1.1 The Complainant is McDonald’s Corporation, United States of America (“United States”), represented by Reed Smith LLP, United States.
1.2 The Respondent is Domain Administrator, See PrivacyGuardian.org, United States / Saimi Tan Salim Tan, Malaysia. 2. The Domain Name and Registrar
2.1 The disputed domain name 3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 19, 2020. On March 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 19, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 24, 2020 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 March 29, 2020. 3.2 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”). 3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 27, 2020. 3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on May 1, 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 4.1 The Complainant is the well-known restaurant operator that needs little introduction. However, it is also associated with a number of entities that provide charitable services under the “Ronald McDonald House” name and variants of that name. 4.2 The Complainant owns various marks that comprise, incorporate or are variants of the “Ronald McDonald House” name. They include the following: (i) United States registered trade mark No. 1,201,031 for the word mark RONALD MCDONALD HOUSE filed on August 11, 1980 and registered on July 13, 1982 in classes 16 and 42; (ii) United States registered trade mark No. 2,063,024 for the word mark RONALD MCDONALD HOUSE CHARITIES filed on April 11, 1996 and registered on May 20, 1997 in class 36; and (iii) United States registered trade mark No. 2,274,282 for the word mark RMHC filed on July 6, 1998 and registered on August 31, 1999 in class 36. This mark claims a first use of January 1, 1996. 4.3 These marks are licensed to the various entities that provide various charitable services under those marks. 4.4 The Complainant and its licensees have also registered a large number of domain names used for websites for the various charities involved. These include 4.5 The Domain Name was first registered on October 6, 1998. In about October 1999 the Domain Name was acquired by the Complainant (or perhaps its licensee in Ann Arbor). However, the Domain Name was inadvertently allowed to lapse on or around June 21, 2017. As a consequence, it was acquired by the Respondent. 4.6 The Domain Name has been used for a website purports to be the page for a hospital and medical practice with the name “RMH Ann Arbour” based in Illinois, with that name appearing at the top of each webpage. However, this does not appear to describe any real hospital or medical practice. The address provided on the website is a false, none of the doctors identified on the website appear to exist and of the two telephone numbers provided, one is not a working number and the other if answered at all connects to a telephone answering machine. At the foot of each page of the website is the copyright notice “© 2020 Ronald Mcdonald House of Ann Arbour Hospital”. The “blog” page of the website has also displayed what appear to be two small third party advertisements for the “Medical University of the Americas”. 4.7 That website continues to operate as at the date of his decision. 5. Parties’ Contentions A. Complainant 5.1 The Complainant contends that the Domain Name is confusing similar to its “RMH” and RMHC marks in that it comprises the term “rmh” combined with a geographical descriptor. Reference is also made to the copyright notice at the bottom of the page of each website. The Complainant further relies upon the decision in its favour in McDonald’s Corporation v. Whois Privacy Protection Service by VALUE DOMAIN / Axelight co., Ltd.,WIPO Case No. D2016-0161 in relation to the domain name 5.2 The Complainant further claims that the Domain Name has been registered for the sole purpose of profiting off the goodwill, renown, and reputation of the Complainant and its marks by diverting Internet users to a website that promotes non-existent or fraudulent medical services and to generate advertising revenue. This is said to demonstrate that the registrant does not have any legitimate rights or interest in the Domain Name and that the Domain Name was registered and has been used in bad faith. B. Respondent 5.3 The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response. 6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that: (i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and (iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)). 6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”. A. Identical or Confusingly Similar 6.4 The Complainant refers to and appears to rely upon what it describes as its “RMH” mark. However, it has no registered mark for that term and although there is a claim of common law rights in its “Marks”, this appears to be little more than an aside in the part of the Complaint that deals with the question of rights and legitimate interests. “Marks” is also a defined term in the Complaint which covers a very large number of marks and names. Given this, it is convenient to approach this aspect of the Policy by reference to the claims of confusing similarity to the RMHC mark. The Complainant undoubtedly the owner of United States registered trade mark rights in that term. 6.5 In order to satisfy this first element of the Policy it is usually sufficient for a complainant to show that the relevant mark is “recognizable with the disputed domain name”; as to which see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Here the Domain Name can only be sensibly read as the letters “rmh” combined with the geographical indicator “Ann Arbor” and the “.org” TLD. “Rmh” comprises only three letters of the RMHC mark and the shorter a mark, the more significant is likely to be any difference between it and the corresponding element of the disputed domain name. Nevertheless, the Panel accepts that the mark, even abbreviated to its first three letters, is recognisable in the Domain Name. 6.6 If there were any doubt in this respect, this is also the case where the subjective intention of the registrant is relevant to the objective comparison between the mark and Domain Name (as to which see RapidShare AG and Christian Schmid v. majeed randi,WIPO Case No. D2010-1089 and the last paragraph of section 1.7 of the WIPO Overview 1.7). As the Panel goes on to discuss late on in this decision, it has concluded that the Domain Name was acquired and used by the Respondent to impersonate the Ann Arbor licensee of the RMHC mark. That is a factor that supports a finding that the mark and Domain Name are “confusingly similar” (as that term is understood under the policy). 6.7 Finally, the Panel notes that its finding of confusing similarity in this case is consistent with the decision in McDonald’s Corporation v. Whois Privacy Protection Service by VALUE DOMAIN / Axelight co., Ltd., supra that the Complainant’s RMHC mark was similar to the domain name 6.8 It follows that the Complainant has successfully made out the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests and Registered and Used in Bad Faith 6.9 It is usual for panels under the Policy to consider the issues of rights or legitimate interests and registration and use in bad faith in turn. However, in a case such as this it is more convenient to consider those issues together. 6.10 The Panel accepts that the Domain Name has been registered and used with the intention of furthering some fraudulent scheme whereby the Respondent has sought to impersonate the Complainant’s Ann Arbor licensee. The Complainant has persuaded the Panel that the website falsely promoted a hospital and doctors that do not exist. Further, although the website operating from the Domain Name does not obviously offer the same charitable services as that licensee, the text of the copyright notice appearing on each page of the website reads: “© 2020 Ronald Mcdonald House of Ann Arbour Hospital”. This makes it clear beyond any doubt that the letters “rmh” in both the domain name and the text of the website is a reference to chartable services provided under the Ronald McDonald House and RMHC names. Further, the reference to “Ann Arbour”, even though misspelt, can only sensibly be understood as a reference to the Complainant’s “Ann Arbor” licensee. “Ann Arbor” is spelt correctly in the Domain Name itself and until recently the Domain Name was actually used by that particular licensee. 6.11 The exact reason why the Respondent has set up this website is not clear. The Complainant contends that it is to display advertising for financial gain. Maybe that is true, although the Panel is frankly sceptical. The advertisement are relatively small and appear on one page only of the website. 6.12 However, ultimately it does not matter. There is no right or legitimate interest in holding a domain name for the purpose of engaging in fraudulent impersonation. Further, the registration and use of a domain name for such a purpose involves registration and use in bad faith (see, for example, Vestey Group Limited v. George Collins,WIPO Case No. D2008-1308). Such activity is a clear-cut example of bad faith registration and use of a domain name, even if it does not obviously fall within the scope of any of the non-exhaustive list examples of circumstances indicating bad faith registration and use set out in paragraph 4(b) of the Policy. 6.13 In the circumstances, the Panel has no hesitation in finding that the Complainant has made out the requirements of paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. 7. Decision 7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name Matthew S. Harris
Sole Panelist
Date: May 6, 2020
Full & Egal Universal Law Academy