WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Jacques Pépin and The Jacques Pépin Foundation v. Domain Administrator, PrivacyGuardian.org / Birk Lee

Case No. D2021-1649

1. The Parties

The Complainant is Jacques Pépin and The Jacques Pépin Foundation, both from United States of America (“United States”), represented by Hinckley, Allen & Snyder, LLP, United States.

The Respondent is Domain Administrator, PrivacyGuardian.org, United States / Birk Lee, United States.

2. The Domain Name and Registrar

The disputed domain name <jacquespepin.com> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2021. On May 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 27, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 2, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on June 4, 2021.

The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2021. The Respondent sent an informal email on June 7, 2021. The Center sent a possible settlement email to the Parties on June 7, 2021. The Complainants responded on June 14, 2021, that they did not wish to suspend the proceeding in order to explore settlement options.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on July 9, 2021. 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.

The Panel issued a Procedural Order on July 12, 2021, asking the Parties for evidence regarding the Respondent’s acquisition of the Domain Name and the Parties’ relationships with KQED TV, which used the Domain Name for more than a decade. Both Parties responded to the Order on July 26, 2021.

4. Factual Background

The Complainant Jacques Pépin (“Pépin”) is an internationally renowned French chef, author, and television personality who has lived and worked chiefly in the United States since 1959. In addition to his position as chef at prestigious French and American restaurants (and for three French heads of state), Pépin has authored 29 books and was formerly a food columnist for the New York Times. He has also written many articles published in Gourmet, Food and Wine,and other magazines.

Many of the books are branded with Pépin’s full or partial name in the title, such as Jacques Pépin: A French Chef Cooks at Home (1975), Everyday Cooking With Jacques Pepin (1982), Jacques Pepin’s Simple and Healthy Cooking (1994), Jacques Pépin’s Table (1995), Jacques Pépin’s Kitchen: Cooking with Claudine (1996), The Complete Pépin (1997), Jacques Pépi’'s Kitchen: Encore with Claudine (1998), Julia and Jacques: Cooking at Home (1999), Jacques Pépin Celebrates (2001), Chez Jacques: Traditions and Rituals of a Cook (2007), Essential Pepin (2011), Jacques Pépin: Heart & Soul in the Kitchen (2015), Jacques Pépin Quick & Simple (2020).

Pépin has also starred or co-starred in television cooking shows in the United States. Pépin became a television personality starting in 1982, hosting “Every Day Cooking.” By 1997, his television series on American public television were branded with his name: “The Complete Pépin” and then “Julia & Jacques Cooking at Home” (with Julia Child, 1999). His 26-episode national television series, “Jacques Pépin: Heart & Soul in the Kitchen”, was produced by KQED-TV in San Francisco, California in 2015-16. Each of these series was accompanied by an illustrated cookbook.

Pépin has received 16 James Beard Foundation Awards for culinary excellence, including the Lifetime Achievement Award in 2005. In 2015 he received the American Public Television Lifetime Achievement Award as well as the inaugural Julia Child Award. He was awarded La Légion d’Honneur (France’s highest civilian honor) in 2004, following the Chevalier des Arts et Lettres in 1997.

Since 1989, Pépin has also been an educator in culinary arts, teaching at Boston University and the International Culinary Center in New York City.

Pépin operates a website at “www.jacquespepin.org” (the “Complainant Pépin’s website”) and also holds the domain name <jacquespepin.net>, which redirects to that website.

In November 2006 Pépin applied for United States trademark registration of JACQUES PEPIN as a standard character mark. This was registered as Trademark Registration Number 3287524 on September 4, 2007.

