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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Gruner + Jahr Printing & Publishing Co., G + J McCall’s LLC, Rosie O’Donnell and Lucky Charms Entertainment, Inc. v. Savior Baby

Case No. D2000-1741

 

1. The Parties

The Complainants are Gruner + Jahr Printing & Publishing Co. ("Gruner +Jahr"), 375 Lexington Avenue, New York, New York 10017, United States of America; G+J McCall’s LLC ("G+J McCall’s"), 375 Lexington Avenue, New York, New York 10017, United States of America; Rosie O’Donnell ("Ms O’Donnell") c/ The Rosie O’Donnell Show, 30 Rockefeller Plaza, Suite 800E, New York, NY 10112, United States of America; and Lucky Charms Entertainment, Inc. ("Lucky Charms"), 500 Lake Street, Suite D, Ramsey, New Jersey 07446, United States of America.

The Respondent is Savior Baby, 187 Heaven Scent, 2834027, Encenada, Mexico. Administrative contact for the domain name: Savior Baby, 187 Heaven Scent, 2834027, Encenada, Mexico.

 

2. The Domain Names and Registrar

The domain names in issue are

(1) <rosiesmcalls.com>,

(2) <rosiesmccals.com>,

(3) <rosiesmccall.com>, and

(4) <rosiemccalls.com> (hereafter "the domain names").

The domain names were registered with Gandi, 38 rue Notre-Dame de Nazareth, F-75003 Paris, France.

Domain names (1) – (3) were registered on November 17, 2000. Domain name (4) was registered on November 18, 2000.

 

3. Procedural History

(1) The Complaint in Case No. D2000-1741 was filed in email form on

December 13, 2000, and in hardcopy on December 15, 2000. Prior to the Respondent being notified of the Complaint and prior to the Center’s formal requirements compliance check, on January 2, 2001 the Complainant amended its Complaint and filed it with the Center. The Respondent was notified of the Amended Complaint (hereafter the "Complaint").

(2) The WIPO Arbitration and Mediation Center has found that:

- the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy;

- payment for filing was properly made;

- the Complaint complies with the formal requirements;

- the Complaint was properly notified in accordance with the Rules, paragraph 2(a);

- a Response to the Complaint was not filed;

- the Respondent was appropriately served with a Notice of Default; and that

- the Administrative Panel was properly constituted.

As Panelist, I accept these findings.

(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

(4) There have been neither further submissions nor communications from the Complainants and Respondent, or their representatives, after the appointment of the Panel.

(5) The date scheduled for issuance of a decision is February 21, 2001.

(6) No extensions have been granted or orders issued in advance of this decision.

(7) The language of the proceedings is English.

 

4. Factual Background

A. The Complainants and their marks

(i) Gruner+Jahr

The McCall Pattern Company is the current owner of the federally registered trademark MCCALL’S in the United States. The McCall Pattern Company currently holds numerous US trademark registrations for its family of MCCALL’S trademarks.

Gruner+Jahr is the exclusive licensee of the trademarks MCCALL’S from the McCall Pattern Company (through predecessors in interest). The licence operates throughout the world for, inter alia, magazines. The MCCALL’S trademarks have been used by Gruner+Jahr and prior owners and/or assignees for magazines in the United States since at least as early as 1897. McCall’s magazine is issued monthly with a circulation in the United States of approximately 4.2 million annually. Gruner+Jahr has, for many years, continuously used the trademark MCCALL’S for merchandising as well as for travel-related services.

Gruner+Jahr has spent millions of dollars annually worldwide on various types of advertising involving the MCCALL’S marks.

(ii) Ms O’Donnell and Lucky Charms

Ms O’Donnell is a well-known television personality and is commonly known to the public by her first name "Rosie". Ms O’Donnell has been the host of the daytime talk show entitled "The Rosie O’Donnell Show" since June 1996 and has appeared in numerous television specials, television guest spots, films, and on Broadway. Since at least as early as 1984, Ms O’Donnell has used the name "Rosie" professionally for entertainment services and for authorized merchandising products.

Lucky Charms, a corporation wholly owned by Ms O’Donnell, is the proprietor of the following US registered trademarks or applications:

ROSIE O’DONNELL for, among other things, production of motion pictures; entertainment in the nature of a live television show and a web page with information about television shows, (US Registration No. 2,230,599);

THE ROSIE O’DONNELL SHOW for, among other things, entertainment in the nature of a television show which is broadcast via television and the global computer network, (US Registration No. 2,213,051);

ROSIE (in block form and in stylised form), for, among other things, television broadcasting services; entertainment in the nature of a live television show; providing information about a television personality and her television show via a global computer network, (US Application Serial Nos. 76/115061 and 76/115074 (the "ROSIE" trade mark).

