McDonalds.re #UDRP: Have you ever seen a green #McDonalds?

Have you ever seen a green McDonalds?

In the case of the domain McDonalds.re one would appreciate the registrant’s patriotic choice of colors. The ccTLD is that of Réunion, with an African green and yellow flag dressing up a world famous brand.

Apparently, McDonald’s in France use green and gold, as seen as their Facebook account.

Unfortunately, that sales pitch scheme didn’t work for the domain’s registrant, who was hit with a UDRP by McDonalds. The case was handled by the WIPO and the decision was as expected: transfer the domain McDonalds.re to the Complainant.

Full details on the decision, translated from French, follow after this unsolicited green McDonald’s commercial:

AFNIC DECISION

mcdonalds.re

Request EXPERT-2020-00777

I. General information

i. On the parties to the dispute

The Applicant: McDonald’s International Property Company Ltd.

The domain name holder: Mr. B.

ii. About the domain name

Domain name subject of the dispute: <mcdonalds.re>

Domain name registration date: February 8, 2018, i.e. after July 1, 2011

Domain name expiration date: February 8, 2021

Registration office: OVH

II. Procedure

A request filed by the Applicant with the French Association for Internet Naming in Cooperation (hereinafter Afnic) was received on June 19, 2020 through the PARL EXPERT online service.

In accordance with the PARL EXPERT Rules (hereinafter the Rules), the Arbitration and Mediation Center of the World Intellectual Property Organization (hereinafter the Center) and Afnic have validated the completeness of this request by proceeding with the following checks:
• The application form is duly completed.
• The costs of the Procedure were paid by the Applicant.
• The domain name is registered.
• The domain name was created or renewed after July 1, 2011.
• The domain name concerned by the proceedings is not the subject of any ongoing judicial or extrajudicial proceedings.

Afnic froze operations on this domain name and notified the opening of the procedure to the Holder on June 26, 2020.

The Account Holder has not sent a response through the PARL EXPERT online service.

On July 23, 2020, the Center appointed Louis-Bernard Buchman (hereinafter the Expert) who accepted this file and sent his Declaration of acceptance and declaration of impartiality and independence in accordance with article (II) (vi) (a) of the Regulations.

Afnic comes to rule on the decision rendered by the Expert.

III. Arguments of the parties

i. The applicant

According to the Applicant, the registration or renewal of the domain name <mcdonalds.re> by the Holder is “likely to infringe intellectual property rights or personality rights”, and the Holder does not justify “a legitimate interest and acts in bad faith ”.
(Art. L. 45-2 of the postal and electronic communications code)

In his request, the Applicant provided the following documents:
• Annex 1 Copy of the Whois data relating to the disputed domain name, of the request to waive anonymity filed by the Applicant as well as of Afnic’s response;
• Annex 2 Information concerning the Applicant taken from the website of the Division of Companies of the State of Delaware, a Kbis extract from McDonald’s France, an extract from the 2019 annual report of McDonald’s Corporation and certificate from an officer of McDonald’s Corporation , according to which MIPCO and McDonald’s France are 100% subsidiaries of McDonald’s Corporation, where applicable with a certified translation produced by a sworn translator;
• Appendix 3 Information and articles relating to McDonald’s, its presence in France and more particularly on Reunion Island;
• Appendix 4 Screenshots of the McDonald’s Corporation and McDonald’s France websites available at www.mcdonalds.com and www.mcdonalds.fr respectively;
• Annex 5 Certificates of registration of certain trademarks of the Applicant;
• Annex 6 Extract from the Interbrand classification, copy of the judgment of the General Court of the European Union, case T-518/13, Future Enterprises / EUIPO – McDonald’s International, and articles relating to the reputation of the Applicant’s marks, in particular the mark McDONALD’S and the Arches d’Or;
• Annex 7 Copy of the Whois data of certain domain names incorporating the McDONALD’S brand registered by McDonald’s;
• Annex 8 Presence of McDonald’s on social networks;
• Appendix 9 Screenshots of the website associated with the disputed domain name dated June 19, 2020;
• Annex 10 Copy of Whois data relating to domain names previously or currently registered by the holder of the disputed domain name in the name of the company DE NAZARETH showing his postal or email address;
• Annex 11 Copy of the formal notice and the reminder email sent by the Counsel of the Applicant to the Holder;
• Annex 12 Copies of decisions PARL EXPERT 2019-00503 concerning the domain name <github.fr> and PARL EXPERT 2020-00750 relating to the domain name <facebooker.fr>;
• Annex 13 Copy of Syreli decision n ° FR-2019-01939 concerning the domain name <cocacola.re>;
• Annex 14 Proof of non-delivery of mail sent by the Applicant to the Holder.

