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. CPIC NET
1. The Parties
The Complainants are: Gruner + Jahr Printing & Publishing Co. ("G + J"), a partnership organized under the laws of the State of Delaware, U.S.A. with its principal place of business at 375 Lexington Avenue, New York, New York 10017, U.S.A.; G + J McCall's LLC, a limited liability company organized under the laws of the State of Delaware, U.S.A. with its principal place of business at 375 Lexington Avenue, New York, New York 10017, U.S.A.; Rosie O'Donnell, a United States citizen with an address at The Rosie O'Donnell Show, 30 Rockefeller Plaza, Suite 800E, New York, New York 10112, U.S.A.; Lucky Charms Entertainment, Inc., a corporation organized under the laws of the State of California with a principal place of business at 500 Lake Street, Suite D, Ramsey, New Jersey 07446, U.S.A.
The representative for the Complainants in this proceeding is: Lisa Rosenburgh, Esq., Squadron, Ellenoff, Plesent & Sheinfeld, LP, 551 Fifth Avenue, New York, New York 10176, U.S.A.
The Respondent in this proceeding is the entity CPIC NET, whose address is at 15 5th Street, Closter, New Jersey 07624, U.S.A.
2. The Domain Name and Registrar
The domain name in dispute is: <rosiesmccalls.com>.
The registrar for the disputed domain name is Network Solutions, Inc. ("NSI"), 505 Huntmar Park Dr., Herndon, Virginia 20170, U.S.A.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Domain Name Dispute Resolution Policy (the Policy) and the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Center, the Supplemental Rules).
The Complaint was filed on December 15, 2000. On December 21, 2000, the Center requested that the Registrar NSI check and report back on the registrant for the domain name <rosiesmccalls.com>. On December 22, 2000, NSI reported to the Center that the registrant was the Respondent in this proceeding: CPIC NET.
On January 3, 2001, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail and this proceeding officially began. Respondent did not respond within the twenty (20) day time limit (the Rules para.5(a)) and was declared in default on January 23, 2001.
The Administrative Panel submitted a Declaration of Impartiality and Independence on January 30, 2001, and the Center proceeded to appoint the Panel on February 1, 2001.
The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
This Decision is due by February 13, 2001.
4. Factual Background
G + J is the exclusive licensee of the trademark MCCALL'S for, inter alia, magazines. G + J and its predecessors in interest have used the trademark in the United States since at least 1897. Rosie O'Donnell is a well-known United States television personality and is commonly known to the public by the name "Rosie". Her daytime television talk show "The Rosie O'Donnell Show" has been broadcast since June 1996. Lucky Charms, a corporation wholly owned by Rosie O'Donnell, is the owner of the trademarks "ROSIE O'DONNELL" and "ROSIE" for motion pictures and television entertainment.
G + J McCall's LLC was created to publish the magazine "Rosie's McCall's". On November 16, 2000, it was publicly announced that Rosie O'Donnell and G + J were teaming up to re-launch the women's magazine McCall's, and that the new magazine would be called "Rosie's McCall's" ( Complaint, Attachment K).
Also on November 16, 2000, the Respondent registered the disputed domain name <rosiesmccalls.com>. On November 28, 2000, Complainants wrote to Respondent alleging trademark infringement and demanding that the domain name be transferred to the Complainants (Exhibit M). Respondent did not reply, and in consequence, Complainants have lodged this proceeding attempting to have the disputed domain name transferred to them.
5. Parties' Contentions
- The MCCALL'S mark was both famous and distinctive at the time Respondent registered the disputed domain name. In addition, U.S. federal registration of the MCCALL'S mark confers constructive notice.
- Rosie was commonly known by the name "Rosie" at the time Respondent registered the disputed domain name, and Respondent knew this. Rosie was famous and distinctive at the time Respondent registered the disputed domain name.
- Respondent was aware of the public announcement of November 16, 2000 about the creation of Rosie's McCall's magazine.
- The disputed domain name registered by Respondent incorporates the famous MCCALL'S trademark as well as the famous ROSIE trademarks. Therefore the disputed domain name is confusingly similar to these trademarks.
- The disputed domain name registered by Respondent is nearly identical to the magazine title, Rosie's McCall's.
- Respondent has no rights or legitimate interests with respect to the disputed domain name, pursuant to Section 4 (c) of the Policy. Respondent has no relationship with any of the Complainants, nor have Complainants granted Respondent permission to use the disputed domain name.
- The disputed domain name has never been used as a URL.
- 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 and to prevent Complainants from registering the disputed domain name. The Respondent has engaged in a pattern of this conduct in bad faith per Section 4(b)(ii) of the Policy.
- The disputed domain name should be transferred to the Complainants.
The Respondent did not file contentions and is in default in this proceeding.
6. Discussion and Findings
In order for the Complainants to prevail and have the disputed domain name <rosiesmccalls.com> transferred to themselves, Complainants must prove the following (the Policy, para 4(a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The disputed domain name is <rosiesmccalls.com>. The Complainants have shown that they have trademark rights in the names Rosie and MCCALL'S , and that they had formulated plans to call the former McCall 's magazine "Rosie's McCall's" magazine. The Complainants have provided printouts of their United States Patent and Trademark Office registrations for MCCALL'S and for Rosie O'Donnell (respectively, registration no. 555,927 dated March 11, 1952 in international class 16 for magazines; and Rosie O'Donnell, registration no. 2,230,599 dated March 9, 1999 in international class 41, motion pictures and entertainment). The Panel finds the disputed domain name is confusingly similar to the names in which the Complainants have demonstrated trademark rights.
Legitimate Rights or Interests
The Complainants aver not to have authorized the Respondent to reflect their marks in the disputed domain name. The Respondent, being in default in this proceeding, has not attempted to demonstrate it has legitimate rights or interests in the disputed domain name per the Policy 4 (c). As a result, the Panel finds the Respondent has no legitimate rights or interests in the disputed domain name.
Registered and Used in Bad Faith
The Panel is struck by the co-incidence of Complainants' announcement of the new magazine Rosie's McCall's and Respondent's registration of the disputed domain name, both on November 16, 2000 (Exhibits A and K). It appears to the Panel that the Respondent registered the disputed domain name in a calculated attempt to gain an asset it forsaw would rapidly appreciate in value, ie, it registered the name intending to sell it for far more than it paid for it in violation of the Policy at 4(b)(i) (See also the early ICANN Case A.P. Moller v. Web Society, WIPO Case D2000-0135, April 15, 2000).
Similarly, the Panel is convinced that the Respondent registered the domain name in order to prevent the Complainants from registering it--the better to sell it back to Complainants who would need it for their new magazine. The Complainants have shown that Respondent has engaged in a pattern of this conduct in violation of Section 4(b)(ii) of the Policy: among the famous names Respondent has registered we find Bertelsmann, ATT and Sprint.
The Panel finds the Respondent registered and was using the domain name in bad faith.
Therefore, pursuant to ICANN Policy para 4(i) and Rule 15, the Panel orders that the registrar NSI transfer the disputed domain name <rosiesmccalls.com> from the Respondent, CPIC NET, to the Complainants, Gruner + Jahr Printing & Publishing Co./G + J McCall's LLC, Rosie O'Donnell and Lucky Charms Entertainment, Inc.
Dennis A. Foster
Dated: February 13, 2001