Ms O’Donnell is active in social causes, gun control and children’s causes, including adoption. Ms O’Donnell is well known for her child advocacy and has established a charitable foundation, funded primarily by her and through her efforts, to provide services and benefits to children in need. She is also well known for her support of Al Gore and the Democratic Party in general. The salience of these facts will become clear shortly.

(iii) G+J McCall’s

G+J McCall’s LLC was created for the express purpose of creating a magazine, entitled Rosie’s McCall’s. On November 16, 2000, it was publicly announced to the media that Rosie O’Donnell and Gruner+Jahr were teaming up to re-launch the women’s magazine McCall’s. It was announced that the new magazine would have the title Rosie’s McCall’s. Articles and announcements mentioning the venture between Rosie and Gruner+Jahr appeared in various magazines, newspapers and on-line sources from as early as November 16, 2000.

B. The Respondent

According to Network Solutions, Inc. WHOIS database and Gandi’s WHOIS database, the Respondent in this administrative proceeding is Savior Baby, with an address as listed above. The Administrative Contact is listed as Savior Baby with an address as listed above. No Response was filed and so no further information is known about the Respondent.

C. The Use of the Domain Names

As of the date of the Complaint each of the domain names redirected to the web site for <partialbirthabortion.com> which itself links to <partialbirthabortions.com> depending upon the specific page viewed. The web sites for <partialbirthabortion.com> and <partialbirthabortions.com> convey anti-abortion messages, provide links to the sale of various goods and services, and request donations. The sites have political content, as evidenced by the language "Presidential Voter Guide, Al Gore Supports This."

As of the date of decision, the disputed domain names redirected users to other anti-abortion web sites, <operationrescue.org> and <prolife.com>.

 

5. Parties’ Contentions

A. The Complainants’ assertions

The Respondent's domain names are identical and|or confusingly similar to the MCCALL’S and ROSIE marks. The Complainant asserts:

(1) The disputed domain names used and registered by Respondent are nearly identical to the magazine title, Rosie’s McCall’s.

(2) The typographical errors in each of the disputed domain names do not alter the fact that the domain names are nearly identical or confusingly similar to the respective marks in which each of the Complainants has rights.

The Respondent has no legitimate interest or rights in the domain names. The Complainant asserts:

(1) The Respondent has no relationship with any of the Complainants nor have Complainants granted Respondent permission to use the disputed domain names.

(2) Respondent has not used the domain names in connection with any bona fide offering of goods or services before notice of this dispute, pursuant to Paragraph 4.c.(i) of the Policy.

(3) The domain names are not currently used as URLs for any web site. The domain names have previously redirected users to the web sites for <partialbirthabortion.com> and <partialbirthabortions.com>, and currently redirect users to the web sites for <operationrescue.org> or <prolife.com>, each of which are owned by different third parties.

(4) There is no reasonable or plausible explanation for selection of the disputed domain names other than Respondent’s intention to divert Internet users attempting to access information regarding Rosie’s McCall’s to Respondent’s web sites by trading on the fame of the Complainants’ trademarks, in order to embarrass Complainants and/or to tarnish the trademarks.

(5) The Respondent is not commonly known by the disputed domain names, pursuant to Paragraph 4.c.(ii) of the Policy.

(6) Respondent has not made any legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainants’ trademarks, pursuant to Paragraph 4.c. (iii) of the Policy. The Respondent does not use the disputed domain names as complaint or criticism sites or to voice opinions regarding Complainants, but for commercial gain to misleadingly divert consumers and /or to tarnish the Complainants’ trademarks.

(7) Respondent’s use of the disputed domain names does not constitute fair use since it is a commercial use and creates a likelihood of confusion as to sponsorship or affiliation.

The Respondent registered the domain names and is using them in bad faith, pursuant to Paragraph 4.b.(ii) and 4.b.(iv) of the Policy. The Complainant asserts:

(1) The Respondent seeks to take advantage of the owners of famous trademarks and intends to intentionally attract, for commercial gain, traffic to its own site or other on-line location by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation, or endorsement of its web site or other on-line location or of a product or service on its web site or other on-line location. As such, Respondent’s activities correspond to those listed in paragraph 4.b.(iv) of the Policy as evidence of bad faith registration and use of a domain name.

(2) The only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainants’ trademarks for commercial gain, to embarrass Complainants and/or to tarnish the trademarks. Where no plausible explanation has been provided for adopting a domain name that corresponds to the name of a famous entertainer, other Panels have found a violation of the Policy.

(3) Respondent’s registration of the disputed domain names prevents Complainants from reflecting the Rosie’s McCall’s title in a corresponding domain name, and Respondent has engaged in a pattern of such conduct in violation of Section 4.b.(ii) of the Policy.

