Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Macmillan USA, Inc. , Upper Saddle River, NJ, USA ("Complainant") represented by Gregory S. Shatan, Morgan, Lewis & Bockius. The Respondent is Noname.com, Fremont, CA, USA ("Respondent") represented by John Berryhill, Dann, Dorfman, Herrell & Skillman.

The domain name at issue is idiotsguide.com, registered with Bulk Register.

On October 16, 2000, pursuant to Complainant’s request to have the dispute decided by a Three Member panel, the Forum appointed The Honorable James P. Buchele (Ret.), The Honorable Herman Michels (Ret.) and Ms. Diane Cabell as Panelists. The Panelists certify that they have acted independently and impartially and to the best of their knowledge, have no known conflict in serving as the panelists in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on September 7, 2000; The Forum received a hard copy of the Complaint on September 5, 2000.

On September 7, 2000, Bulk Register confirmed by e-mail to The Forum that the domain name idiotsguide.com is registered with Bulk Register and that the Respondent is the current registrant of the name. Bulk Register has verified that Respondent is bound by the Bulk Register registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On September 11, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 2, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@idiotsguide.com by e-mail.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

In 1994,the Complainant began publication of a series of books entitled "Complete Idiot’s Guide to…" and in 1997, began publication of "Pocket Idiot’s Guide" books. Complainant claims continuous publication and sales upwards of 8 million books for these series of books representing more than $40 million in sales per year. Due to this use, Complainant claims common law trademark rights. In addition, Complainant has made application on December 22, 1999 to the U.S. Patent and Trademark Office for a Word Mark on "Complete Idiot’s Guide" that is currently pending. Complainant asserts rights to the marks, "The Complete Idiot’s Guide To…" "Complete Idiot’s Guide" and "Pocket Idiot’s Guide. Complainant contends that Respondents registration of the domain name "IDIOTSGUIDE.COM" violates Complainants rights marks because (i) the domain name is confusingly similar to Complainant’s marks; (ii) Respondent has no legitimate interest in the domain name; and (iii) Respondent has registered and is using the domain name in bad faith (a) as part of a pattern of stockpiling domain names which correspond to registered marks thereby preventing the owners of trademarks from reflecting their marks in a corresponding domain name, and (b) in order to ultimately attract, for commercial gain, users to its Web site by creating a likelihood of confusion with Complainant’s marks.

Respondent denies that Complainant has any trademark rights in the term "IDIOTSGUIDE.COM" that prohibits its use as a domain name and that the words "idiots guide" is a common colloquialism that was in use before Complainants first publication and the term continues to be used by others in the descriptive sense on the Internet and elsewhere. Respondent claims to have legitimate business expectancy in the domain name as it has articulated a business plan that makes a bona fide use of the name, e.g., to utilize the domain name in a portfolio of domain names to be offered for use to others. Respondent contends its plans predate Complainants notice. Respondent claims that it has not offered the "idiotsguide.com" domain name for sale or used it to offer goods in competition with Complainant’s books or to disrupt Complainants business and bad faith cannot be shown.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

The Complainant has failed to show that Respondents registration and use of the domain name "IDIOTSGIUDE.COM" is in bad faith, as it has not established to our satisfaction exclusive rights to use of the term. It is the unanimous decision of the Panel that the requested relief be denied and that registration of the domain name "IDIOTSGUIDE.COM" not be disturbed.