World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Workman Publishing Co., Inc., Patricia Schultz v. ICE

Case No. D2011-0414

1. The Parties

The Complainants are Workman Publishing Co., Inc. (hereinafter “Workman”) and Patricia Schulz of New York, New York, United States of America (hereinafter “Schulz”), both represented by Cowan, DeBaets, Abrahams & Sheppard, LLP, United States of America.

The Respondent is ICE of Leesburg, Virginia, United States of America.

2. The Domain Name and Registrar

The disputed domain name <1000placestosee.com> (hereinafter “Disputed Domain Name”) is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2011. On March 4, 2011, the Center transmitted by email to GoDaddy. com, Inc. a request for registrar verification in connection with the Disputed Domain Name. On March 4, 2011, GoDaddy. com, Inc. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on March 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 30, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2011.

The Center appointed Neil Wilkof as the sole panelist in this matter on April 4, 2011. 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 Disputed Domain Name <1000placestosee.com> was registered on March 4, 2004.

The Complaint states that the Complainants are the owners of the following United States trademark registrations for the mark “1,000 PLACES TO SEE BEFORE YOU DIE”:

United States Reg. No. 3,002,425, filed on February 20, 2004, in international class 16 for calendars and registered on September 27, 2005, jointly in the names of Workman and Schultz.

United States Reg. No. 3,002,424, filed on February 20, 2004, in international class 28 for board games and jigsaw puzzles, and registered on September 27, 2005, jointly in the names of Workman and Schultz.

United States Reg. No. 3,402,248, filed on October 21, 2004, in international class 28 for video discs, pre-recorded DVDs featuring movies and music, and registered on March 25, 2008, jointly in the names of Workman and Schultz.

United States Reg. No. 3,445,645, filed on October 21, 2004, in international class 39 inter alia for computer services in the field of travel via the Internet, and in international class 41, inter alia for various entertainment services, educational services and on-line publication of electronic books, magazines and journals in the field of travel, and registered on June 10, 2008, jointly in the names of Workman and Schultz, and claiming a first use in commerce as of 2003.

United States Registration No. 3,137,137, filed on February 22, 2005, in International Class 16 for a series of non-fiction books in the field of travel, and registered on August 29, 2006, jointly in the names of Workman and Schulz, and claiming a first use in commerce as of 2003.

Copies of the registrations were attached to the Complaint as Exhibit D.

These registrations individually and collectively are hereinafter referred to as the “Mark” or “Marks”.

5. Parties’ Contentions

A. Complainant

Workman is an independent publisher that has been publishing a wide variety of contents, including print and audio books, e-books and calendars, inter alia in the area of travel guides, cookbooks, and pregnancy/parenting guides, for over 40 years. In particular, Workman is the publisher of the New York Times Number One Bestseller book and travel guide, “1,000 Places to See Before You Die” (hereinafter the “Book”), which was published in September 2003.

Schulz is the author of the Book. She followed up the publication of the Book with other travel guides, including “1,000 Places to See in the U.S.A. and Canada Before You Die” and “1,000 Places to See Before You Die Traveler's Journal”. In addition, she has created various “1,000 Places to See” calendars and a television reality show of the same name.

Within the first four months following the publication of the Book (and several months before the registration of the Disputed Domain Name), Complainants had already sold more than 235,000 copies of the Book (at a retail sales price of USD 19.95). In addition, during that period, the Book rose to No. 6 on the New York Times bestseller list. The Book received nearly immediate acclaim in a variety of media sources (copies of such media acclaim are attached as Exhibit C to the Complaint). Based on the number of sales, the press coverage and the notoriety enjoyed by the Book in the initial months after its publication and prior to the registration date of the Disputed Domain Name, the name of the book acquired secondary meaning and goodwill among consumers as being identified uniquely with the series written and published by the Complainants.

Upon information and belief, based on a search on the Internet Archive Wayback Machine (“web. archive.org”), the Complainants contend that the Disputed Domain Name has been parked from at least June 2, 2004 and has remain parked though at least February 22, 2011 on a webpage featuring sponsored links for travel and restaurant deals as well as other travel-related links (sample printouts from 2004 to 2009 are attached as Exhibit E to the Complaint). A printout of the website as it appears as of February 8, 2011, is attached as Exhibit F to the Complaint.