(4) The Respondent’s provision of false contact information constitutes further evidence of Respondent’s bad faith.

Accordingly the Panel should order that the domain names be transferred to the Complainant.

B. The Respondent’s assertions

The Respondent has not filed a Response.

 

6. Discussion and Findings

Substantive Findings

Paragraph 4.a. of the UDRP requires the Complainant to make out three elements:

A. The Complainant has rights in a trade or service mark, with which Respondent’s domain name is identical or confusingly similar (Paragraph 4.a.(i)); and

B. The Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4.a.(ii)); and

C. The Respondent registered and is using the domain name in bad faith (Paragraph 4.a.(iii)).

A. The Complainant has rights in a trade or service mark, with which Respondent’s domain name is identical or confusingly similar.

There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name(s) is|are identical or confusingly similar to the marks.

The relevant marks in issue here are the ROSIE and MCCALL’S trade marks, and here we face the somewhat unusual situation that they are owned by two different Complainants. However we are not faced with two unrelated Complainants; but rather a trade mark licensee and a trade mark owner who are engaged in a joint venture branded with both marks. Though there is nothing in the UDRP that addresses this issue specifically, there is no obvious reason why this should change the analysis under Paragraph 4.a.(i). I conclude that the Complainants Gruner+Jahr and Lucky Charms have established the first requirement of this paragraph, on the basis that they are licensee and owner of the registered trade marks that apply to these domain names.

The second requirement is that the domain name(s) be identical or confusingly similar to the marks. Here the Complainants assert that the domain names are identical or confusingly similar to their marks, based on two main arguments:

(1) The disputed domain names used and registered by the Respondent are nearly identical to the magazine title, Rosie’s McCall’s.

(2) The typographical errors in each of the disputed domain names do not alter the fact that the domain names are nearly identical or confusingly similar to the respective marks in which each of the Complainants has rights.

In support of this latter assertion, the Complainants cite a number of Administrative Panel decisions which have held domain names containing misspellings of the trademarks of others to be confusingly similar to such trademarks. These cases cited include Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323; Geocities v. Geociites.com, WIPO Case No. D2000-0326; Microsoft Corporation v. Microsof.com aka Tarek Ahmed, WIPO Case No. D2000-0548; Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, WIPO Case No. D2000-0578. Other decisions have concluded in similar terms: see Yahoo! Inc. v. Eitan Zviely, et al., WIPO Case No. D2000-0273; Microsoft Corporation v. Global Net 2000, Inc., WIPO Case No. D2000-0554; Yahoo! Inc. and GeoCities v. Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc., WIPO Case No. D2000-0587; Letsbuyit.com v. Stephen Ward, WIPO Case No. D2000-0680; Yahoo! Inc. and GeoCities v. Cupcakes, Cupcake city, Cupcake Confidential, Cupcake-Party, Cupcake Parade,and John Zuccarini, WIPO Case No. D2000-0777; Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415; VeriSign, Inc. v. Onlinemalls, WIPO Case No. D2000-1446.

The domain names here are clearly confusingly similar to the two marks detailed above. They are prima facie similar on their faces to the marks; and I happily adopt the reasoning of the Administrative Panel decisions cited above, which concluded that minor punctuation alterations do not affect the confusing similarity. This is particularly so when one considers that both marks are rendered together in the domain name. Anyone chancing upon any of the domain names will inevitably assume that the two in combination are associated with the Complainants.

The Complainants have therefore shown that they have rights in trade marks, and that the domain names are confusingly similar to these marks. I conclude therefore that the Complainants have satisfied the requirements of paragraph 4.a.(i) of the UDRP.

B. The Respondent has no rights or legitimate interests in respect of the domain name.

The Complainant asserts that the Respondent has no rights or legitimate interests in the domain name, as required under paragraph 4.a.(ii) of the UDRP. It makes a number of specific arguments on this point, given above in section 5. These assertions go to the issues expressed in Paragraph 4.c. of the UDRP.

In the absence of any Response it is relevant to consider whether any of the defences provided in Paragraph 4.c. might apply. Paragraph 4.c. of the UDRP provides the following examples to the Respondent:

"(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

It is important to consider these defences, even in the absence of a Response. We should not lightly affect the Respondent’s interests in its domain names without due consideration of the Paragraph 4.c. defences.

Considering Paragraph 4.c.(i): could the Respondent demonstrate its legitimate interest or rights by preparations to use the names in a bona fide offering of services? Clearly this is not applicable here. The domain names are not currently used as URLs for web sites. The domain names have previously redirected users to the web sites for <partialbirthabortion.com> and <partialbirthabortions.com>, and currently redirect users to the web sites for <operationrescue.org> or <prolife.com>. Each of these sites are owned by different third parties. The Respondent cannot rely on Paragraph 4.c.(i).

