DECISION

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.

Identical and/or Confusingly Similar

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).

While Respondent contends it is "not logical" to believe consumers would believe that the disputed domain names are affiliated with Complainant, the Policy does not require proof of affiliation or of a likelihood of confusion.  Rather, the issue simply is whether the alphanumeric string constituting the domain name is sufficiently similar to the mark in issue.

Rights or Legitimate Interests

There is no evidence that Respondent is using the domain names in connection with a bona fide offering of goods or services or that it is commonly known by any of the domain names.  Instead, Respondent argues that the domain names were registered and are being used for a "legitimate noncommercial or fair use" under paragraph 4(c)(iii) of the Policy.  The Panel disagrees.

While Respondent contends that it is using the domain names to criticize Complainant, the Panel notes that each of the names points to an anti-abortion website which does not mention, let alone criticize or parody, Complainant or relate to Complainant's business.  Further, there is nothing on the website that expressly refers to Complainant's lawsuit against Mr. Purdy.  Thus, there is no basis for Respondent's "noncommercial" use argument.

Our decision in this matter will not shut down "robust debate and criticism," as Respondent suggests.  Respondent is certainly free to express its views on the Internet, or anywhere else for that matter, on the issue of abortion. However, where, as here, there is no evidence that Complainant has ever expressed any views on the abortion issue or that its business relates in any manner to the general subject, Respondent's use of Complainant's mark in the disputed domain names may not be justified under the applicable Policy.

The Panel notes that in the principal case relied upon by Respondent in support of its "noncommercial" use argument, Bridgestone Firestone, Inc. et al. v. Myers, No. D2000-0190 (WIPO July 6, 2000), the domain name registrant was a former employee of Bridgestone-Firestone and developed a website under the domain name <bridgestone-firestone.net> in order to offer constructive criticism of his former employer.  The instant case is distinguishable in that, as noted above, Respondent is not engaged in any criticism of Complainant.

Registration and Use in Bad Faith

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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