant's Ronald McDonald Houses is located. The Complainant's Ronald McDonald Houses are located also in Houston, Texas and Dallas, Texas, in connection with which domain names and are respectively used.
However, use of either "rmh" and "rmhc" in connection with the Complainant's Ronald McDonald Houses is rather arbitrary. For example, is used in connection with the Complainant's Ronald McDonald House in Temple, Texas.
Under the circumstances described above, whether the acronym preceding the geographic description is "rmh" or "rmhc" would give little impact to Internet users seeking information about the Complainant's Ronald McDonald Houses. Indeed, noting the Complainant's frequent use of "rmh" to denote the Complainant's activities, any Internet user seeing the disputed domain name would both recognize the Complainant's Mark and easily believe that "rmhgalveston" refers to the Complainant's Ronald McDonald House in Galveston, Texas. See, Berwin Leighton Paisner LLP v. VistaPrint Technologies Limited,WIPO Case No. D2015-1826.
For the reasons mentioned above, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
The website associated with the disputed domain name contains graphic imagery and promotes sexually explicitly services, namely, paid phone and webcam sex chats. It has nothing remotely imaginable to the Panel to do with any goods or services the acronym of which could be "rmh". No contents of the website, or the identity of the Respondent, even remotely relates to the city of Galveston. Therefore, the Panel concludes that the Respondent is not referred to or commonly known by the disputed domain name and has no legal relationship with the Complainant or its licensees. Nor does the Respondent have any identifiable history of using the disputed domain name in connection with a bona fide offering of goods or services. Furthermore, the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.
Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The website associated with the disputed domain name contains graphic imagery and promotes sexually explicitly services, namely, paid phone and webcam sex chats. There is no obvious reason that the three-letter acronym "rmh" is used in connection with the website. Nor is there any reason for reference to the city of Galveston. It is easily inferred from the website itself that the Respondent is using the disputed domain name merely to attract Internet users on the basis of the Complainant's Mark.
Moreover, considering that the Complainant's charitable activities relating to its Ronald McDonald House are well-known among the Internet users, who may be users of the Complainant's Ronald McDonald Houses or donators to the charitable activities, the Panel concludes that the Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
Accordingly, the Panel concludes that the disputed domain name was registered and has been used in bad faith. 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.
Keiji Kondo
Sole Panelist
Date: May 12, 2016
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