In his request, the Applicant indicates that:

“A. Introduction – facts

The applicant

The Applicant, McDonald’s International Property Company, Limited (hereinafter “MIPCO”) is a company incorporated under US law in the State of Delaware. It belongs to the McDonald’s group of companies (hereinafter “McDonald’s”), whose parent company is McDona

5000/5000
Character limit: 5000
ld’s Corporation and which includes a subsidiary in France, the company McDonald’s France SAS (hereinafter “McDonald’s France”).

Information concerning the Applicant, taken from the website of the Division of Companies of the State of Delaware, a Kbis extract from McDonald’s France, an extract from the 2019 annual report of McDonald’s Corporation and a certificate from an officer of McDonald’s Corporation that the companies MIPCO and McDonald’s France are 100% subsidiaries of McDonald’s Corporation are provided in Annex 2 with a certified translation established by a sworn translator.

The first McDonald’s restaurant in the McDonald’s system was opened in the United States in 1955. In 1965, the company was listed on the New York Stock Exchange. In 1967, McDonald’s opened its first two restaurants outside the United States, in Canada and Puerto Rico. The first European McDonald’s restaurant was opened in the Netherlands in 1971, and it was in 1979 that McDonald’s established itself in France, in Strasbourg. In Réunion, McDonald’s opened its first restaurant in Saint-Denis in 1997. Seven others have since opened.

Over the years, the number of McDonald’s restaurants has grown significantly and been successful around the world so that McDonald’s is considered the largest fast food chain in the world today. In 2014, McDonald’s included not only 14,350 restaurants in the United States, but also 21,908 restaurants in the rest of the world. In 2020, the chain has more than 1,490 restaurants and more than 74,000 employees in France.

Information and articles about McDonald’s are attached in Annex 3.

The main McDonald’s website is available at www.mcdonalds.com, and that of McDonald’s France at www.mcdonalds.fr (Annex 4).

In order to ensure the protection of his intellectual property rights, the Applicant has registered numerous McDONALD’S trademarks in many countries, in connection with catering services, including in Réunion, and in particular the following trademarks:

– the European Union mark McDONALD’S n ° 00062497, registered on July 16, 1999 in classes 5, 28, 29, 30, 31, 32, 35, 41 and 42; and,

– the French brand McDONALD’S n ° 1484650, registered on August 23, 1988 in classes 29, 30, 32, and 43.

The Applicant also owns many brands represented by Arches d’Or (hereinafter “the Arches d’Or”), and in particular the following brand:

– European Union trade mark n ° 000058461, registered on February 2, 1999 in classes 29, 30, 35, 41 and 42.

A copy of the registration certificates for these marks is attached in Annex 5.

Significant advertising investments have been made to promote the Applicant’s brands, be they the McDONALD’S brand or the Golden Arches, which have gained worldwide renown and today represent valuable assets owned exclusively by McDonald’s. The McDONALD’S brand is one of the 100 most powerful brands in the world, ranking 9th according to the “Best Global Brand 2019” ranking carried out by Interbrand. The reputation of the McDONALD’S mark was also recognized by the General Court of the European Union in case T-518/13, Future Enterprises v EUIPO – McDonald’s International: ruling as follows:

‘The Board of Appeal was justified in concluding that the considerable reputation enjoyed by the McDONALD’S mark extended to the characteristic elements of the’ Mc ‘family of trade marks, without having to determine, as the applicant maintains, whether each of the marks making up that mark family was a famous brand. ”

An extract from the Interbrand classification, a copy of the above-mentioned judgment and articles relating to the reputation of the Applicant’s marks are attached in Annex 6.

