Complainants are The Joy of Cooking Trust and Simon & Schuster, Inc. of New York, United States of America (“USA”), represented by CBS Law Department, USA.
Respondent is Direct Privacy Ltd. Direct Privacy ID 0C2AF, Registrant ID: ODN-1103043 of Louisiana, USA. 2. The Domain Name and Registrar
The disputed domain name is registered with DirectNIC, LTD. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2011. On December 9, 2011, the Center transmitted by email to DirectNIC, LTD a request for registrar verification in connection with the disputed domain name. On the same date, DirectNIC, LTD transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on December 20, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 18, 2012.
On January 23, 2012 DirectNIC, LTD confirmed the lock status of the disputed domain name in response to an email communication from the Center noting that the registrant details had changed.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on January 30, 2012. 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
Complainant Simon & Shuster, Inc. is a publisher that publishes approximately 2,500 titles annually and has publishing and distribution capabilities in at least the USA, Canada, the United Kingdom of Great Britain and Northern Ireland and Australia. The “Joy of Cooking” was first published in 1931 by Complainant’s predecessors. Complainant Trust owns all rights in and to the registered mark JOY OF COOKING, including USA Registration Nos. 2,115,779 (for books in class 16), registered on November 25, 1997; 2,297,423 (for website services in class 42), registered on December 7, 1999; 3,203,000 (for electronic house wares in class 9), registered on January 23, 2007; 3,204,703 (for non-electric hand tools in class 8), registered on February 20, 2007; 3,595,463 (for staple foods in class 30), registered on March 24, 2009; 3,595,464 (for meats and processed foods in class 29), registered on March 24, 2009. Complainant Simon & Shuster is the exclusive licensee of the publishing rights to the JOY OF COOKING books and merchandising rights to the JOY OF COOKING mark. Both Complainants are hereinafter referred to collectively as “Complainant.”
Since its original publication in the 1930s, millions of copies of the various editions of “Joy of Cooking” have been sold and the JOY OF COOKING mark has been licensed in connection with a variety of goods and beverages, a line of cooking utensils and computer software versions of the Books, among other merchandise. More than 18 million copies of “Joy of Cooking” have been sold worldwide since its commercial publication in 1936.
Complainant maintains a website under the domain name and owns many other domain names incorporating the JOY OF COOKING mark, including , , and others.
The disputed domain name was created on or after February 4, 2006. In October 2011 it linked to an active webpage to generate click-through revenue via targeted advertising links.
On October 5, 2011, Complainant’s counsel sent a letter to Respondent to the email address listed on the registrar’s database, informing Respondent of Complainant’s rights in the JOY OF COOKING mark and asking Respondent to transfer the disputed domain name to Complainant. Respondent failed to respond to the letter. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is identical to or confusingly similar to Complainant’s trademark, that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name has been registered and is being used in bad faith. B. Respondent
Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has numerous registered trademarks for the mark JOY OF COOKING, including at least two USA registrations that pre-date Respondent’s registration of the disputed domain name. In addition, Complainant has established strong common law rights in that name by virtue of the undisputed use of the mark by Complainant and its predecessors in interest for over 70 years.
The disputed domain name incorporates Complainant’s JOY OF COOKING trademark in its entirety.
The panel finds that the disputed domain name is identical or at least confusingly similar to Complainant’s trademark. B. Rights or Legitimate Interests
Respondent has no relationship to Complainant and has no permission from Complainant to use Complainant’s trademark or any domain name incorporating that trademark. Respondent is not commonly known by the name “Joy of Cooking”. Nothing in the WhoIs contact information for Respondent implies that it is commonly known by that name. In fact, Respondent has taken active steps to mask its identity by using DirectNIC’s privacy registration service.
Moreover, Respondent’s use of Complainant’s mark in a domain name to divert Internet traffic to Respondent’s website in order to generate click-through advertising revenue does not constitute a bona fide offering of goods or services.
The Panel finds that Respondent lacks any rights or legitimate interest in the disputed domain name. C. Registered and Used in Bad Faith
Respondent has used the disputed domain name to operate a pay-per-click website containing hyperlinks to third-party sites about cooking, catering, cookware, recipes, games and culinary schools. Respondent has ignored Complainant’s request to transfer the disputed domain name.
In view of Complainant’s longstanding use of its JOY OF COOKING trademark in the USA for over 70 years, as well as its numerous USA trademark registrations, it is highly unlikely that Respondent was not aware of Complainant’s mark when it registered the disputed domain name. In addition, the sponsored links to Complainant’s competitors found on Respondent’s website indicate that Respondent has used the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. This is evidence of Respondent’s bad faith registration and use.
The Panel finds that Respondent has registered and used the disputed domain name in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Lynda J. Zadra-Symes
Sole Panelist
Dated: February 13, 2012
Full & Egal Universal Law Academy