The Complainant Jacques Pépin Foundation (“JPF”) is a nonprofit corporation organized under the laws of the State of Rhode Island, United States in June 2016. JPF “supports community kitchens that offer free life-skills and culinary training to adults with high barriers to employment, including previous incarceration, homelessness, substance abuse issues, low skill and educational attainment, and lack of work history”. Pépin licenses the JACQUES PEPIN mark to JPF for use in its nonprofit work. Thus, both Complainants have rights in the mark and are proper parties in this proceeding. (JPF also has a pending application to register the mark JACQUES PEPIN FOUNDATION in the United States, but this is not claimed as a basis for the current proceeding.)

JPF operates a website at “www.jp.foundation” (the “Complainant JPF’s website”).

According to the Registrar, the Domain Name was created on April 5, 1999 and is currently registered in the name of the Respondent domain privacy service. After receiving notice of the Complaint in this proceeding, the Registrar identified the underlying registrant as the Respondent Birk Lee of the United States. Mr. Lee is accordingly referred to hereafter as the Respondent.

The Complaint asserts “on information and belief” that the Respondent registered the Domain Name in 1999 and states that the Complainants took no action because “they mistakenly believed that the Domain was owned and controlled by public broadcasting station KQED, which had produced two of Pépin’s television series.”

The Complaint does not describe the use of the Domain name over the past two decades but reports that the Domain Name now redirects to the Complainant JPF’s website.

The Respondent sent an email to the Center on June 7, 2021 saying that he received an email in 2019 requesting that he redirect the Domain Name from KQED’s website to the Complainant JPF’s website, and that he did so. The Respondent’s email reads in part as follows:

“After a brief review of the document(s), I am disappointed that I have received a legal (?) and/or whatever claim from someone that claims to represent Jacques Pepin, rather then [sic] just approaching me to see if a simple conversation could be worked out to their satisfaction. It really doesn’t seem like something that Jacques Pepin would instruct someone or an organization to do, and just seems to be the workings of a corporation just strong arming an individual as myself.

I especially see that something is ‘fishy’ or manipulative about this Complaint, because on page 8, section C, Line 28, it states that I'm acting in bad faith because the domain is pointed to them. On October 25, 2019 Andrew Griffin [at a KQED email address] claimed to be working with the Jacques Pepin Foundation and requested that I redirect the domain from kqed to them. I didn’t ask for proof, and did so as requested. So unless I was misled by Andrew Griffin and kqed, or he was misled and was not really acting at the direction of the Jacques Pepin Foundation, then I would say that there is something strange about the Complaint saying that I am pointing the domain to them, because THAT’S WHAT THEY WANTED.

Also, in that section, it says that I’m trying to ‘capitalize’ on it. In my mind that means money. I would like

the Jacques Pepin Foundation to clearly show how I am making ANY MONEY on this?

If this Complaint is REALLY from an organization that is representing Jacques Pepin, then I would be

interested in a dialogue with them.”

The Respondent’s message does not explain when or why the Respondent registered the Domain Name.

The Center advised the Parties on procedures for pursuing settlement but received no request for suspension of the proceedings from the Complainant.

The Panel notes that screenshots stored by the Internet Archive’s Wayback Machine show that the Domain Name resolved to a landing page with the same “under construction” message from 1999 through 2006, with no evidence of use for pay-per-click (“PPC”) advertising or other commercial purposes. Beginning in January 2009, the screenshots associated with the Domain Name show a website operated by San Francisco public television station KQED, advertising the Complainant Pépin’s television series that KQED produced, “Jacques Pépin: More Fast Food My Way”, the sequel to “Jacques Pépin: Fast Food My Way”, and later “Jacques Pépin Heart & Soul”, as well as the associated cookbooks and DVDs. From February 2021 the Domain Name redirected to the food page of “www.kqed.org”, the television station’s website. At the time of this Decision, the Domain Name redirects to the Complainant JPF’s website.

The Parties’ respective accounts clearly left important gaps in the history of this 22-year-old Domain Name, omitting facts material to a determination of the elements of the UDRP Complaint. In response to the Panel’s Administrative Order, the Parties furnished additional statements and evidence concerning the registration and use of the Domain Name, which may be summarized as follows:

1. The Respondent acknowledges that he registered the Domain Name in 1999, “as a fan and admirer of Jacques Pepin”.

2. The Respondent states that he has not had “the time nor resources to develop the fan page as I have desired to so yet”.

