Nordstrom, Inc. and NIHC, Inc. v. Steven
Grotte
Claim Number: FA0207000115347
PARTIES
Complainant
is Nordstrom Inc. and NIHC, Inc.,
Seattle, WA (“Complainant”) represented by Timothy
L. Boller, of Seed Intellectual
Property Law Group PLLC. Respondent
is Steven Grotte, Fernley, NV
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <nordstrominc.com> and <nordstromsinc.com>, registered with Go Daddy Software, Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and, to
the best of his knowledge, has no known conflict in serving as Panelist in this
proceeding.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 15, 2002; the Forum received a hard copy of the
Complaint on July 16, 2002.
On
July 16, 2002, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain names <nordstrominc.com> and <nordstromsinc.com> are registered with Go Daddy Software,
Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that
Respondent is bound by the Go Daddy Software, Inc. registration agreement 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
July 17, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 6,
2002 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@nordstrominc.com and postmaster@nordstromsinc.com
by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
August 20, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed the Honorable Charles K.
McCotter, Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to
employ reasonably available means calculated to achieve actual notice to
Respondent.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <nordstrominc.com> and
<nordstromsinc.com> domain names are confusingly similar to
Complainant’s registered NORDSTROM mark.
2. Respondent does not have any rights or
legitimate interests in the <nordstrominc.com> and <nordstromsinc.com>
domain names.
3. Respondent registered and used the <nordstrominc.com>
and <nordstromsinc.com> domain names in bad faith.
B. Respondent did not submit a Response in
this proceeding.
FINDINGS
Complainant owns numerous trademarks
listed on the Principal Register of the U.S. Patent and Trademark Office
(“USPTO”) reflecting its NORDSTROM mark, including, inter alia: Reg. No.
1,281,000 registered on June 5, 1984 and designating first use of the mark in
commerce as being November 1972; Reg. No. 1,280,785; Reg. No. 1,409,938 for the
NORDSTROM RACK mark; and, Reg. No. 1,730,205 for the NORDSTROM ESSENTIALS mark.
Respondent registered the <nordstrominc.com>
and <nordstromsinc.com> domain names on June 22, 2001 and June
25, 2001, respectively. Complainant’s Submission indicates that Respondent made
various demands relating to monetary payment in exchange for control of the
domain names, and made offers to sell the domain name registration for “a
reasonable counteroffer.” Complainant’s investigation also reveals that
Respondent is the owner of numerous domain names that incorporate famous marks
with an “inc” inserted at the end of the second-level domain (e.g.,
<haininc.com>, <marvinwindowsinc.com>, <nordicasepticinc.com>
and <jasperfoodsinc.com>).
DISCUSSION
Paragraph 15(a) of 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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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; and
(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.
Complainant has established its rights in
the NORDSTROM mark through securing a variety of trademark registrations with
the USPTO reflecting its NORDSTROM mark. Complainant has also been extensively
using the NORDSTROM moniker as source identification of its products and
services since at least 1972.
Respondent’s <nordstrominc.com> and
<nordstromsinc.com> domain names are confusingly similar to
Complainant’s NORDSTROM mark. The only differences between Complainant’s NORDSTROM
mark and Respondent’s domain names are the addition of “inc” after the mark and
pluralizing the mark.
Respondent’s addition of “inc” to its
domain names represents an insubstantial deviation from Complainant’s NORDSTROM
mark because “inc” is commonly known to denote “incorporation” or
“incorporated.” Respondent’s use of an industry related word that has an
obvious relationship with Complainant’s mark and business fails to transform
its domain names into separate and distinct marks; thus, rendering them
confusingly similar. See Space Imaging LLC v.
Brownwell, AF-0298 (eResolution Sept. 22,
2000) (finding confusing similarity where the Respondent’s domain name combines
the Complainant’s mark with a generic term that has an obvious relationship to
the Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13,
2000) (finding that the Respondent’s domain name <marriott-hotel.com> is
confusingly similar to Complainant’s MARRIOTT mark).