McDonald’s also owns numerous domain names incorporating the McDONALD’S brand, including <mcdonalds.com>, <mcdonalds.be> (Belgium), <mcdonalds.ca> (Canada), <mcdonalds.ch> (Switzerland) and <mcdonalds .fr> (France).

A copy of the WhoIS data relating to these domain names is provided in Annex 7.

McDonald’s also ensures its presence on social networks through the following internet pages, the McDonald’s La Réunion Facebook page accumulating, for example, 80 million likes:

https://www.facebook.com/mcdonaldsfrance/
https://www.facebook.com/McDonaldsRunOfficiel/
https://www.instagram.com/mcdonalds/?hl=fr
https://twitter.com/McDoFr_Newsroom?ref_src=twsrc%5Egoogle%7Ctwcamp%5Eserp%7Ctwgr%5Eauthor

A screenshot of these pages is attached in Annex 8.

The Domain Name, the associated website and the Holder of the Domain Name

The Domain Name was registered with the OVH SAS registrar by Mr. B. on February 8, 2018.

It is currently redirecting to a website reproducing the Applicant’s Golden Arches on a green background and presenting the mention following:

“MCDONALDS.RE IS FOR SALE ^^^^
This domain name could belong to you »

By clicking on “Contact the owner of the domain”, a contact form is displayed with the photo of a hamburger half.

A screenshot of the website associated with the Domain Name is attached in Annex 9 and a copy of the Applicant’s trademark representing the Arches d’Or is attached in Annex 5.

It emerges from a search carried out using the Email address of the Holder by the Applicant that the Holder is, or has been, the holder of other domain names infringing the rights of third parties. These are the domain names <conforama.re>, <intersport.re>, <ipsos.re>, <louisvuitton.re> and <ovh.re> registered under the name DE NAZARETH but associated with postal and email addresses of the owner.

A copy of the WhoIS data relating to these domain names showing the postal and email addresses of the Holder is attached in Annex 10.

On March 24, 2020, the Applicant’s counsel sent the Holder of the Domain Name a letter of formal notice asserting the Applicant’s rights over the “McDONALD’S” trademark and requesting the transfer of the Domain Name for the benefit of the Applicant. The Applicant’s advice did not receive a response from the Holder, despite a follow-up email sent on April 6, 2020.

A copy of the formal notice and the reminder email sent by the Applicant’s counsel to the Holder is attached in Annex 11.

In view of the abusive registration of the Domain Name, the Applicant is forced to lodge the present PARL EXPERT complaint (hereinafter the “Complaint”) with Afnic and considers that it is justified to request the transfer of the Domain Name. Domain on the foundations developed below.

B. The Complaint is based on the following grounds:

Pursuant to article L. 45-2 of the Post and Electronic Communications Code (hereinafter the “CPCE”):

“[…] The registration or renewal of domain names may be refused or the domain name deleted when the domain name is:

1 ° Susceptible to undermining public order or good morals or rights guaranteed by the Constitution or by law;
2 ° Susceptible to infringe intellectual property or personality rights, unless the applicant demonstrates a legitimate interest and acts in good faith;
3 ° Identical or related to that of the French Republic, of a territorial collectivity or of a grouping of territorial collectivities or of a national or local public institution or service, unless the applicant demonstrates a legitimate interest and acts of sincerity. ”

(i) Applicant’s interest in bringing proceedings

In accordance with Article L. 45-6 paragraph 1 of the CPCE, “[a] any person showing an interest in acting may request the competent registration office to delete or transfer a domain name to him when the domain name falls within the cases provided for in article L. 45-2. ”

The Applicant considers that the registration of the Domain Name by the Holder infringes his intellectual property rights under the terms of Article L. 45-2, 2 ° of the CPCE and therefore requests the transfer of the Domain Name for the benefit of of its French sister company, McDonald’s France, in accordance with article L. 45-6 of the CPCE.

