McDonald's Corporation v. The Holy See
Claim Number: FA0304000155458
PARTIES
Complainant
is McDonald's Corporation, Oak
Brook, IL, USA (“Complainant”) represented by Michael G. Kelber of Altheimer
& Gray. Respondent is The Holy
See, Rome, ITALY (“Respondent”) represented by Ari Goldberger of ESQwire.com
Law Firm.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <mcdonaldslovesbabies.com>,
<mcdonaldslovesbaby.com>, <mcdonaldslovesjesus.com>, <mcdonaldsspeakstojesus.com>, <mcdonaldsbaby.com> and <mcdonaldsbabies.com> registered
with I.D.R. Internet Domain Registry Ltd.
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict in serving as Panelists in
this proceeding:
Jeffrey
M. Samuels, Panel Chair
Tom
Arnold, Panelist
David
P. Miranda, Panelist
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on April 23, 2003; the Forum received a hard copy of the
Complaint on April 28, 2003.
On
May 4, 2003, I.D.R. Internet Domain Registry Ltd. confirmed by e-mail to the
Forum that the domain names <mcdonaldslovesbabies.com>,
<mcdonaldslovesbaby.com>, <mcdonaldslovesjesus.com>, <mcdonaldsspeakstojesus.com>, <mcdonaldsbaby.com> and <mcdonaldsbabies.com> are
registered with I.D.R. Internet Domain Registry Ltd. and that the Respondent is
the current registrant of the name. I.D.R. Internet Domain Registry Ltd. has
verified that Respondent is bound by the I.D.R. Internet Domain Registry Ltd.
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On
May 5, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 27,
2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@mcdonaldslovesbabies.com, postmaster@mcdonaldslovesbaby.com,
postmaster@mcdonaldslovesjesus.com, postmaster@mcdonaldsspeakstojesus.com,
postmaster@mcdonaldsbaby.com and postmaster@mcdonaldsbabies.com by e-mail.
A
timely Response was received and determined to be complete on May 27, 2003.
An
Additional Submission was received from Complainant on June 2, 2003. It was
complete and timely.
An
Additional Submission was received from Respondent on June 9, 2003. It was
complete and timely.
On June 10, 2003, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the Forum appointed Jeffrey M. Samuels,
Tom Arnold, and David P. Miranda as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
McDonald's Corporation asserts that it owns all rights, title and interest in
hundreds of trademarks and service marks in the United States and abroad,
including U.S. Trademark Registration No. 743572 for the mark McDONALD'S, as
used in connection with drive-in restaurant services (see Exhibit 2 to complaint),
and U.S. Trademark Registration No. 2,160,744 for the mark McDonald's.com, as
used in connection with computer services, namely providing access to computer
databases in the nature of a computer bulletin board in the field of restaurant
operations and management. See Exhibit 3 to complaint. Complainant further alleges that each of the
disputed domain names is substantially identical or confusingly similar to its
registered marks, differing only in the addition of generic words and/or
phrases and will result in Internet users believing that Complainant hosts,
sponsors, or endorses the content found within the domain names at issue.
With
respect to the issue of whether Respondent has rights or legitimate interests
in the domain names, Complainant alleges that it has no authorized licensee by
the name "The Holy See," which name refers to the supreme Authority
of the Church and the Central Government of the Catholic Church.
Complainant
further notes that Respondent's usage of the disputed domain names is
completely unrelated to the food or restaurant business. Rather, the domain names direct the Internet
user to the domain names washingtonpast.com and thewashingtonpast.com. Each of these domain names is registered to
Respondent and contains information relating to abortion, including the display
of content from the website located at <abortioncams.com>. According to Complainant, Respondent's use
of the domain names in issue to redirect traffic to Web pages displaying
content unaffiliated with Complainant is neither a bona fide offering of goods
and/or services nor a legitimate noncommercial or fair use under paragraphs
4(c)(i) and (iii) of the Policy.
On
the issue of "bad faith" registration and use, Complainant points out
that within days of the registration of the disputed domain names,
Complainant's counsel received an email from "Peter Caramonica
[theholysee@rome.com]" identifying 61 domain names (including the six in
issue in this proceeding) registered in Respondent's name, each of which was structured
in a manner that added generic words or phrases to such well-known marks as
PEPSI and COCA COLA. See Exhibit 11 of
Complaint. The email message, which is written in Italian, includes the
statement "Il primo Reclaim di Emendamento di William Purdy da Thomas di
Avvocato W. Straham." According to Complainant, such statement loosely
translates into English as "The First Amendment Claim of William Purdy by
his attorney, Thomas W. Straham (sic)."
