McDonald’s Corporation v. Hello There
Claim Number: FA1910001866967
Complainant is McDonald’s Corporation (“Complainant”), represented by Michael G. Kelber of Neal, Gerber & Eisenberg LLP, Illinois, USA. Respondent is Hello There (“Respondent”), represented by Richard L. Pope, Jr. of Lake Hills Legal Services PC, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mcd.us.com>, registered with NameSecure L.L.C..
The undersigned certify that they have acted independently and impartially and respectively to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Sandra J. Franklin, David Einhorn and Aaron Newell (chair) have been appointed as Panelists.
Complainant participated in the mandatory CentralNic Mediation. Mediation was unsuccessful and terminated.
Complainant submitted a Complaint to the Forum electronically on October 15, 2019; the Forum received payment on October 15, 2019.
On October 16, 2019, NameSecure L.L.C. confirmed by e-mail to the Forum that the <mcd.us.com> domain name is registered with NameSecure L.L.C. and that Respondent is the current registrant of the name. NameSecure L.L.C. has verified that Respondent is bound by the NameSecure L.L.C. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with CentralNic Dispute Resolution Policy (the “CDRP Policy”).
On October 17, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 6, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@mcd.us.com. Also on October 17, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on November 6, 2019.
The Complainant filed an additional submission on November 13, 2019. There are no indications that the submission does not comply with the Supplemental Rules.
On November 15, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Aaron B. Newell, David A. Einhorn and Sandra J. Franklin as Co-Panelists.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts that:
i) it is a restaurant business with a significant reputation in the United States and internationally;
ii) it owns registered rights in the trademark McD or stylized marks containing this term as the dominant textual element;
iii) it owns common law rights in the United States in the trademark McD;
iv) it has owned the domain name mcd.com since 1993 and all of its employees and executives in the United States are assigned e-mail addresses at this domain name but with “US” at the third or fourth level, ie [name]@us.mcd.com or [name]@us.stores.mcd.com. E-mail addresses structured this way have been used within its business for over fifteen years;
v) in addition to the domain name at issue, Respondent also registered the domain names partnersmcd.com, storesmcd.com, usstoresmcd.com in July 2019. Complainant filed a UDRP against these domain names and shortly after Respondent registered mcd.ceo, erected a site at mcd.ceo purporting to include grievances about Complainant, and redirected the subject domain name mcd.com.us and partnersmcd.com, storesmcd.com, usstoresmcd.com to mcd.ceo;
vi) Respondent’s domain name <mcd.us.com> can be confused with Complainant’s use of us.mcd.com and Respondent registered the Disputed Domain Name with the intent of receiving (and claims to have received) misdirected e-mail communications intended for McDonald’s employees and executives;
vii) Respondent has attempted to leverage the alleged misdirected e-mails by issuing threats to Complainant and suggesting that he should be compensated financially for dealing with the e-mails;
viii) Respondent has used a fictitious name on the Whois record for the <mcd.us.com> domain name;
ix) Respondent’s conduct summarized above is evidence of bad faith use and registration in respect of the <mcd.us.com> domain name;
x) based on Respondent’s conduct as summarized above, and because Respondent has never been known by “MCD”, has no affiliation with Complainant, and has no trademark rights in “MCD”, Respondent has no legitimate interest in the domain name.
B. Respondent
Respondent asserts that:
i) its name is “Gene Camarata a/k/a Hello there”;
ii) Complainant’s alleged rights in its US trademark registrations for or containing McD are invalid and/or irrelevant, there is no material evidence of use of Complainant’s alleged rights in jurisdictions outside of the United States, none of Complainant’s alleged trademark rights are likely to be confused with the domain name at issue;
iii) the term “MCD” has at least twenty-two different meanings;
iv) all of the MCD-formative domain names registered by Respondent were registered for the purpose of establishing a grievance or “gripe” website criticizing the Complainant, which website was eventually erected at mcd.ceo, to which <mcd.us.com> redirects;
v) Respondent has a legitimate interest in the <mcd.us.com> domain name given that it redirects to the mcd.ceo gripe site;
vi) Respondent “has not asked Complainant for any money for selling, renting or transferring the disputed domain names”;
vii) Respondent is not offering any products or services at the various registered MCD-formative domain names.