3. The Respondent says he has not worked for KQED but “obliged to some of KQED requests” on the assumption that they represented Mr. Pépin, first redirecting the Domain Name to the KQED website and then to another website at their request.

4. The Complainants document that KQED has produced Mr. Pépin’s various television series since the early 1990s, giving KQED permission to use Mr. Pépin’s name and mark and ultimately authorizing KQED to negotiate on Complainants’ behalf with respect to the Domain Name.

5. The Complainants furnish a copy of a letter dated January 20, 2009, from KQED’s general counsel to the Respondent demanding transfer of the Domain Name to the Complainant Mr. Pépin. A declaration by a representative of the Complainants recounts that KQED repeatedly asked the Respondent on their behalf to transfer the Domain Name, but that the Respondent declined to do more than redirect the Domain Name.

5. Parties’ Contentions

A. Complainants

The Complainants assert that “Pépin acquired common law trademark rights decades ago in his name, JACQUES PEPIN (the ‘Mark’), as a result of his widespread use of his name in commerce as an indication of the source of his goods and services.” Since 2007 the Complainant Pépin has held a registered United States trademark for JACQUES PEPIN. The Complainants assert that the Domain Name is confusingly similar with this common law and registered mark.

The Complainants contend that the Respondent has never been known by a corresponding name and has no rights or legitimate interests in the Domain Name.

The Complainants argue for a finding of bad faith: “The Mark is a unique personal name such that it is entirely improbable that the Respondent devised the <jacquespepin.com> Domain for any legitimate purpose. The Respondent’s registration of the Domain decades after the Co-Complainant Pépin began using his identical Mark in commerce, and well after the Mark had gained widespread fame, creates a presumption that the Respondent registered the Domain in bad faith.”

The Complainants argue further that “Respondent’s diversionary use of the Mark to attract Internet users and redirect them to the JPF Domain constitutes bad faith use of the Domain under Policy ¶ 4(b)(iv).”

“Respondent’s control of the Domain creates an ongoing threat to Complainants because Respondent could cease redirecting to the JPF Domain at any time.”

The Complainants find further evidence of bad faith in the Respondent’s “hiding behind a privacy service” to conceal its identity”.

B. Respondent

The Respondent’s email to the Center is not a formal Response accompanied by the required certification of completeness and accuracy (see Rules, paragraph 5(viii)), and this must be taken into account in weighing its credibility. Nevertheless, the Panel accepts that it is an effort to communicate an assertion that the Respondent did not profit from the use of the Domain Name and acted on behalf of KQED according to the transmitted instructions of the Complainant JPF to redirect the Domain Name from the KQED website to the Complainant JPF’s website.

The Respondent’s reply to the Panel’s Administrative Order asks for a “significant extension” of time but furnishes answers “to the best of my knowledge”. The reply suggests that “additional documentation” will be forthcoming “in a separate message”, but this has not arrived.

Substantively, the reply indicates that the Respondent acquired the Domain Name in 1999 with the intention to develop a fan site about the Complainant Mr. Pépin, which the Respondent has not done. Since then, according to the reply, the Respondent has acceded to requests to redirect the Domain Name, first to the KQED website and then to the website of the Complainant JPF.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

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

Under paragraph 15(a) of the Rules, “[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”.

A. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant Pépin holds a registered JACQUES PEPIN trademark, and there is substantial evidence in the record of long-term use of his name as a common law mark as well. The Domain Name is identical apart from the space between the given name and family name, which cannot be included in a DNS address for technical reasons. As usual, the generic Top-Level Domain (“gTLDs”) “.com” is disregarded as a standard registration requirement. See id. section 1.11.2.