Complainant
asserts that such email message suggests that Respondent is related to William
Purdy. In an earlier civil action
brought against Mr. Purdy in the United States District Court for the District
of Minnesota by The Coca-Cola Company, McDonald's, PepsiCo and The Washington
Post (Civil Action No. 02-1782 ADM/AJB), Mr. Purdy was preliminarily enjoined,
inter alia, from using or registering in the future any domain name that
incorporates and is identical or confusingly similar to Complainant's
registered marks and which does not alert an Internet user to the protest or
critical nature of the website within the language of the domain name itself.
See Exhibits 14 and 15 of Complaint. Mr. Purdy was later found in contempt for
failing to adhere to the terms of the injunction. See Exhibits 16 and 17 of
Complaint. Thomas W. Strahan represented Mr. Purdy in his appeal of the
district court's decision. These facts, Complainant asserts, evidence bad faith
adoption of the disputed domain names.
Complainant
further asserts, in support of its contention of "bad faith"
registration and use, that Respondent supplied false contact information in his
registrations, in violation of the registration agreements. The contact information provided in the
domain name registrations directs one to the Raphael Hotel in Rome, Italy. According to Complainant, it is
"extremely improbable" that Respondent is representing the Holy See
and the Holy See does not maintain residence in a hotel in Rome.
Further
proof of bad faith, Complainant alleges, may be found from the registration of
61 infringing domain names and in the fact that the disputed domain names
direct uses to <washingtonpast.com> and
<thewashingtonpast.com>.
Complainant contends that Respondent is attempting to capitalize on
Complainant's marks to divert Internet users to Respondent's sites, which has
the effect of aiding Respondent's sites and fundraising efforts.
B.
Respondent
In
its Response, Respondent asserts that the disputed domain names are clearly not
identical to Complainant's marks. Nor,
Respondent contends, are they confusingly similar. "Complainant's argument
that consumers would believe that a domain name like <mcdonaldslovesjesus.com>
is affiliated with Complainant is not logical, and it is entirely implausible
that any consumer would even think to type such an obscure phrase in the first
place." Response, p. 4.
Respondent
further alleges that its use of the domain names for the purpose of making a
political statement establishes its legitimate interest under paragraph
4(c)(iii) of the Policy. In support of
its "political statement" argument, Respondent notes that the email
sent to Complainant's counsel expressly refers to the First Amendment, the
domain names themselves carry a political parody statement directly related to
the Purdy case, the top of each disputed website contains a statement in
Italian which, when translated into English, states "the Government of
Washington Past Protected the Unborn," and the operator of the
<abortioncams.com> site, Neal Horsley, filed a declaration stating that
Respondent reaps no economic gain by pointing the disputed domain names to his
website.
According
to Respondent:
Here,
not only is Respondent using the Disputed Domains for the purpose of
criticizing Complainant, but the criticism deals directly with helping to
protect the First Amendment rights of other domain name registrants who seek to
criticize corporations. Respondent
specifically registered the Disputed Domains to protest Complainant's lawsuit
against Mr. Purdy. The Disputed Domains
all point to an anti-abortion web site without any indication that the web
sites are authorized by Complainant.
Respondent's use of the Disputed Domains is, thus, irrefutably for the
purpose of criticizing and for exercising the right of free speech.
Respondent
further argues that there is no basis for finding bad faith under the
applicable Policy. In support of such
assertion, Respondent reiterates its position that the disputed domain names
were registered and have been used solely for the purpose of criticizing
Complainant in connection with the actions taken against Mr. Purdy and contends
that none of the specific bad faith elements set forth in the Policy is
present. More specifically, Respondent
maintains that Respondent: (1) has not offered to sell the domain names to
Complainant; (2) has not prevented Complainant from registering domain names
incorporating its marks; (3) is not a competitor of Complainant; and (4) has
not attempted to confuse users seeking Complainant.
Respondent
also argues that its use of the fictitious name "the Holy See" is not
evidence of bad faith. It contends that
those who wish to criticize large corporations prefer to shield their
identities to avoid personal attacks and that Respondent was very concerned
about the risks of registering the disputed domain names because, at that time,
Mr. Purdy was facing the risk of jail.
