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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
McDonald’s Corporation v. ZusCom
Case No. D2007-1353
1. The Parties
The Complainant is McDonald’s Corporation, Oak Brook, United States of America, represented by Neal, Gerber & Eisenberg, United States of America.
The Respondent is ZusCom, London, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <ronaldmcdonaldhouse.info> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on September 11, 2007 and hard copy on September 13, 2007. On September 17, 2007, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. Later that same day, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that:
(a) it is the registrar for the disputed domain name;
(b) English is the designated language under the Registration Agreement for the disputed domain name; and
(c) the registration of the disputed domain name is subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy”).
Wild West Domains, Inc.’s email indicated, however, that the registrant of the domain name was in fact “ZusCom”, the administrative, billing, and technical contacts were all for “Brands, Secure SecureBrands@gmail.com” and all had a physical address which was the same as that indicated by Wild West Domains, Inc. for ZusCom.
In view of this information, the Complainant submitted an amendment to the Complaint:
(a) pointing out that the Whois search from Network Solutions included in exhibit 9 to the Complaint identified the domain name as registered to “Registrant name: Secure Brands, “Registrant Organisation: ZusCom”. The same results are achieved by the Whois search facility provided at “www.geektools.com”; and
(b) seeking to amend the name of the Respondent to ZusCom.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of 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, ZusCom, of the Complaint, and the proceedings commenced on September 24, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2007.
The Center appointed a Panelist as the sole panelist in this matter on October 23, 2007. It subsequently became necessary to reconstitute the Panel and the Center appointed this Panel on October 31, 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
According to the Complaint, the Complainant is the world’s largest food service company with more than 30,000 restaurants worldwide and annual revenues of over $20 billion. It has used and promoted in connection with its business the character, Ronald McDonald.
A Federal District Court in the United States of America received evidence showing that Ronald McDonald’s level of recognition at that time among children between the ages of 2 and 8 was 100%, “a figure matched only by Santa Claus”: Quality Inns International Inc. v. McDonald’s Corp. 695 F Supp 198 (D Md 1988).
In 1974, the Complainant started its Ronald McDonald House charity which initially provided temporary lodging and emotional support services for families with hospitalized children. The Ronald McDonald House charity has since expanded to a range of other services and throughout many countries around the world. According to the 2006 Annual Report for the Ronald McDonald House charity (available from the associated website), there are Ronald McDonald House chapters in 50 countries, including some 262 Ronald McDonald Houses in 28 of those countries. There have been Ronald McDonald Houses in Australia since 1981 and in the United Kingdom since 1990, the first being at Guy’s and St Thomas’ in London. Other countries in which there are Ronald McDonald Houses or programs include Canada, France (since 1991), Taiwan, Province of China, Turkey, Italy, the Netherlands and the Russian Federation.
Not much is known about the Respondent, other than the contact details it provided on registering the disputed domain name. It registered the domain name in June 2007.
At the time the Complaint was initiated, the domain name resolved to a website at which the domain name “is parked free, courtesy of Cheapnames.com”. A range of sponsored links or related searches is then listed.
5. Discussion and Findings
First, the Panel finds that the amendment to the Complaint is allowable under paragraph 4(b) of the Rules. As noted above, the Complaint was originally filed against Secure Brands, which at least two Whois searches identify as the “Registrant name”, but which more importantly is the name given as the administrative, technical and billing contacts by the registrant. The Complainant originally sent the Complaint to Secure Brands. The administrative dispute did not formally commence, however, until the Center notified the Respondent: paragraph 4(c) of the Rules. That was done by notification to ZusCom and Secure Brands (as the administrative, technical and billing contact) following the amendment.
Secondly, there has been no Response. The Center has forwarded the Complaint to the Respondent by email and courier to the addresses which the Registrar, WildWest Domains Inc. has confirmed are the correct details for the domain name as registered. The Registration Agreement, by which the Respondent registered the disputed name, obliges the Respondent to keep “current, complete and accurate” the registrant’s name, postal address, e-mail address, voice telephone number and, where available, fax number. Consequently, the Panel is satisfied that the Center has taken all reasonable steps to bring the Complaint to the Respondent’s attention and the Respondent has had an adequate opportunity to put his, her or its case in rebuttal of the Complaint.
