World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Television Food Network, G. P. d/b/a “Food Network” v. Dores Dickerson

Case No. DCO2010-0025

1. The Parties

Complainant is Television Food Network, G. P. d/b/a “Food Network” of New York, New York, United States of America, represented by Frost Brown Todd LLC, United States of America.

Respondent is Dores Dickerson of New York, New York, United States of America.

2. The Disputed Domain Name and Registrar

The Disputed Domain Name <foodnetwork.co> is registered with My.CO Gateway.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2010. On October 7, 2010, the Center transmitted by email to My.CO Gateway a request for registrar verification in connection with the Disputed Domain Name. On October 11, 2010, My.CO Gateway transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on October 14, 2010.

The Center verified that the Complaint together with the amended 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 October 21, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 11, 2010.

The Center appointed Richard W. Page as the sole panelist in this matter on November 17, 2010. 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 has for over 10 years been engaged in the business of creating products and services in the cooking and culinary art industry, including cable television broadcasting services and the provision of culinary arts information online at its website “www.foodnetwork.com”, all of which have been under the trademark FOOD NETWORK (the “FOOD NETWORK Mark”).

Complainant made its television airing debut in 1993. Since that time Complainant’s television viewing audience has grown exponentially. Its network is currently distributed to more than ninety-nine (99) million households in the United States alone, and its branded programming has been licensed for airing in 142 countries and territories across the globe, including Canada, the United Kingdom of Great Britain and Northern Ireland and Asia, making it one of the largest television networks devoted to cooking, the culinary arts and its corresponding culinary lifestyle, in the world.

In addition to being one of the most viewed cable television networks devoted to cooking and the culinary arts, Complainant provides information on cooking and culinary arts via its website at “www.foodnetwork.com” and has been doing so since at least as early as 1996. Today Complainant’s website averages more than eight (8) million unique visitors per month; a website that focuses on everything from recipes for the beginner and the novice, to kitchen safety guidance, to articles and tips from celebrities, all under the FOOD NETWORK Mark. In addition, Complainant’s electronic newsletter, offered through <foodnetwork.com> currently has over two (2) million subscribers.

Each year Complainant spends millions of dollars on advertising, marketing and promotional materials with the FOOD NETWORK Mark in connection with offering its cooking and culinary arts television broadcasting, online services and related products.

The “.co” domain names became available to the general public for registration on July 20, 2010. Respondent appears to have registered the Disputed Domain Name on July 20, 2010.

5. Parties’ Contentions

A. Complainant

Complainant alleges that it owns numerous trademark registrations, including registration numbers 2,771,532 and 2,791,044 which are incontestable, thus creating conclusive evidence of their validity under 15 U.S.C. §1115(b). Complainant further alleges that it has used the phrase FOOD NETWORK as a trademark continuously and exclusively in connection with its cooking and culinary services since at least as early as 1996.

Complainant alleges that it has enforceable trademark rights in the FOOD NETWORK Mark.

Complainant contends that the Disputed Domain Name includes the entirety of the FOOD NETWORK Mark and that the addition of the “.co” suffix is not distinctive.

Complainant further contends that Respondent has no rights or legitimate interest in the Disputed Domain Name or any license from Complainant to use the FOOD NETWORK Mark. Complainant contends that Respondent’s name contains no part of the Disputed Domain Name and that Respondent is not offering any bona fide offering of goods or services in connection with the Disputed Domain Name.

Complainant provides evidence that the Disputed Domain Name resolved to a placeholder website with categories of links unauthorized by Complainant and in many instances directing potential customers to competitive products and services. Complainant asserts that in response to a cease and desist letter from Complainant’s outside counsel, Respondent re-directed the Disputed Domain Name to another website “www.girlscoutsappalachian.org” and that to date Complainant has received no response from Respondent.

Complainant alleges that Respondent’s use is a classic “pay-per-click” scheme and further alleges that the scheme is of the type recognized by numerous panels as possible evidence of bad faith conduct under paragraph 4(b)(iv) of the Policy.

Complainant contends that even if Respondent has separated itself from directly benefiting from a “pay-per-click” scheme, Respondent is retaining control of the Disputed Domain Name and its Name Servers.

