“Cooking” Up a Domain Name Dispute
The Complainant is The Joy of Cooking Trust and Simon & Schuster, Inc. The Joy of Cooking Trust owns all rights in and to the registered mark of JOY OF COOKING, which has been in continuous use since the book entitled “Joy of Cooking” was first published in 1931. The Joy of Cooking Trust is seeking transfer of the disputed domain name, www.thejoyofcooking.com, to Simon & Schuster, Inc. The Respondent, Volcano Internet Project, failed to file a response to the Complaint. Nevertheless, to succeed on its claim, the Complainant still must prove each of the elements delineated in paragraph 4 of the Policy.
The Complaint alleges that Simon & Schuster is the exclusive licensee of the registered trademark JOY OF COOKING and demonstrated its extensive use of the trade mark and a substantial reputation to cookery brands, cooking utensils and a variety of food and beverages. The Panel therefore found the domain name to be, in fact, “confusingly similar” to the Complainants trademark, despite the addition of the word “the” and the generic, top-level domain, “.com”. Despite the Complainant’s failure to submit into evidence a copy of the exclusive license agreement, the Panel also accepted Complainant Simon & Schuster’s assertion that it is the exclusive licensee for the mark JOY OF COOKING and that it had never licensed those rights to the Respondent, and satisfied the second requirement of paragraph 4 of the Policy (that the Respondent has no rights or legitimate interests in the disputed domain name). Additionally, the Panel found that the Respondent is “using the reputation of the Complainant’s 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 www.thejoyofcooking.com. The Panel also found Respondent’s bad faith evidenced by “behavior which has been held in numerous decisions to be indicative of bad faith”, specifically, that Respondent has registered domain names which correspond to widely known brands such as Reebok and McDonalds.
Based on the Panel’s findings of fact, the Panel ordered transfer of the disputed domain name to Simon & Schuster Inc.