Accordingly, the Panel finds that the Domain Name is confusingly similar to the Complainant’s JACQUES PEPIN mark and concludes that the Complaint satisfies the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the domain name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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.

Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.

The Complainants in this proceeding have demonstrated trademark rights and state that the Complainant Pépin gave permission to KQED to use the JACQUES PEPIN mark in a domain name and to negotiate with the Respondent to acquire the Domain Name. The Complainants deny giving the Respondent permission to use its mark in the Domain Name, and the Respondent does not claim that he registered the Domain Name on behalf of the Complainants or KQED. The Respondent asserts that he registered the Domain Name with the intention of using it for a fan site, but he offers no evidence of creating such a noncommercial site (or even taking demonstrable steps to develop such a site) over the 22 years that have elapsed since then. See WIPO Overview 3.0, sections 2.4 and 2.7. Indeed, establishing rights for a fan site with a domain name that is identical to a trademark is problematic in any event (id., section 2.7). Thus, this cannot be recognized as a “right or legitimate interest” of the Respondent’s within the meaning of the Policy, paragraph 4(c).

The Panel concludes, therefore, that the Complainant prevails on the second element of the Policy.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):

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

The Respondent was admittedly aware of the Complainant Pépin and allowed the Domain Name to be used for more than a decade by the KQED television station that produced the Complainant’s television series and sold his books and DVDs, as well as those related to other shows. KQED and, ironically, the Complainant Pépin presumably profited from this commercial use of the Domain Name, even if the Respondent did not. KQED continued to use the Domain Name to attract visitors to its website even at times when it was not actively producing the Complainant’s TV series, and for a period of time simply displayed its own food page with content unrelated to the Complainant Pépin.

Panels have consistently found that the mere act of registering a domain name identical or confusingly similar to a well-known trademark raises a presumption of bad faith, and panels also regularly find bad faith in the redirection of such a domain name to a different website, even if parties other than the respondent benefit from the “commercial gain” resulting from the redirection. See WIPO Overview 3.0, section 3.1.4. Here, the Respondent has repeatedly redirected the Domain Name rather than transferring it to the Complainants as requested, and the most recent redirection is to the website of the Complainant JPF. But “panels have found that a respondent redirecting a domain name to the complainant’s website can establish bad faith insofar as the respondent retains control over the redirection thus creating a real or implied ongoing threat to the complainant.” Id. The ongoing threat all too clearly sets the stage for an extortionate transaction of some kind.

As the Complainants note in their reply to the Panel’s Administrative Order, the Respondent has renewed the registration of the Domain Name as recently as April 2021, retaining control of the Domain Name and preserving the ability to repurpose the Domain Name and remove the content relating to the Complainants. Moreover, the Respondent cannot be viewed as obtaining retroactive permission to use the Complainants’ mark in the Domain Name, since the Complainants have acquiesced to such redirection. The record shows that the Complainants have asserted their trademark rights and asked for transfer not redirection.

As outlined in the last section, the Respondent did not take steps to establish rights or legitimate interests in the Domain Name for use as a fan site under the principle of noncommercial fair use. Instead, while fully aware of the Complainant Pépin and his well-known brand, the Respondent has maintained control of the Domain Name for more than two decades, allowing it to be used for years by KQED while resisting repeated demands to recognize the Complainant’s trademark rights and transfer the Domain Name (thus while there was some confusion as between the Complainant and KQED as to the control of the Domain Name, such demands would obviate any potential laches or acquiescence claim). The Respondent appears to be an admirer of the Complainant Pépin who it appears has not, to date, profited personally from the Domain Name. However, he is not entitled under the Policy to control who does profit from it, when it is identical or confusingly similar to the Complainants’ trademark. The Panel finds that the Respondent’s conduct amounts to bad faith in terms of the Policy.

The Panel concludes that the Complainant has established the third element of the Complaint.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <jacquespepin.com>, be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: August 3, 2021