The Complainants state that in August 2010, legal counsel for the Complainants spoke with an attorney representing the Administrative Contact of the Respondent and sought to negotiate a transfer of the Disputed Domain Name. In that call, Counsel for the Complainants offered payment of USD 250 for the Disputed Domain Name. In response, counsel for the Respondent stated that her client was willing to sell the Disputed Domain Name to Complainants for USD 10,000, an amount in excess of the registration fee paid by Respondent.

Complainants allege the following:

1. The Disputed Domain Name is confusingly similar to the Mark.

2. The Respondent has no rights or legitimate interests in the Disputed Domain Name.

3. The Disputed Domain Name was registered and has been used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Consolidation of the Complainants

The Complaint gives rise to a threshold question: are the Complainants permitted to consolidate multiple complainants in a single action? In National Dial A Word Registry Pty Ltd. and others v. 1300 Directory Pty Ltd, WIPO Case No. DAU2008-0021 (adopted with approval by Fulham Football Club (1987) Limited, Tottenham Hostpur Public Limited, West Ham United Football Club PLC, Manchester United Limited, The Liverpool Football Club And Athletic Grounds Limited v. Domains by Proxy, Inc./ Official Tickets Ltd, WIPO Case No. D2009-0331) the Panel, upon reviewing previous decisions given by other panels, articulated the following test to determine whether, having regard to all of the circumstances, it is permitted to consolidate multiple complainants:

“[C]onsolidation of multiple complainants in a single complaint should be permitted if the complainants have a truly common grievance against the respondent, subject to the general condition that is equitable and procedurally efficient do so.”

In this connection, the Panel in MLB Advanced Media, The Phillies, Padres LP v. OreNet, Inc., WIPO Case No. D2009-0985, stated as follows:

“UDRP Panels most often have accepted consolidated complaints in situations where multiple complainants have demonstrated common legal interests in the trademark rights on which a complaint is based. Such situations typically involve shared or common legal interests based on an agency, licensing, or affiliate relationship between the co-complainants.” (Emphasis added by the Panel.) (Citations omitted.)

The question is whether the Complainants have satisfied this test. The Complainant describes Workman as the publisher of the Book bearing the Mark and Schulz as the author of the Book. Moreover, the Complainants are listed as joint owners of the Mark. Based on the foregoing, the Panel is of the view that the Complainants have met the minimum threshold required for showing that the two Complainants have a common legal interest and grievance with respect to the subject matter of this action. Taken as a whole, this is sufficient to meet the “truly common grievance” test set out by the panel decision in National Dial A Word Registry.

B. Identical or Confusingly Similar

The Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainants as true and accurate.

The Complainants are the joint owners of the Mark and such ownership satisfies the threshold requirement that the Complainants have trademark rights. As stated in the Discussion following Question 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“Does Ownership of a registered trademark to which the domain name is identical or confusingly similar automatically satisfy the requirements under paragraph 4(a)(i) of the UDRP?”), “If the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights.” That is the situation here.

It is noted that while the earliest application date of the Mark, February 20, 2004 (and the claimed first use in commerce date of 2003), predates the date of registration of the Disputed Domain Name, being March 4, 2004, the earliest registration date for the Mark postdates the date of registration of the Disputed Domain Name. As stated in the Discussion following Question 1.1, supra, “[t]he location of the trademark, its date of registration (or first use) [. . .], and the goods and/or services for which it is registered, are all irrelevant for the purpose of finding rights under the first element of the UDRP. However, such factors may bear on the panel’s determination whether the respondent has registered and used the domain name in bad faith under the third element of the UDRP” Therefore, for establishing the threshold requirement of establishing trademark rights, these factors are not germane.

While the Disputed Domain Name <1000placestosee.com> is not identical to the Mark, the first and dominant part of the Mark is identical to the Disputed Domain Name. In comparing two marks, or a mark and a domain name, with respect to a likelihood of confusion, special attention should be paid to the first part of the Mark. Here, as noted, the first and dominant part of the Mark is identical to the Disputed Domain Name. As such, the Disputed Domain Name is confusingly similar to the Mark within the meaning of paragraph 4(a)(1) of the Policy.

C. Rights or Legitimate Interests

The Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.

Having regard to the suggested grounds set out in paragraph 4(c) of the Policy, the Respondent has not submitted any response to support the claim that it has a right or legitimate interest in the Disputed Domain Name.

