Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Hungry Minds Inc., Foster City, CA, USA ("Complainant") represented by Gail E. Kavanagh, of Bartko, Zankel, Tarrant & Miller. The Respondent is Mall For Dummies, Laguna Niguel, CA, USA ("Respondent") represented by James M. Trush, of Trush & Associates.

The domain names at issue are "mallfordummies.com", "mall4dummies.com", "booksfordummies.net", "books4dummies.com", "mallfordummies.net", "mallfordummies.org", and "mall4dummies.net", registered with Network Solutions and DomainSite.

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as a panelist in this proceeding.

Judge Irving H. Perluss (Retired) is the Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on February 12, 2001; the Forum received a hard copy of the Complaint on February 15, 2001.

On Feb 15, 2001, Network Solutions and DomainSite confirmed by e-mail to the Forum that the domain name "mallfordummies.com", "mall4dummies.com", "booksfordummies.net", "books4dummies.com", "mallfordummies.net", "mallfordummies.org", and "mall4dummies.net" are registered with Network Solutions and DomainSite and that the Respondent is the current registrant of the name. Network Solutions and DomainSite has verified that Respondent is bound by the Network Solutions 4.0 and 5.0 and DomainSite registration agreements and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On February 19, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 4, 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@mallfordummies.com, postmaster@mall4dummies.com, postmaster@booksfordummies.net, postmaster@books4dummies.com, postmaster@mallfordummies.net, postmaster@mallfordummies.org, and postmaster@mall4dummies.net by e-mail.

A timely response was received and determined to be complete on March 12, 2001.

A timely additional submission from Complainant was determined to be complete on March 19, 2001.

On March 21, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

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

A. Complainant

1. Hungry Minds, Inc., a Delaware corporation, on October 31, 2000, was merged into IDG Books Worldwide, Inc., a Delaware corporation, under the name "Hungry Minds, Inc."

2. IDG Books Worldwide, Inc. was the owner of the "Dummies Marks," which, by virtue of the merger, are now owned by Hungry Minds, Inc.

3. The marks owned by Complainant are as follows:

The dots and dashes that precede the words "For Dummies" indicate where another word or phrase is to be inserted.

4. Complainant also owns numerous other trade and service marks registered with the United States Patent and Trademark Office which use the "For Dummies" format.

5. The Dummies Marks were initially used in connection with the popular Dummies Books, a series of do-it-yourself instruction and self-help books. Since 1991, there has been sold over 90 million Dummies Books in the United States and at least 53 countries. The books are famous for their presentation of useful information in a simplified, easy-to-understand, and often humorous manner. The Dummies Marks are also now used and intended to be used in the future in connection with a wide variety of goods and services. Those goods and services include computerized on-line services, including databases, online shopping services and chat rooms. (See Reg. #2273310, above described.)

6. The Dummies Marks are designed to be and are used directly after a topic noun or phrase to identify Complainant’s goods and services. Examples include: "Buying Online for Dummies," "The Internet for Dummies," "Selling for Dummies," "Car Buying Online for Dummies," "Buying a Computer for Dummies," "Windows 98 for Dummies," "Golf for Dummies," "Cooking for Dummies," and "Sex for Dummies."

7. Respondent’s domain names, mallfordummies.com, mallfordummies.net, mallfordummies.org, and booksfordummies.net, are identical to the Dummies Marks, with the words "mall" and "books" inserted where the trademark registration indicate a topic noun or phrase to be inserted.

8. The domain names "mall4dummies.com," "mall4dummies.net," and "books 4dummies.com" are confusingly similar to the Dummies Marks.

9. There will be confusion because Respondent intends to use the domain names in issue to designate one or more websites providing services which are the same as the services identified in Complainant Hungry Minds’ Registration No. 2273310, i.e., "computerized online services . . . databases . . . online shopping services and chat rooms." Respondent has indicated that it is preparing to launch an "Internet retail portal, in which sellers and retailers of consumer and business to business products are listed with links to the actual retailer."

10. Respondent has no legitimate interest or rights to the domain names in issue because at the time of the registration, and prior to using the domain names in connection with the bona fide offering of any goods or services, Respondent had constructive knowledge of Complainant’s rights, because of the federal trademark registrations for the Dummies Marks.

11. Respondent has registered the domain names in issue in bad faith for the purpose of attracting, for commercial gain, Internet users to Respondent’s website(s) by creating a likelihood of confusion with Complainant’s Dummies Marks as to the source, sponsorship, affiliation or endorsement of Respondent’s website(s).

B. Respondent

1. The domain names in issue are not identical or confusingly similar to Complainant’s marks.

2. The domain names in issue and the date each was registered are as follows:

3. Complainant’s Registration No. 2273310 was registered with the United States Patent and Trademark Office on August 31, 1999, which was subsequent to domain names Nos. 1, 2, and 4, above listed.

4. The dots and dashes are not part of the marks on which Complainant bases its charges. If this were not so, there would be no reason for Complainant to register Federal trademarks with words preceding "for dummies." Yet it has done so.

5. Complainant does not have exclusive rights to the words "for dummies." There are at least 200 websites using the words "for dummies" which are not related to Complainant.