According to the document compiling the commented PARL case law, “PARL Trends”, “the Applicant has an interest in acting, in particular if:

1. He owns an identical, almost identical or similar domain name under another extension to the disputed domain name;
2. He owns an almost identical or similar domain name under the same extension as the disputed domain name;

3. He owns a trademark1, a corporate name, a patronymic or pseudonymic name, a title deed (work, patent, design and model, etc.) similar, identical or almost identical to the domain name in dispute. ”

McDonald’s is the owner of domain names incorporating the McDONALD’S brand, and in particular, <mcdonalds.com> or <mcdonalds.fr> (France). These domain names are therefore protected against any infringement through the registration or use of distinctive signs reproducing or imitating the term “McDonald’s”.

A copy of the WHOIS data relating to these domain names is provided in Annex 7.

The above-mentioned <mcdonalds.com> and <mcdonalds.fr> domain names were registered on July 11, 1994 and April 9, 1997 by the companies McDonald’s Corporation and McDonald’s France SAS, respectively. They are identical to the Domain Name under another extension.

As detailed above, the Applicant is the owner of numerous McDONALD’S trademarks registered in many countries (Annex 5). These brands are almost identical to the Domain Name.

The term “McDonald’s” is also the dominant element of the Company name of the Applicant (an extract from the certificate of incorporation of MIPCO is attached in Annex 2 with a certified translation prepared by a sworn translator).

The Applicant fulfills the three conditions mentioned in the document entitled “PARL Trends”, justifying his interest in acting in accordance with Article L. 45-6 of the CPCE, and is therefore entitled to file this request.

(ii) Eligibility of the Applicant

4.24. The Applicant is located outside the European Union and is therefore not eligible for the .fr naming charter. However, in accordance with article L. 45-3 of the CPCE:

“The following can request the registration of a domain name, in each of the top-level domains:
– natural persons residing in the territory of the European Union;
– legal persons having their registered office or their main establishment in the territory of one of the Member States of the European Union. ”

It was ruled in the PARL EXPERT 2019-00503 decision concerning the domain name <github.fr>:

“In view of the documents which were provided by the Applicant, the Expert noted, at the time of filing the request, that the company GitHub BV, which is located in one of the member territories of the European Union, in the Netherlands, was 100% owned by the Applicant.
Consequently, the Applicant justifying a direct legal link with its subsidiary, the company GitHub B.V., the Expert found that the request to transmit the disputed domain name <github.fr> to the latter was admissible. ”

Likewise, in the PARL EXPERT 2020-00750 decision, the Expert considered admissible the request to transfer the domain name <facebooker.fr> to the Irish wholly-owned subsidiary of the Applicant:

“In view of the documents which were provided by the Applicant, the Expert notes, at the time of filing the request, that the company Facebook Ireland Limited which is located in one of the Member States of the European Union, in Ireland, was 100% owned by the Applicant.

Consequently, the Expert notes that the request to transmit the disputed domain name <facebooker.fr> to the latter was admissible, subject to the conditions below. ”

A copy of these two decisions is attached as Annex 12.

As described above, the Applicant belongs to the McDonald’s group of companies, which has an establishment in the territory of the European Union, McDonald’s France, whose registered office is at 1 rue Gustave Eiffel, 78280 Guyancourt, France. The Applicant and its sister company, McDonald’s France, are both wholly-owned subsidiaries of McDonald’s Corporation. Article L. 45-3 of the aforementioned CPCE offers legal persons having their registered office or their main establishment in the territory of a Member State of the European Union to request the registration of a domain name under the national extension “.fr”. As such, the Applicant primarily requests that the Domain Name be transmitted to its sister company, the French company McDonald’s France, in application of the provisions of Article L. 45-3 of the CPCE.

The proof of the legal link between the Applicant and McDonald’s France is attached in Annex 2.

(iii) Breach of the provisions of Article L. 45-2 of the Electronic Communications Code

at. Infringement of the rights invoked by the Applicant

The Applicant maintains that the Domain Name is likely to infringe its intellectual property rights in accordance with Article L. 45-2-2 ° of the CPCE.

As detailed above, the Applicant is the owner of McDONALD’S trademarks protected in France prior to the date of registration of the Domain Name. Its parent and sister companies also own the domain names <mcdonalds.com> and <mcdonalds.fr> respectively.

