The Joy of Cooking Trust, Simon & Schuster Inc. (S & S) v. Volcano Internet Project
Case No. D2008-1071
1. The Parties
The Complainant is The Joy of Cooking Trust, Tennessee, United States of America; and Simon & Schuster, Inc. (S & S), New York, United States of America, represented by CBS Law Department, United States of America.
The Respondent is Volcano Internet Project, Montserrat, overseas territory of the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <thejoyofcooking.com> (the “Disputed Domain Name”) is registered with eNom, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2008. On July 15, 2008, the Center transmitted by email to eNom Inc. a request for registrar verification in connection with the Disputed Domain Name. On July 15, 2008, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 23, 2008, the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform 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 July 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on August 14, 2008.
The Center appointed Alistair Payne as the sole panelist in this matter on August 22, 2008. 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 Complainants are The Joy of Cooking Trust, an Ohio trust comprised of United States of America citizens Mr. E. Becker and Mr. M. Becker, and Simon & Schuster, Inc, a company duly incorporated in accordance with the laws of New York, United States of America. The Complainant, Simon & Schuster, Inc. is involved in the consumer publishing industry. The Complainant, The Joy of Cooking Trust owns all rights in and to the registered mark JOY OF COOKING which has been in continuous use since the book entitled “Joy of Cooking” by Ms. S. Rombauer and Ms. Becker was first published in 1931.
By letter dated July 7, 2008, the Complainants' legal counsel wrote to the Respondent setting out the Complainants' concerns in relation to the Disputed Domain Name.
The Complainants are seeking the transfer of the Disputed Domain Name to Complainant Simon & Schuster, Inc.
5. Parties' Contentions
A. Complainant
The Complainants state that Simon & Schuster, Inc. is a leader in the consumer publishing industry, it publishes approximately 1,800 titles annually and has publishing and distribution capabilities in the United States of America, Canada, the United Kingdom of Great Britain and Northern Ireland and Australia as well as an international sales presence in every major market. The Complainants assert that Simon & Schuster is the exclusive licensee of the merchandising rights to the registered mark JOY OF COOKING, that products offered under the registered mark have become well known to the public, and that the registered mark has become a famous mark.
The Complainants assert that the Disputed Domain Name wholly incorporates the Complainants' trade mark JOY OF COOKING and that the inclusion of the definite article “the” in the domain name does not add distinctive matter so as to distinguish it from the Complainants' trade mark. The Complainants therefore contend that the Disputed Domain Name is confusingly similar to the Complainants' JOY OF COOKING trade mark, which has developed considerable fame and renown.
The Complainants argue that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. The Complainants state that they have not agreed or consented to the Respondent's use or registration of the Disputed Domain Name. In addition the Complainants claim that the Respondent is not commonly known by the Disputed Domain Name.
The Complainants assert that the Disputed Domain Name was registered and is being used in bad faith. The Complainants state that the Respondent has attempted to take advantage of a predictable name alteration made by Internet users seeking the Complainants' commercial websites for the purpose of diverting Internet traffic to the Respondent's website in order to generate sales.
The Complainants further assert that they have a long-established reputation in the use of their JOY OF COOKING trade mark, they have been using this trade mark in the course of business since 1931. The Complainants believe it likely that the Respondent was fully aware of the Complainants' trade mark rights and their reputation when registering the Disputed Domain Name.
The Complainants argue that the Respondent has registered many other domain names incorporating other well-known trade marks owned by third parties such as McDonalds, Radio Shack, and Reebok. Thus, the Complainants believe, the Respondent has engaged in a “pattern of conduct” of registering domain names utilizing well known trade marks in which the Respondent has no rights or legitimate interests. The Complainants contend that such “pattern of conduct” is further evidence of the Respondent's bad faith.
Finally, the Complainants state that a letter requesting the transfer of the Disputed Domain Name to Simon & Schuster, Inc was sent by Complainants' counsel to the Respondent on July 7, 2008 to which the Respondent did not respond, further evidencing its bad faith.
B. Respondent
The Respondent did not file a Response or otherwise reply to the Complainant's contentions.
6. Discussion and Findings
A. UDRP Elements
The Respondent has not filed a Response to the Complaint. Pursuant to paragraph 14(a) of the Rules, the Panel will proceed to a decision on the Complaint in the absence of a Response from the Respondent.