In the absence of exceptional circumstances, rules 5(e) and 14(a) of the Rules direct the Panel to decide the dispute on the basis of the Complaint where the Respondent does not submit a Response. This is not a simple “rubber stamping”, however, as rule 15(a) directs the Panel to decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and principles of law that the Panel deems applicable.
Accordingly, under paragraph 4(a) of the Policy the Complainant has the burden of proof in respect of the following three elements:
(i) The domain name 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 in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The Panel deals with each of these elements in turn.
A. Identical or Confusingly Similar
There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to it?
The Complainant asserts a host of rights around the world in the trademarks MCDONALD’S, RONALD MCDONALD, RONALD MCDONALD HOUSE AND RMHC. While the marks listed in exhibits 6 and 7 are for MCDONALD’S (or MCDONALD’S.COM), the Complainant nonetheless has clearly established rights at common law in RONALD MCDONALD HOUSE in a number of countries, including at least the United States of America, the United Kingdom of Great Britain and Northern Ireland, Australia, Canada and New Zealand and RONALD MCDONALD. That is sufficient to satisfy the first part of this inquiry.
The disputed domain name differs from the trademark rights in RONALD MCDONALD HOUSE by the addition of the gTLD, “.info”. That difference can be disregarded for these purposes. See for example Telstra Corporation Ltd v Ozurls
WIPO Case No. D2001-0051, Ticketmaster Corporation v DiscoverNet Inc.
WIPO Case No. D2001-0252, Microsoft Corporation v. J. Holiday Co.
WIPO Case No. D2000-1493.
Accordingly, the Panel finds that the domain name is identical or confusingly similar to the Complainant’s trademark rights in “Ronald McDonald House”.
B. Rights or Legitimate Interests
The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.
Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:
“(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
These are not an exhaustive enumeration of rights or legitimate interests, they are examples only.
In view of the difficulty in disproving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case.
The Complainant has not authorised the Respondent to use the domain name. The domain name has no apparent connection at all with the Respondent’s own name or any business it is operating.
The words “Ronald” and “McDonald” are common English names and the word “House” is a plain English word. Nonetheless, except possibly in the case of an individual named Ronald McDonald, their combination together in the expression “Ronald McDonald House” is not such that people would ordinarily choose unless they were seeking to convey an impression of association with the Complainant’s well known character or charities. Thus, the adoption of the expression by the Respondent calls for explanation and, in the absence of that explanation, the prima facie case established by the Complainant is sufficient to discharge the Complainant’s onus on this head.
Accordingly, the Panel finds that the Complainant has established in the circumstances of this case that the Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
The third requirement that the Complainant must demonstrate to succeed is that the disputed domain name has been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides:
“(b) Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
The Complainant relies on the worldwide fame of its marks to found the basis for a finding of registration and use in bad faith.
The Respondent has not sought to rebut the allegation that the domain name was registered with knowledge of the Complainant’s rights. Bearing in mind that fame, at least in the common law countries mentioned above, and the absence of any obvious connection between the domain name and the Respondent’s name or business, such a denial would be most unlikely to have any credence.
As noted above, the domain name is “parked free” and used to generate sponsored links or “related searches”. Panels have recognised that the use of another’s trademark to generate revenue from Internet advertising can constitute registration and use in bad faith as a classic illustration of the conduct condemned by paragraph 4(b)(iv) of the Policy above. Here, it is not clear that the Respondent benefits from the sponsored and other links instead of the host “Cheapnames.com”. That would not help the Respondent, however, as it would leave the Respondent in no different position to that of the respondent in Telstra Corporation Limited v Nuclear Marshmallows
WIPO Case No. D2000-0003.
In these circumstances, therefore, the Panel finds that the domain name has been registered and used in bad faith.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <ronaldmcdonaldhouse.info> be transferred to the Complainant.
Warwick A. Rothnie
Dated: November 14, 2007