The Applicant maintains that the Domain Name is almost identical to its McDONALD’S brand under the first level national extension for Reunion Island “.re”, only the apostrophe not being reproduced. In addition, it is identical to its domain names <mcdonalds.com> or <mcdonalds.fr> under a different extension.

Thus, the Applicant has demonstrated above that he holds prior rights to the Domain Name with regard to the term “McDonald’s”.

Insofar as the Domain Name is almost identical to the name of McDonald’s, the risk of confusion can only be heightened in the minds of Internet users who will imagine accessing the official McDonald’s site for the inhabitants of the Island. Of the reunion.

Finally, it is accepted that the addition of the first level national extension for Reunion Island “.re” is powerless to rule out the risk of confusion between the Domain Name and the Applicant’s McDONALD’S brand.

The Applicant thus maintains that the Domain Name is liable to infringe the intellectual property rights of the Applicant in accordance with article L. 45-2-2 ° of the CPCE.

b. Lack of legitimate interest and bad faith of the Holder of the Domain Name

• On the absence legitimate interest of the Holder

According to article R. 20-44-46 of the CPCE, and in particular for the application of article L. 45-2 of the CPCE, the existence of a legitimate interest can be characterized by “the fact, for the applicant or holder of a domain name:

– to use this domain name, or an identical or related name, in the context of an offer of goods or services, or to be able to demonstrate that it is prepared for it;

– to be known under a name identical or related to this domain name, even in the absence of recognized rights on this name;

– to make non-commercial use of the domain name or a related name without the intention of misleading the consumer or damaging the reputation of a name over which a right is recognized or established. ”

The Applicant declares that none of these conditions are met, as detailed below.

The Holder does not seem to be able to prove any right or legitimate interest of any kind whatsoever on the term “mcdonalds.re”.

The Holder has so far neither used the Domain Name nor provided proof of preparations for its use in connection with a legitimate offer of goods or services. As described above, on the date of filing of the Complaint, the Domain Name points to a web page reproducing the Applicant’s Golden Arches and mentioning that the Domain Name is for sale.

The Applicant declares that the Holder is neither affiliated with the Applicant, nor authorized by the Applicant to register or use the McDONALD’S trademark or to request the registration of a domain name incorporating this trademark under another extension.

The Holder is not known by the Domain Name or by any related name, according to the information disclosed by Afnic in response to the request for waiver of anonymity made by the Applicant (Annex 1).

Finally, the Holder cannot claim that he is making non-commercial use of the Domain Name or a related name to the extent that the Domain Name is offered for sale.

In view of the elements set out above, the Applicant submits that the Holder cannot avail himself of any right or legitimate interest in the Domain Name.

• On the bad faith of the Holder

Under article R. 20-44-46 of the CPCE, bad faith can be characterized and in particular by “the fact, for the applicant or the holder of a domain name:

– to have obtained or requested the registration of this name mainly with a view to selling it, renting it or transferring it in any way whatsoever to a public body, to a local authority or to the holder of an identical name or related to which a right is recognized and not to actually exploit it;
[…]
– to have obtained or requested the registration of a domain name mainly with the aim of profiting from the reputation of the holder of a legitimate interest or of a recognized right on this name or on a related name, or from that of a product or service assimilated to this name, creating confusion in the mind of the consumer. ”

Considering the fact that the Domain Name is offered for sale, it is clear that the Holder has registered the Domain Name mainly with a view to selling it.

The term “McDonald’s” is very distinctive and exclusively associated with the McDonald’s group of companies.

In view of the reproduction of the Applicant’s marks on the website associated with the Domain Name, the Holder could not be unaware of the existence, the activities and the trademark of the Applicant at the time of the registration of the Domain Name, so that this registration, almost identical to the Applicant’s trademark, cannot be accidental. Knowledge of the mark at the time of registration of the Domain Name is a characteristic indicator of the bad faith of the Holder. It is clear that the Holder registered the Domain Name with knowledge of the rights held by the Applicant, and that the only reason for doing so was to improperly benefit from such rights. In Syreli decision n ° FR-2019-01939 concerning the domain name <cocacola.re>, the College considered that the documents provided by the applicant enabled the conclusion that the domain name <cocacola.re> had been registered in the aim of profiting from the reputation of the applicant by creating a risk of confusion in the mind of the consumer.