6. Before any notice to Respondent of the dispute, there were demonstrable preparations by Respondent to use the domain names in issue in connection with a bona fide offering of goods and services. Thus, Respondent does have rights and a legitimate interest in the domain names.

7. Respondent has not registered and/or used the domain names in issue in bad faith. It has not "intentionally acted to attract" Internet users, because it has not as yet "used" the domain names. Moreover, when Respondent does "use" the domain names, it will place a disclaimer on the website.

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the 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:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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

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

The Panelist has concluded that Complainant has demonstrated that the domain names in issue are confusingly similar to its marks, i.e., "…For Dummies" and "-----For Dummies."

It is evident that this is so with respect to the domain names "booksfordummies.net" and "books4dummies.com," because this is precisely what Complainant’s marks stand for in the public mind and in common understanding.

The determination of similarity with the various "mallfordummies" domain names is more difficult. It would have been far simpler had Complainant utilized its mark No. 2306808, "Online Shopping for Dummies" to challenge the "mall" domain names.

Nevertheless, the Panelist finds and determines that there would be confusion and similarity between the "mall" domain names and Complainant’s Registration No. 2273310, because of the latter’s proposed utilization, inter alia, for "online shopping services."

Respondent argues that in some instances its domain names were registered with a domain name registrar prior to the trademark registration by Complainant.

The answer to this contention is that it is actual use of a mark that creates legal rights. It is not a race to the United States Patent and Trademark Office that is important, but it is a race to the marketplace. (See 3 McCarthy, Trademarks and Unfair Competition (Update 2000) Sections16.4, 16.18.)

Complainant’s marks were used in commerce long before Respondent registered the domain names in issue.

Moreover, whether there is utilization of Complainant’s marks by others without consent is not relevant in this proceeding. (See MGM-Pathe Communications v. Pink Panther Patrol (S.D.N.Y., 1991) 774 F.Supp. 869, 873: ". . . the Patrol contends that another registered trademark for the words ‘pink panther’ exists, and at least 15 other establishments, including a bar and a liquor store, use the Pink Panther name. These arguments are unavailing . . . . The fact that there are other establishments that use the name Pink Panther does not contradict the harm suffered by MGM from the Patrol’s use of the mark.")

One cannot object to receiving a traffic ticket for not observing a stop sign because he was caught and others were not.

Avery Dennison Corp. v. Sumpton (9^th Cir. 1999) [1999] USCA9 436; 189 F.3d 868, is not helpful because the Court, in reviewing the grant of a motion for summary judgment, was primarily concerned with the existence of cybersquatting dilution and tarnishment issues not here presented.

Because, before the registration of the domain names in issue with a domain name registrar, in some instances Complainant had common law rights to its marks, and in other instances the marks were Federally registered, Respondent would have rights and a legitimate interest in the domain names, accordingly, only if its registration and use of the domain names were not in bad faith.

Complainant and Respondent agreed that any settlement discussions would be confidential and inadmissible to the intent provided by Federal Rule of Evidence 408 and Section 1152(a) of the California Evidence Code.

Complainant now seeks to utilize demands made by Respondent to demonstrate "bad faith registration and use."

It clearly was the intent of Respondent, if not also the Complainant, to bar the admission of such evidence should there be a proceeding such as this. Accordingly, the Panelist, in fairness, will not consider the evidence in this respect offered by Complainant.

Nevertheless, the Panelist finds and determines that Respondent acted in bad faith.

Section 4(b) of the Policy sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith. Subparagraph (iv) of Section 4(b) provides:

The words "source, sponsorship, affiliation, or endorsement" are particularly apt here. Inevitably, the Panelist believes that consumers would conclude that the domain name in issue was endorsed and sponsored by Complainant.

In addition to the demonstration of bad faith by the application of subparagraph (iv) of Section 4(b) of the Policy, there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.

In Interstellar Starship Services, Ltd. v. Epix, Inc. (CA 9^th 1999) [1999] USCA9 357; 184 F.3d 1107, 111, it was said:

Thus, the domain names in issue were registered in bad faith. Respondent, however, argues that it actually has not used the domain names in issue in bad faith and, accordingly, the names could not have been used in "bad faith."

The Panelist heretofore has determined that Respondent has no rights or legitimate interest in the domain names, and that it has registered the names in bad faith. It makes no sense whatsoever to wait until it actually "uses" the names, when inevitably, when there is such use, it will create the confusion described in the Policy.

Under similar circumstances, a preliminary, mandatory injunction was granted by a federal court requiring the transfer of a domain name even though a website had not yet been opened. (Green Products Co. v. Independence By-Products Co. (N.D. Iowa 1997) 992 F.Supp.1070.) The threatened harm is "use." (See Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum, Dec. 29, 2000); Bloomberg LP v. Schorsch, FA 96576 (Nat. Arb. Forum, Mar. 19, 2001.)

But, says Respondent, we will place disclaimers on our website.

Such disclaimers are not sufficient to prevent initial interest confusion. (See Madonna v. Parisi, D2000-0847 (WIPO, Oct. 12, 2000) (citing Brookfield Comm., Inc. v. West Coast Entertainment Corp. (9^th Cir. 1999) [1999] USCA9 225; 174 F.3d 1036, "[r]espondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.").