Furthermore, the addition of the letter,
which represents a common pluralizing technique and typographical error with
regards to Complainant’s NORDSTROM mark, cannot overcome a confusingly similar
analysis under Policy ¶ 4(a)(i). Respondent’s intentions of creating an
affiliation with Complainant’s mark by registering domain names with slight and
intuitive differences are clear. See Universal
City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000)
(finding that deleting the letter “s” from the Complainant’s UNIVERSAL STUDIOS
STORE mark did not change the overall impression of the mark and thus made the
disputed domain name confusingly similar to it); see also Nat’l Geographic Soc. v. Stoneybrook Inv.,
FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name
<nationalgeographics.com> was confusingly similar to Complainant’s
“National Geographic” mark).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Respondent failed to refute Complainant’s
Submission and averments regarding Respondent’s rights and legitimate interests
concerning the subject domain names; thus, Complainant’s allegations have gone
unopposed. Therefore, the Panel is permitted to make all reasonable inferences
in favor of Complainant. See Talk
City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint”); see also Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant to be deemed true).
Respondent’s lack of participation also
creates the presumption that it lacks rights and legitimate interests in the <nordstrominc.com>
and <nordstromsinc.com> domain names pursuant to Policy ¶
4(a)(ii). See Charles Jourdan
Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate
for the Panel to draw adverse inferences from Respondent’s failure to reply to
the Complaint); see also Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a Response, Respondent has failed to invoke any circumstance
which could demonstrate any rights or legitimate interests in the domain name).
Respondent has not used the disputed
domain names in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i). Respondent registered the domain names over
twelve months ago and has yet to develop a purpose in conjunction with the
domain names, or show demonstrable preparations to use the domain names in
connection with a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). Respondent’s passive holding of the domain names and lack of
legitimate use implies that it lacks rights and interests in the domain name.
When confronted with Complainant’s supported contentions, the evidential burden
shifts to Respondent. Respondent’s failure to contest Complainant’s allegations
implies that they have merit. See Pharmacia & Upjohn AB
v. Romero, D2000-1273
(WIPO Nov. 13, 2000) (finding no rights or legitimate interests where
Respondent failed to submit a Response to the Complaint and had made no use of
the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO
Nov. 11, 2000) (finding that “merely registering the domain name is not
sufficient to establish rights or legitimate interests for purposes of
paragraph 4(a)(ii) of the Policy”); see also Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts
that Respondent has no rights or legitimate interests in respect of the domain,
the burden shifts to Respondent to provide credible evidence that substantiates
its claim of rights and legitimate interests in the domain name).
There is no evidence or information before the Panel that
would suggest a connection between Respondent and the <nordstrominc.com>
and <nordstromsinc.com> domain names. Complainant’s numerous
registrations in the United States and Respondent’s place of domicile create
the presumption that Respondent is not commonly known by the domain names that
incorporate the registered NORDSTROM mark; thus, Respondent fails to
demonstrate rights or legitimate interests under Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because Respondent is not commonly known by the disputed domain name or using
the domain name in connection with a legitimate or fair use); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name).
Accordingly, the Panel determines that Policy ¶ 4(a)(ii) has
been satisfied.
Complainant’s submission provides
uncontested evidence that Respondent registered the subject domain names
primarily for the purpose of selling or transferring its rights in the
registrations to Complainant. On April 27, 2002, Respondent made a demand of
$1500 per week from Complainant in exchange for an agreement not to make any
use of the domain names. On May 6, 2002, a representative of Complainant spoke
with Respondent by telephone where Respondent suggested that Complainant “make
a reasonable counteroffer.” Respondent’s attempts to extort compensation for
registering an infringing domain name constitute bad faith registration and use
under Policy ¶ 4(b)(i). See Am.
Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb.
Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names
for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no
certain price is demanded, are evidence of bad faith”).
Complainant
provides evidence establishing that Respondent habitually registers infringing
domain names that incorporate famous marks. Precedent supports the inference
that, where Complainant’s mark and Respondent’s domain name are logically
related and confusingly similar, Respondent registered the domain name in order
to prevent Complainant from reflecting its mark in a corresponding domain name;
thus, Respondent’s actions evidence bad faith registration and use pursuant to
Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17,
2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering
multiple domain names, which infringe upon others’ famous and registered
trademarks); see also Caterpillar
Inc. v. Miyar, FA 95623
(Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple
domain names in a short time frame indicates an intention to prevent the mark
holder from using its mark and provides evidence of a pattern of conduct).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that relief shall be
hereby GRANTED.
Accordingly, it is Ordered that the <nordstrominc.com>
and <nordstromsinc.com> domain names be TRANSFERRED from
Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: August 26, 2002
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