Complainant alleges that Respondent had prior knowledge of Complainant’s rights in the FOOD NETWORK Mark and then registered and used the Disputed Domain Name to redirect Internet users to a third party website with content creating confusion as to whether the website was sponsored by or related to Complainant.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Because both Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether Complainant has met its burden as established by paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, WIPO Case No. D2000-1772.

A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and respondent would be subject to the inferences that flow naturally from the information provided by complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System S.a.S., NAF Claim No. 94637; David G. Cook v. This Domain is For Sale, NAF Claim No. 94957 and Gorstew Limited and Unique Vacations, Inc. v. Travel Concierge, NAF Claim No. 94925.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Paragraph 4(a) of the Policy directs that Complainant must prove each of the following:

i) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and,

ii) that Respondent has no rights or legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant claims ownership in many trademark registrations, including registration numbers 2,771,532 and 2,791,044 which are incontestable, thus creating conclusive evidence of their validity under 15 U.S.C. §1115(b). Complainant further claims it has used the phrase FOOD NETWORK as a trademark continuously and exclusively in connection with its cooking and culinary services since at least as early as 1996.

Each year Complainant spends millions of dollars on advertising, marketing and promotional materials with the FOOD NETWORK Mark in connection with offering its cooking and culinary arts television broadcasting, online services and related products.

For purposes of this proceeding, these allegations are sufficient to establish that Complainant has enforceable rights in the FOOD NETWORK Mark.

Complainant contends that the Disputed Domain Name includes the entirety of the FOOD NETWORK Mark and that the addition of the “.co” suffix is not distinctive. Complainant further contends that this makes the Disputed Domain Name identical with and confusingly similar to the trademark pursuant to the Policy, paragraph 4(a)(i).

As numerous courts and prior UDRP panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (finding that QUIXTAR and <quixtarmortgage.com> are legally identical).

The Panel notes that the entirety of the FOOD NETWORK Mark is included in the Disputed Domain Name.

Respondent has not contested the assertions by Complaint that the Disputed Domain Name is confusingly similar to the FOOD NETWORK Mark.

Therefore, the Panel finds that the Disputed Domain Name is identical with and confusingly similar to the FOOD NETWORK Mark pursuant to the Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy, paragraph 4(a)(ii).

Paragraph 4(a)(ii) of the Policy requires Complainant to prove that Respondent has no rights to or legitimate interests in the Disputed Domain Name. Once a complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to respondent to rebut the showing. The burden of proof, however, remains with complainant to prove each of the three elements of paragraph 4(a) of the Policy. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

Complainant further contends that Respondent has no license from Complainant to use the FOOD NETWORK Mark. Complainant contends that Respondent’s name contains no part of the Disputed Domain Name and that Respondent is not offering any bona fide offering of goods or services in connection with the Disputed Domain Name.

The Policy, paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.

Complainant has sustained its burden of making a prima facie showing that Respondent lacks rights to or legitimate interests in the Disputed Domain Name.

Respondent has failed to come forward with concrete evidence of use of, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services. See World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306.

The file contains no evidence that the use of the Disputed Domain Name meets the elements for any of the nonexclusive methods provided for in the Policy, paragraph 4(c). Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Disputed Domain Name pursuant to the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith in violation of the Policy, paragraph 4(a)(iii).

The Policy, paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

Complainant alleges that Respondent had prior knowledge of Complainant’s rights in the FOOD NETWORK Mark and then registered and used the Disputed Domain Name to redirect Internet users to a third-party website with content creating confusion as to whether the website was sponsored by or related to Complainant and that Respondent is being paid on a “pay-per-click” basis.

These allegations are sufficient to meet the requirements of the Policy, paragraph 4(b)(iv) and Respondent has chosen not to contest these allegations.

Therefore, the Panel finds, based upon this evidence, that Complainant has shown sufficient facts to support a finding that the Disputed Domain Name was registered and used in bad faith pursuant to the Policy, paragraph 4(a)(iii).

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 Disputed Domain Name <foodnetwork.co> be transferred to Complainant.

Richard W. Page
Sole Panelist
Date: December 7, 2010

 

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