A copy of this decision is attached as Annex 13.

Moreover, the term “McDonald’s” has no other meanings than the designation of the group of companies to which the Applicant belongs in any language. Thus, the composition of the Domain Name increases the risk of confusion leading Internet users to mistakenly consider that the Domain Name belongs to the Applicant and corresponds to his website intended for Reunion Islanders. In this regard, the abusive retention of the term “McDonald’s” prevents the Applicant from taking back his trademark in the form of a domain name under the extension “.re” for Reunion Island.

The fact that the Holder is the holder of other domain names infringing the rights of third parties constitutes an additional element suggesting his bad faith. Indeed, this seems to demonstrate that the Holder has adopted a customary and characteristic behavior testifying to a clear desire to prevent third parties from registering domain names reproducing terms over which they hold exclusive rights.

Finally, the fact that the Holder has refrained from any action after having been notified by email to cease any infringement of the McDONALD’S brand is another element suggesting bad faith on the part of the Holder. It also appears that the address provided by the Holder in WhoIS is incorrect, the letter of formal notice having been returned to the Applicant by La Poste for lack of access or addressing.

Proof of non-delivery of the mail sent by the Applicant to the Holder is provided in Annex 14.

The Applicant considers that the Holder registered and used the Domain Name mainly for the purpose of selling it and profiting from the reputation of the Applicant by creating confusion in the mind of the consumer and acted in bad faith, as defined in article R. 20-44-46 of the CPCE.

In view of the foregoing, the Domain Name is likely to infringe intellectual property rights, the Holder not proving a legitimate interest and not acting in good faith, in accordance with article L. 45 -2-2 ° of the CPCE.

Consequently, the Applicant asks the Expert to transmit the Domain Name for the benefit of its sister company, McDonald’s France. ”

The Applicant requested the transmission of the domain name.

ii. The holder

The Account Holder has not sent a response through the PARL EXPERT online service.

IV. Analysis

In view of the provisions of common law relating to the burden of proof,
In view of the writings and documents filed by both parties,
In view of the provisions of the Rules,
In view of the provisions provided for in Article L. 45-6 of the Postal and Electronic Communications Code,

The Expert assessed:

i. The Applicant’s interest in acting

In view of the documents which were provided by the Applicant, the Expert noted that at the time of filing the application, the domain name <mcdonalds.re> was identical to the trademarks registered by the Applicant and in particular to:

• the French word mark MCDONALD’S number 1484650, registered on 23 August 1988 and regularly renewed in classes 29, 30, 32 and 43
• the European Union word mark MCDONALD’S number 000062497, registered on April 1, 1996, and regularly renewed for classes 25, 28, 29, 30, 31, 32, 35, 41 and 42

(hereinafter collectively referred to as “the Mark”),

and was similar to the Company name of the Applicant.

The Expert therefore considered that the Applicant had an interest in acting in accordance with Article L-45-6 of the CPCE.

ii. Eligibility of the Applicant

As the Applicant is located outside the European Union, he is not eligible for the naming charter and cannot request for his own benefit the transmission of the disputed domain name <mcdonalds.re>.

However, the Applicant requests the transmission of the disputed domain name <mcdonalds.re> to the French company McDonald’s France SAS.

In view of the documents which were provided by the Applicant, the Expert noted, at the time of filing the request, that the company McDonald’s France, which is located in one of the member territories of the European Union, in France, was owned 100% like the Applicant, by the American company McDonald’s Corporation, listed on the New York Stock Exchange.

Consequently, the Applicant justifying a legal link with his sister company, McDonald’s France, and being under joint exclusive control with the latter, the Expert found that the request for transmission of the disputed domain name < mcdonalds.re> to the latter was admissible.

iii. Breach of the provisions of Article L.45-2 of the CPCE

at. Infringement of the rights invoked by the Applicant

The Applicant alleges an infringement of the rights of third parties as provided for in Article L. 45-2 2˚ of the CPCE.

In accordance with article L.45-2 2˚ of the CPCE, the registration or renewal of domain names may be refused or the domain name deleted when the domain name is likely to infringe intellectual property rights. or personality, unless the applicant demonstrates a legitimate interest and acts in good faith.

