The Complainant is John Wiley & Sons, Inc. of New Jersey, United States of America (“US” or “United States”), internally represented.
The Respondent is BigOBot, LLC, c/o Krystal Riggs of Arkansas, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2011. On August 18, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the Domain Name. On August 18, 2011, eNom 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 August 22, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2011. The Respondent did not submit any formal response, but did send informal communications on August 22, 2011 and August 24, 2011.
The Center appointed Michelle Brownlee as the sole panelist in this matter on September 20, 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 Complainant owns numerous registrations for the mark FOR DUMMIES in countries throughout the world, including United States Reg. Nos. 1,832,735, 1,857,666, 1,887,907 and others, Canadian Reg. No. 468806, European Community Trade Mark Reg. No. 557,130, and many others. The earliest of these registrations was issued in 1994.
The Domain Name was registered on March 26, 2004. 5. Parties’ Contentions A. Complainant
The Complainant is the publisher and the owner of, the well-known FOR DUMMIES book series, and the proprietor of 195 trademark registrations for the mark FOR DUMMIES worldwide. There are over 200 million FOR DUMMIES books currently in print, covering more than 750 titles which have been distributed in 100 countries in 39 different languages. The FOR DUMMIES books are generally promoted together as a family of products by Complainant. The FOR DUMMIES brand and trademark have expanded beyond printed books, and now includes websites, e-books, and multimedia software. The Complainant has also licensed the FOR DUMMIES marks and trade dress to third parties for use on products such as, inter alia, fitness videos, exercise equipment, toys, sporting goods, art/craft kits, multimedia software, cooking supplies, office supplies, musical instruments, and particularly a web hosting service. The Complainant widely advertises and promotes its FOR DUMMIES products to the public throughout the United States and the world by all means and types of advertising media, including newspapers, magazines, television, trade publications and the like. As a result of many years of use, extensive advertising, promotion, and sale of the FOR DUMMIES products, the consuming public has come to know and recognize the Complainant’s trademark.
The Complainant argues that the Domain Name is confusingly similar to the FOR DUMMIES mark because it integrates the mark in its entirety and merely adds the prefix “web hosting.” The Complaint contends that the Respondent has no rights to or legitimate interests in respect of the Domain Name. The Complainant points to a statement on the Respondent’s web site that the Domain Name is for sale for USD 25,000 as evidence that the Domain Name was registered and is used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. In response to notification of the Complaint, the Respondent sent two emails to the Center. The first email, sent by the Respondent on August 22, 2011, stated:
“If u would like to lease this domain name () , u can contact me at 18707766055
Best Regards
Krystal Riggs”
The Center sent an email message to the Respondent on August 23, 2011, asking if this message was to be considered the Respondent’s Response in this matter. The Respondent sent another message to the Center on August 24, 2011 that stated:
“This domain is for sale 1,500.00 us via paypal. Upon payment will transfer ownership of domain to ur bulkregister account. Call me at 18707766055 for any questions or concerns.
Best Regards
Krystal Riggs” 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name at issue is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns rights in the FOR DUMMIES trademark. There are many UDRP decisions that find that the pairing of a distinctive trademark with less distinctive terms is confusingly similar to the distinctive trademark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions,WIPO Case No. D2007-1140; Parfums Christian Dior v. 1 Netpower, Inc.,WIPO Case No. D2000-0022 ( and confusingly similar to CHRISTIAN DIOR); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer,WIPO Case No. D2001-0032 ( and confusingly similar to LEXUS). Accordingly, the Panel finds that the Domain Name, which pairs the FOR DUMMIES trademark with the generic term “web hosting,” is confusingly similar to the Complainant’s FOR DUMMIES trademark, which is used by a licensee of the Complainant for web hosting services. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name at issue in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; 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 at issue.
In this case, the Respondent has not presented evidence that the Respondent used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services, that the Respondent is commonly known by the Domain Name or that the Respondent is making a legitimate noncommercial or fair use of the Domain Name, or in any other way refuted the Complainant’s prima facie case. The Complainant has presented evidence, which was not refuted by the Respondent, that the only content on the Respondent’s website was an offer to sell the Domain Name. Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name at issue 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant has established bad faith under paragraph 4(b)(i) of the Policy. The evidence that was submitted by the Complainant demonstrates that the Respondent registered the Domain Name primarily for the purpose of selling, renting or otherwise transferring the Domain Name registration to the Complainant for valuable consideration in excess of documented out-of-pocket costs. The two email communications that the Respondent sent to the Center provide further evidence of the Respondent’s bad faith. 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 be transferred to the Complainant.
Michelle Brownlee
Sole Panelist
Dated: October 1, 2011
Full & Egal Universal Law Academy