There is no evidence that the Respondent has registered any mark that consists of, or contains the Mark, or any material portion thereof, or that the Respondent has any right in the Mark on an unregistered basis. The name of the Respondent bears no resemblance to the Disputed Domain Name, nor is there any basis to conclude that the Respondent is or has ever been known by it. There is no evidence that the Complainants, or either of them, have entered into any agreement, authorization, license or transfer with Respondent with respect to the use of the Mark. The only “use” by the Respondent of the Mark is in connection with its registration of the Disputed Domain Name. Further, the Respondent is not making a legitimate, noncommercial or fair use of the Disputed Domain Name without intent for commercial gain by misleadingly diverting customers.

Based on the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name.

D. Registered and Used in Bad Faith

The Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.

Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that point to bad faith conduct on the part of a respondent, as follows:

(i) The circumstances indicate that the Respondent has registered the Disputed Domain Name primarily to sell or otherwise to transfer it for valuable consideration to the Complainant, who is the owner of the trademark, or to a competitor of the Complainant.

(ii) The Disputed Domain Name has been registered to prevent the Complainant from reflecting its mark in a corresponding domain name.

(iii) The Disputed Domain Name has been registered primarily for the purpose of disrupting the business of a competitor.

(iv) Use of the Disputed Domain Name indicates an intention to attract Internet users to the Respondent’s website, for commercial gain, by creating a likelihood of confusion.

Since at least June 2004 and through February 2011, the Disputed Domain Name has been parked on a page featuring sponsored links. Such conduct can be viewed as supporting a finding of bad faith under subparagraph 4(b)(iv) of the Policy.

Further, it appears that the Respondent, through its legal counsel, has sought to transfer the Disputed Domain Name for an amount far exceeding the amount of fees paid for its registration. True, it cannot be necessarily concluded that payment of such an amount was the primary reason for registration of the Disputed Domain Name by Respondent per subparagraph 4(b)(i) of the Policy. Nevertheless, this conduct, when it is taken in conjunction with the parking of the Disputed Domain Name, points to bad faith conduct on the part of Respondent.

As noted above, in certain circumstances, when a complainant neither registered nor established requisite unregistered trademark rights in the mark nor claimed a date of first use for a mark prior to the date of registration of a disputed domain name, such a fact situation may refute the claim that a respondent registered and has used a mark in bad faith. As stated in the Discussion to Question 3.1 (“Can bad faith be found if the disputed domain name was registered before the trademark was registered or before the unregistered trademarks rights were acquired”?), “…when a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant’s then non-existent rights.”

The question, therefore, is whether the Complainants established the requisite unregistered trademark rights prior to the date of registration of the Disputed Domain Name (or whether the Respondent had cause to target the mark before it gained further goodwill). The Panel believes that the Complainants have made the required showing that they acquired unregistered trademark rights (what they term “secondary meaning” under United States law) in the Mark prior to the registration of the Disputed Domain Name.

“Secondary meaning” in a literary title is acquired “if, in the minds of a significant number of people, the title is associated with a single source, even if the public does not know the source by name.” Paramount Pictures Corporation v. Pete Gilchrist, WIPO Case No. D2007-0128. In Paramount Pictures, supra, the Panel noted the following non-exhaustive list of factors can be taken into account for establishing secondary meaning in the name of a single book or movie : (i) “the length and continuity of a mark’s use; (ii) sales, advertising and promotional activities; (iii) expenditures relating to promotion and marketing; (iv) unsolicited media coverage, and (v) sales and admission figures.”

In the instant situation, from its launch in September 2003, the book, under the title “1,000 Places To See Before You Die”, enjoyed immediate and sustained commercial success as well as wide-spread media notoriety and critical acclaim (which corresponds to the first use in commerce claimed in some of the Complainant’s trademarks). Under such circumstances, the Panel concludes that the book title acquired secondary meaning and that such secondary meaning was acquired before the registration of the Disputed Domain Name.

Moreover, the Panel is of the view that Registrant was aware of this name when it registered the Disputed Domain Name. From among all the infinite numbers that the Registrant could have selected, it chose the number “1,000”. From among all the possible verbs that the Registrant could have selected, it chose the verb “to see”. From among all the possible objects that the Registrant could have selected, it chose the noun “places.” It is simply not credible in this case that the identity between the Mark and the Disputed Domain Name occurred by chance as a result of a good faith selection by the Respondent.

Having regard to the foregoing, the Panel believes that the circumstances described above support the conclusion that, under Paragraph 4(b) of the Rules, Respondent has registered and used the domain name in bad faith.

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 <1000placestosee.com> be transferred to the Complainant.

Neil Wilkof
Sole Panelist
Dated: April 18, 2011

 

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