C. Additional Submissions
Respondent did not file Additional Submissions.
Complainant filed Additional Submissions reiterating the validity and relevance of the trademark rights invoked in the Complaint.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the CDRP Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
While certain Panels have entertained arguments regarding the enforceability of registered trademark rights in their assessment under Policy Paragraph 4(a)(i), in this case the Complainant has established that in the United States, Canada, the European Union, Japan, Malaysia, Thailand and Ukraine it owns registered rights in the term McD and/or McD’s.
Given the Respondent’s assertions in respect of the validity of the registrations, it bears mentioning that one of the US registrations was successfully renewed with a specimen of use in 2016, and at least two of the registrations outside of the US would, in their respective territories, not yet be subject to a use requirement.
Complainant’s marks are confusingly similar to the disputed domain name which, aside from the extension “.us.com” (which provides no distinguishing matter) is comprised only of “MCD”.
Complainant succeeds under 4(a)(i).
The Panel accepts that the Respondent is not authorized to use Complainant’s McD trademark rights, is not commonly known by any name incorporating “MCD” and is not in any way commercially affiliated with Complainant. Complainant has successfully shifted the burden to the Respondent to demonstrate its rights or legitimate interests in the domain name.
In this regard, the intention to establish and/or the establishment of a gripe site is the Respondent’s primary argument under 4(a)(ii). While there is evidence of a gripe site, this site was not established at the disputed domain name but, rather, a different domain name, and in any event was not established until after Respondent would have had notice of Complainant’s UDRP D2019-2164 against its domain names partnersmcd.com, storesmcd.com, usstoresmcd.com.
Further, Respondent has failed to provide any compelling evidence of preparations for a gripe site (at the disputed domain name or otherwise) pre-dating its awareness of the Complainant’s objections to its conduct.
In any event, Panels have frequently found that the right to criticize does not necessarily extend to registering and using a domain name that is identical or confusingly similar to the Complainant’s trademark. Quite simply, the registration and use of a highly-confusing domain name or one that could be used to impersonate the Complainant is unnecessary for the purposes of expressing criticism or grievance and, therefore, very difficult to justify under the Policy on the basis of free speech or valid non-commercial use. Rather, such conduct becomes primarily commercial in nature by virtue of its potential and likely intended impact on the function of the Complainant’s trademark.
Accordingly the Panel gives little weight to the Respondent’s assertions regarding a gripe site and they do not assist the Respondent.
Rather, as outlined in the section below on bad faith use and registration, evidence filed by Complainant demonstrates that Respondent has in fact used the domain name to intercept e-mails intended for the Complainant. In doing so, Respondent has, for personal gain, attempted to leverage the domain name’s potential to be confused with domain names owned and used by the Complainant.
Accordingly, Respondent does not have rights or a legitimate interest in the domain name. Complainant succeeds under 4(a)(ii).
With its Complaint the Complainant provided copies of e-mails sent from Respondent’s e-mail address to numerous individuals employed with Complainant. In those e-mails Respondent alleges to have set up a “catch-all” e-mail account at the disputed domain name and to have received at this account misdirected e-mails intended by their senders to be received by the Complainant.
The Respondent’s e-mails also contain threats to the Complainant and a suggestion that Respondent might send invoices to Complainant “at $500.00 per hour”.
From these e-mails Complainant might reasonably conclude that Respondent is seeking to obtain some kind of financial benefit in connection with, or by leveraging, its registration of the disputed domain name.
The disputed domain name therefore appears to be used as an avenue to make unsolicited approaches to the Complainant, to access and engage with the Complainant’s personnel and, in turn, generate some kind of financial benefit for Respondent.
This amounts to abuse of the disputed domain name and Complainant’s MCD trademark rights, and dispels the Respondent’s arguments that the domain name does not operate as a direct reference to the Complainant. The Panel considers it clear that the domain name was registered by the Respondent in order to target the Complainant and create confusion with e-mail addresses used by the Complainant in its day-to-day business, and to do so for the personal gain of the Respondent.
The domain name was registered or used in bad faith. Complainant succeeds under 4(a)(iii).
Having established all three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mcd.us.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, David Einhorn and Aaron Newell, Panelists
Dated: 27 November 2019
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