Considering Paragraph 4.c.(ii): could the Respondent demonstrate its legitimate interest or rights by a demonstration that it has been commonly known by the domain name, even without trade or service mark rights? There is no evidence that this is applicable here, and the Respondent’s name is clearly fictitious. Paragraph 4.c.(ii) is inapplicable.

Considering Paragraph 4(c)(iii): has the Respondent engaged in fair or non-commercial legitimate use? All of these web sites to which the domain names resolve involve anti-abortion political content. This of itself however does not make the domain names fair use, since there is no connection between the domain names and the subject matter of the web sites they resolve to; see The Chicago Tribune Company v. Jose P. Varkey, WIPO Case No. D2000-0133; Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300. It is obvious that the Respondent is trying to embarrass the Complainants – especially Ms O’Donnell – or trade off their marks in some way. It is not "fair or legitimate non-commercial use" to direct the domain names to political commentary that may be perceived as inflammatory or contrary to Ms O’Donnell’s political viewpoint. Paragraph 4.c.(iii) does not apply.

As a result I conclude that, even if I were to take the interpretation most favourable to the Respondent, it has no rights or legitimate interest in the domain name. I conclude that the Complainant has satisfied the requirements of paragraph 4.a.(ii) of the UDRP.

C. The Respondent registered and is using the domain name in bad faith.

The final issue is that of bad faith registration and use by the Respondent. For Paragraph 4.a.(iii) of the UDRP to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and continues to use it in bad faith. Circumstances evidencing both of these requirements are outlined in Paragraph 4.b. of the UDRP, and the Complainant here argues that both Paragraph 4.b.(ii) and 4.b.(iv) of the UDRP apply in this case.

Clearly Paragraph 4.b.(ii) applies. The Respondent’s registration of the disputed domain names prevents the Complainants from reflecting the Rosie’s McCall’s title – which is to say, their trade marks – in a corresponding domain name, and Respondent has engaged in a pattern of such conduct. In Smoky Mountain Knife Works v. Deon Carpenter, eResolution Case Nos. AF-230ab, the Panel concluded that it is possible for an abusive registrant to fall foul of this paragraph by targeting a single entity, and registering multiple domains which reflect either different aspects of the target’s business, or different alphabetic variations of the target’s trademark.

I accept and endorse the reasoning from this case, and conclude that the multiple domain name registrations in this proceeding are a "pattern of conduct" for the purposes of Paragraph 4.b.(ii). Since the registrations prevent the Complainants from reflecting their marks in corresponding domain names, the requirements of Paragraph 4.b.(ii) are made out.

Paragraph 4.b.(iv) also applies here: the Respondent seeks to attract, for commercial gain, traffic to its own site or other on-line location by creating a likelihood of confusion with the Complainants’ trade marks as to the source, sponsorship, affiliation, or endorsement of its web site or other on-line location or of a product or service on its web site or other on-line location.

The Respondent has registered and used the domain names in bad faith. I conclude that the Complainants have satisfied paragraph 4.a.(iii) of the UDRP.

Appropriate transferee

In general a Complainant, having satisfied all elements of Paragraph 4.a, can expect transfer of a disputed domain name to it. However in this instance there are multiple Complainants and it is not practicable to order the transfer of the domain name to all of them. The UDRP is – unfortunately, but unsurprisingly – silent on this issue. Paragraph 4.i. of the UDRP provides only that the remedies available include "transfer of … [the] domain name registration to the complainant".

The Complainants request that the domain names be transferred to G+J McCall’s LLC. Since the evidence is that this entity has been set up to produce the Rosie’s McCall’s magazine, this appears to be the appropriate entity to hold the domain name. This is not inconsistent with Paragraph 4.i. of the UDRP. It does, however, result in the unusual situation that neither of the trade mark proprietors will be the owner of the domain name. However where there are two or more Complainants a solution such as this appears to be the obvious way to protect the interests of all Complainants.

 

7. Decision

The Complainants have made out all of the elements of paragraph 4.a. of the Uniform Domain Name Dispute Resolution Policy.

Pursuant to Paragraph 4.i. of the Uniform Domain Name Dispute Resolution Policy and Rule 15 of the Rules for the Uniform Domain Name Dispute Resolution Policy, the requested remedy is granted.

I hereby order that the domain names <rosiesmcalls.com>, <rosiesmccals.com>, <rosiesmccall.com>, and <rosiemccalls.com> be transferred forthwith to the second-named Complainant, G+J McCall’s LLC.

 

 

Dan Hunter
Sole Panelist

Dated: February 21, 2001