With
respect to the registration of 61 domain names, Respondent argues that such
fact does not establish the requisite bad faith because none of the names
prevents Complainant from reflecting its mark in a corresponding domain
name. According to Respondent, the
domain names are completely different from Complainant's marks and Complainant
has registered its mark in a corresponding domain name.
C.
Additional Submissions
In
its "Additional Submission," Complainant argues that the Panel should
not consider the "Response" because it exceeded the ten-page
limitation requirement and failed to respond specifically to the statements and
allegations set forth in the Complaint.
Complainant
further contends, inter alia, that the domain names in issue do not contain any
criticism of Complainant but merely direct the user to an anti-abortion-related
website. It also maintains that the use
of the disputed domain names to redirect traffic to Web pages displaying
anti-abortion content unaffiliated with Complainant is neither a bona fide
offering of goods and/or services nor a legitimate noncommercial or fair use of
the domain names.
Respondent,
in its "Additional Submission," labels as "frivolous"
Complainant's objection to the length of the "Response" and
reiterates its position that the use of a fictitious name was done solely to
protect the anonymity of an individual expressing a political point.
FINDINGS
Preliminarily, the Panel finds that it
may, and should, consider all the evidence submitted
by
the parties. It further concludes that
it should accord no weight to the proceedings brought in the federal district
court against William Purdy and that it is unnecessary to determine whether
Respondent is related to Mr. Purdy[1].
Based
upon its review of all the evidence of record, the Panel finds that: (1) the
disputed domain names are confusingly similar to marks in which Complainant has
rights; (2) Respondent has no rights or legitimate interests in respect of the
domain names; and (3) the domain names were registered and are being used in
bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
Respondent has no rights or legitimate interests in respect of the domain name;
and
(3)
the domain
name has been registered and is being used in bad faith.
The evidence presented clearly
establishes that Complainant, through its U.S. registrations and long use of
the McDONALD'S mark, has rights in the mark.
The more difficult question is whether the domain names in issue may be
considered confusingly similar to the McDONALD'S mark. We conclude that the domain names are
confusingly similar to Complainant's mark.
Each of the disputed domain names
incorporates in full Complainant' mark followed by either a generic or
descriptive term or phrase. In each case, the most distinctive aspect of the
domain name is the term "McDonald's." Under such circumstances, the Panel concludes that the requisite
confusing similarity is established.
See Sony Kabushiki Kaisha v. Inja,
Kil, Case D2000-1409 (WIPO Dec. 9, 2000) ("[n]either the addition of
an ordinary descriptive word … nor the suffix `.com' detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY" and thus paragraph 4(a)(i) of the Policy is satisfied).
The Panel finds that Respondent provided
false contact information in the registration certificates and that such
actions, even though not specifically enumerated in the Policy, may form the
basis for a finding of bad faith registration and use. See Home
Director, Inc. v. Homedirector, Case No. D2000-0111 (WIPO April 11, 2000)
(bad faith found, in part, on the basis of false contact information because it
was used to hide respondent's identity and prevent complainant from linking
respondent's actions in the matter to his action in other cybersquatting matters);
Telstra Corp. Ltd. v. Nuclear Marshmallow,
Case No. D2000-0003 (WIPO Feb. 18, 2000) (false contact information provided
"to ensure that [respondent's] true identity cannot be determined and
communication with it cannot be made" is indicative of bad faith.).
In this case, the applicable registration
agreements required Respondent to provide current, complete and accurate
information. It is clear, however, that
Respondent is not the Holy See and that the Holy See does not reside in a hotel
in Rome.
In attempting to justify its actions,
Respondent contends that it "was very concerned about the risks of
registering the Disputed Domains because, at the time, Mr. Purdy was facing the
risk of jail time for registering domain names incorporating marks owned by
this Complainant." See Response, p. 8.
Given that Respondent's counsel submitted declarations to the effect
that Respondent is not William Purdy, the Panel deems such argument
disingenuous and unpersuasive.
DECISION
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it is Ordered that the <mcdonaldslovesbabies.com>, <mcdonaldslovesbaby.com>, <mcdonaldslovesjesus.com>, <mcdonaldsspeakstojesus.com>, <mcdonaldsbaby.com> and <mcdonaldsbabies.com> domain
names be TRANSFERRED from Respondent
to Complainant.
Jeffrey
M. Samuels
Panel
Chair
Tom Arnold
David P. Miranda
Panelist Panelist
Dated: June 27, 2003
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[1] While Respondent's counsel submitted several declarations to the effect that Respondent is not William Purdy, the Panel declines to afford such declarations any weight.