Notwithstanding the fact that the Respondent has not filed a Response to the Complaint, it is still necessary for the Complainants, if they are to succeed in this administrative Proceeding, to prove each of the three elements referred to in paragraph 4(a) of the Policy, namely that:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainants have rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Panel will proceed to establish whether the Complainants have discharged the burden of proof in respect of each of the three elements referred to in paragraph 4(a) of the Policy. The Panel also notes that pursuant to paragraph 14(b) of the Rules, the Panel may draw such inferences as it considers appropriate in the absence of a Response from the Respondent.
B. Identical or Confusingly Similar
The Complainant Simon & Schuster, Inc. asserts that it is the exclusive licensee of the registered trade mark JOY OF COOKING. Although the Complainants failed to admit in evidence a copy of the exclusive license agreement, the Panel is prepared to accept the Complainants' submission. The Complainant, The Joy of Cooking Trust has demonstrated extensive use of the trade mark and a substantial reputation in relation to cookery books, cooking utensils and a variety of food and beverages.
The Disputed Domain Name contains the trade mark JOY OF COOKING in its entirety along with the definite article “the”. In Telstra Corporation Limited v. Heaydon Enterprises,
WIPO Case No. D2000-1672, the disputed domain name was <thetelstrashop.com>. The Panel's view in this case was that: “confusion is inevitable in the event that the marks are present in a domain name not controlled by the Complainant. I agree with the Complainant that the addition of the definite article does not affect the basic concern about confusing similarity”.
In Belo Corp v. George Latimer,WIPO Case No. D2002-0329 the Panel held that: “it is well established that the generic top level domain, in this case “.com” must be excluded from consideration as being a generic or functional component of the Domain Name”.
Therefore, in the Panel's view, the Disputed Domain Name is confusingly similar to the Complainants' mark for the purposes of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As already stated the Panel is prepared to accept the Complainant, Simon & Schuster, Inc.'s assertions that it is the exclusive licensee for the word mark JOY OF COOKING. The Panel also accepts the Complainants' assertion that the Complainants have never licensed or otherwise permitted the Respondent to use the JOY OF COOKING trade mark.
The Respondent has provided no evidence that it has any rights or legitimate interests in the Disputed Domain Name. It does not appear to be commonly known by any mark or name similar to the Disputed Domain Name. The Disputed Domain Name is being used by the Respondent as a pay-per-click web site with links to other cookery related sites. As stated in F. Hoffmann-La Roche AG v. Brave,
WIPO Case No. D2006-1603: “There are numerous prior decisions under the Policy holding that the unauthorized appropriation of another's trademark in one's domain name and the commercial use of the corresponding website do not confer rights or legitimate interests upon the owner of such a domain name”.
In the Panel's opinion the Complainants have made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name which the Respondent has failed to rebut in any manner.
Therefore, the Complainants have, in the Panel's view satisfied paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainants have used the registered trade mark JOY OF COOKING since 1931. It appears to the Panel extremely unlikely that the Respondent could not have been aware of the Complainants' mark when it registered the Disputed Domain Name. In any event, paragraph 4(b)(iv) of the Policy provides a non-exhaustive list of circumstances that, if found, are indicative of bad faith, including the following:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”
The Disputed Domain Name is identical to the Complainants' trademark with the exception of the definite article “the”. In the Panel's opinion, the Respondent is using the reputation of the Complainants' mark to profit from the obvious association with the Disputed Domain Name by attracting Internet users to the Respondent's website in order to generate hits on sponsored links at <thejoyofcooking.com>. The Complainants have therefore satisfied the requirements of paragraph 4(b)(iv) of the Policy.
The Panel notes that paragraph 14(b) of the Rules authorizes a panel to draw inferences from a respondent's failure to respond as “as it considers appropriate” In the Panel's view inferences of bad faith can also be drawn from the fact that the Respondent failed to explain on two occasions the reasons why he registered the Disputed Domain Name. Firstly, in failing to respond to the Complainants' letter of July 7, 2008 requesting the transfer of the Disputed Domain Name and secondly by failing to file a Response in this administrative proceeding.
Finally the Respondent has registered domain names which correspond to widely known brands such as Reebok and McDonalds. In Terroni Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-0666 the Respondent had registered domain names which corresponded to some of the most widely known brands in the world including Internet Explorer and Yamaha. The Panel found that this was “behaviour which has been held in numerous decisions to be indicative of bad faith”.
For the reasons stated above, the Panel is satisfied that the Disputed Domain Name was registered and used in bad faith. As such, paragraph 4(a)(iii) of the Policy is satisfied
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, <thejoyofcooking.com> be transferred to the Complainant Simon & Schuster Inc. (S & S).
Alistair Payne Sole Panelist
Date: September 5, 2008
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