WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
McD Asia Pacific, LLC v. Nicholas Zivadinovic (Sole Trader) / Zed Creative
Case No. DAU2015-0001
1. The Parties
The Complainant is McD Asia Pacific, LLC of Singapore, represented by Spruson & Ferguson Lawyers, Australia.
The Respondent is Nicholas Zivadinovic (Sole Trader) / Zed Creative, of Gold Coast, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <mcdelivery.com.au> (the “Domain Name”) is registered with Web Address Registration Pty Ltd.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 5, 2015. On January 5, 2015, the Center transmitted by email to Web Address Registration Pty Ltd a request for registrar verification in connection with the Domain Name. On January 6, 2015, Web Address Registration Pty Ltd transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing the contact details. The Complainant submitted an amended Complaint on January 7, 2015 at the invitation of the Center to correct an administrative error in the Complaint.
The Center verified that the amended Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 of the Complaint, and the proceedings commenced on January 9, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was January 29, 2015. The Respondent sent an email to the Center on January 28, 2015.
The Center appointed Nicholas Smith as the sole panelist in this matter on February 12, 2015. 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
The Complainant, by way of itself, its predecessor in title and its franchisees, owns and operates the chain of McDonalds Family Restaurants in Australia. In 2013 certain McDonald’s restaurants started offering home delivery services under the name “McDelivery.” The Complainant is the holder of a trade mark for MCDONALDS and various other trade marks with the “Mc” prefix.
The Complainant holds an Australian trade mark registration for the word mark MCDELIVERY (the “MCDELIVERY Mark”) being trade mark number 1586404 which has been registered from October 17, 2013.
The Domain Name <mcdelivery.com.au> was created on June 3, 2014. The Domain Name currently redirects to a website operated by the Registrar, which states that “This domain name has been listed for sale by the domain registrant.” (the “Respondent’s Website”).
5. Parties’ Contentions
A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s MCDELIVERY Mark;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and/or is subsequently being used in bad faith.
The Complainant is the owner of the MCDELIVERY Mark having a trade mark registration for MCDELIVERY in Australia.
The Domain Name <mcdelivery.com.au> is identical to the MCDELIVERY Mark.
The Respondent has no rights or legitimate interests in the Domain Name. The Respondent does not hold a trade mark for “MCDELIVERY” or any similar trade mark. The Respondent is not licensed or authorised by the Complainant to register the Domain Name. The Respondent does not have any other apparent rights in the Domain Name, nor does he appear to be commonly known by the Domain Name. The Domain Name redirects to the Respondent’s Website which is a page maintained by the Registrar offering the Domain Name for sale. Such use does not give rise to rights or legitimate interests.
The Domain Name was registered or is being used in bad faith. The Respondent registered the Domain Name with the awareness of the Complainant and with the intention of either selling it to the Complainant or to prevent the Complainant from reflecting its trade mark in a corresponding domain name and disrupt the business of the Complainant.
B. Respondent
The Respondent claims that on June 3, 2014, it registered the <MCDelivery.com.au> (Respondent’s emphasis) Domain Name as part of a business offering MC (Master of Ceremony) services for hire. The Respondent operates a business as a DJ in Brisbane and a second business known as “Love in Letters.” The Respondent had no intention to trade in the same business as the Complainant. The Respondent also criticizes the Complainant and the Registrar for allowing him to register the Domain Name.
The Respondent’s explanation for the listing of the Domain Name for sale is “As for the domain name having being listed for sale so quickly, this was simply a case of creating another financial opportunity rather than having a dormant domain name whilst finalising the commitment to a potential business venture.”
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have a name or trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s name, trade or service mark.
The Complainant is the owner of the MCDELIVERY Mark, having registrations for the MCDELIVERY Mark as a trade mark in Australia.
The Domain Name <mcdelivery.com.au> consists of the MCDELIVERY Mark and the country code Top-Level Domain suffix “.com.au”. Disregarding the “.com.au” suffix, the Domain Name is identical to the MCDELIVERY Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant may make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, is to be taken to demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the subject matter of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with an offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or
(ii) you (as an individual, business, or other organisation) 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 non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, trademark or service mark at issue.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorised by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the MCDELIVERY Mark or a mark similar to the MCDELIVERY Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used the Domain Name in connection with a legitimate non-commercial use.
The Respondent has suggested that he registered the Domain Name for a business providing master of ceremony services, however there is no evidence in the Response of such a business, that the Respondent took any steps to start such a business or even that the Respondent registered a company or business name that corresponded with the Domain Name. As such there is no evidence that the Respondent has made a bona fide use or demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests. It has failed to supply any evidence in support of its claims of legitimate interests and has not succeeded in rebutting the presumption. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered or Subsequently Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, 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 the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another person for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has 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; or
(iii) the Respondent has registered the Domain Name primarily for the purpose of disrupting the business or activities of another person; or
(iv) by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the Complainant’s name or mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on Respondent’s web site or location.
The Panel finds that the Respondent, at the time of registration of the Domain Name knew of the existence of the MCDELIVERY Mark. The Domain Name was registered after the Complainant had launched its McDelivery service and had generated considerable publicity for that service. Furthermore, the Respondent’s alternative explanation for his registration of the Domain Name, namely to run a business providing master of ceremony services, is unsupported by any documentary evidence, in particular any evidence that he proposed to start a business called “McDelivery”. The registration of the Domain Name in awareness of the Complainant and the rights it had at the time in the MCDELIVERY Mark and in the absence of rights or legitimate interests amounts to registration in bad faith.
The Panel finds that circumstances exist indicating that the Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name to another person, presumably the Complainant or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name. The Respondent has never used the Domain Name and has provided no evidence of any preparations to use the Domain Name. Rather the Respondent currently offers the Domain Name for sale. The Respondent’s explanation for placing the Domain Name for sale, being that the Respondent seeks to create another financial opportunity, supports the conclusion that the Respondent is presently using the Domain Name in bad faith pursuant to paragraph 4(b)(i) of the Policy.
The Panel, while noting that the Policy only requires that a complainant shows that a respondent registered or subsequently used the domain name at issue in bad faith, finds that the Respondent has registered and has subsequently used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
D. Complainant’s Eligibility
The Complainant has requested transfer of the Domain Name. Given that the Complainant owns an Australian registered trademark that appears to be closely and substantially connected to the Domain Name, in that the Domain Name reproduces the MCDELIVERY Mark in its entirety, the Complainant appears to satisfy the eligibility requirements for registration of the Domain Name.
7. Decision
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 <mcdelivery.com.au> be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: February 15, 2015