The Expert noted that the domain name <mcdonalds.re> is identical to the two word marks referred to in paragraph (i) above because it is composed of the acronym MCDONALD’S in its entirety, and is similar to the Company name of the Applicant .

The Expert therefore considered that the domain name <mcdonalds.re> is likely to infringe the intellectual property rights of the Applicant.
In accordance with Article L. 45-2 of the CPCE cited above, the Expert has ensured questioned whether the Applicant had provided proof of the absence of legitimate interest or bad faith of the Holder.

b. Proof of the absence of legitimate interest or bad faith on the part of the Holder

• On the absence of legitimate interest of the Holder

The Expert noted in view of the arguments raised by the Applicant and the documents on the one hand that the Applicant shows a worldwide exploitation and knowledge of his Mark and on the other hand that the Holder (i) has no interest legitimate on the Mark and (ii) is foreign to the Applicant, from whom (iii) he has not received any authorization to use the Mark.

In particular, the registration of the disputed domain name by the Holder incorporating in full the world-famous Brand, associated with his offer to sell the disputed domain name and his absence of any response to the letter of formal notice from the Applicant’s counsel, allows the Expert to consider that the Applicant has provided proof of the absence of legitimate interest of the Holder.

• On the bad faith of the Holder

The Expert found that:

• the Applicant and its sister company McDonald’s France SAS have used the acronym MCDONALD’S since at least 1981 in relation to products bearing the Mark marketed in France;
• the Applicant’s sister company, McDonald’s France, registered the domain name <mcdonalds.fr> on April 9, 1997, and uses the Mark in numerous restaurants on Reunion Island;
• the Applicant is the owner of the French trademark MCDONALD’S number 1274843;
• the domain name <mcdonalds.re> is identical to the Trademark because it is composed of the sign “mcdonalds” which it reproduces in its entirety, and is similar to the Company name of the Applicant and to the previous domain name <mcdonalds. fr> registered in 1997 by McDonald’s France, a sister company of the Applicant;
• the Applicant uses the Mark, one of the best known in the world, to identify products marketed by its parent company McDonald’s Corporation, and in France by its sister company McDonald’s France SAS;
• the Holder uses the domain name <mcdonalds.re> to point to an internet page reproducing the Trademark and the European Union figurative mark number 000058461 of the Applicant, registered on April 1, 1996 and regularly renewed for classes 29, 30 , 35, 41 and 42, and mentioning that this domain name is available for sale;
• the Holder cannot therefore have registered the domain name <mcdonalds.re> without knowledge of the Mark;
• the Holder has not provided a response to dispute these elements.

The Expert considered that the documents provided by the Applicant allowed to conclude that the Holder had registered the domain name <mcdonalds.re> in order to profit from the reputation of the Applicant by creating a risk of confusion in the minds of Internet users, and that the use of the domain name which links to a site offering to sell it, while reproducing the Mark, is a bad faith use.

The Expert concluded that the Applicant had provided proof of the absence of legitimate interest of the Holder and of his bad faith, as defined in article R. 20-44-46 of the CPCE, and therefore decided that the domain name <mcdonalds.re> did not comply with the provisions of article L. 45-2 of the CPCE.

In these circumstances, the transfer of the domain name <mcdonalds.re> to the benefit of the Applicant’s sister company, McDonald’s France, appears justified.

V. Decision

Afnic rules on the Expert’s decision and decides to accept the request for the transmission of the <mcdonalds.re> domain name to the benefit of the Applicant’s sister company, McDonald’s France SAS.

VI. Execution of the decision

In accordance with Article (II) (viii) of the Rules, Afnic’s decision will not be executed until fifteen (15) calendar days have elapsed from the notification of the decision to the parties.

In accordance with Article (II) (vii) of the Regulation, Afnic notifies each of the parties by email and post of the decision.

It will unfreeze transactions on the domain name in accordance with the provisions of the Regulations.

The Registrar is informed of the decision by email.

In Montigny le Bretonneux, July 30, 2020.

Pierre BONIS Chief Executive Officer of Afnic

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