The
Neiman Marcus Group, Inc. and NM
Claim Number: FA0905001263874
Complainant is The
Neiman Marcus Group, Inc. and NM
Nevada Trust (“Complainant”), represented by Anne F. Bradley, of Christie, Parker & Hale, LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <neimanmarcuf.com>, registered with Godaddy.com, Inc.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 19, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 20, 2009.
On May 20, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <neimanmarcuf.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 May 26, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 15, 2009 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@neimanmarcuf.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 19, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <neimanmarcuf.com> domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark.
2. Respondent does not have any rights or legitimate interests in the <neimanmarcuf.com> domain name.
3. Respondent registered and used the <neimanmarcuf.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
The Neiman Marcus Group, Inc. and NM Nevada Trust (“Complainant”) are the owners of the NEIMAN MARCUS mark, registered with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 601,375 issued January 25, 1955). NM Nevada Trust is a wholly-owned subsidiary of The Neiman Marcus Group, Inc. with the sole purpose of holding ownership of the NEIMAN MARCUS mark. Complainant uses the NEIMAN MARCUS mark in connection with its corresponding chain of Neiman Marcus retail stores and mail order catalog sales providing high end fashion merchandise.
Respondent registered the <neimanmarcuf.com> domain name on November 23, 2005. The disputed domain name is being used to resolve to a website hosting paid advertisement links for products and businesses that are in competition with Complainant.
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i) based on the registration of its NEIMAN MARCUS mark with the USPTO. See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant contends that Respondent’s <neimanmarcuf.com> domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark under Policy ¶ 4(a)(i). The disputed domain name contains the distinctive portion of Complainant’s mark, with the substitution of the letter “s” with the letter “f” and the addition of the generic top-level domain “.com.” The Panel finds that Respondent’s substitution of the letter “f,” a misspelling of Complainant’s mark renders Respondent’s <neimanmarcuf.com> domain name confusingly similar to Complainant’s NEIMAN MARCUS mark. Additionally, the affixation of the generic top-level domain “.com” is irrelevant for the purposes of a Policy ¶ 4(a)(i) analysis. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (finding that the respondent’s disputed domain names were confusingly similar to the complainant’s mark because the disputed domain names were common misspellings of the mark involving keys that were adjacent to the current keys comprising the complainant’s mark); see also Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that Respondent‘s domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark under Policy ¶ 4(a)(i).
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks all rights and legitimate interests in the <neimanmarcuf.com> domain name. For the purposes of a Policy ¶ 4(a)(ii) analysis, Complainant must present a prima facie case in support of its allegations. The burden then shifts to Respondent to show that they have rights or legitimate interests in the disputed domain name, bringing themselves within the purview of Policy ¶ 4(c). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). In these proceedings Complainant has presented a sufficient prima facie case. However, Respondent has failed to respond to the allegations against it. From this failure, the Panel may infer that Respondent lacks any rights or legitimate interests in the disputed domain name. Additionally, the Panel may presume that Complainant’s allegations are true; however, the Panel will examine the record to determine whether Respondent has any rights or legitimate interests under Policy ¶ 4(c). See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant alleges that Respondent’s disputed domain name, which resolves to a website featuring advertisement links promoting competitors of Complainant, does not qualify as a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) or (iii), respectively. See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). The Panel agrees and finds that such use, presumably for financial gain, does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
Moreover, Complainant contends that Respondent has engaged
in the practice of typosquatting.
Respondent is taking advantage of Internet users attempting to reach
Complainant but mistakenly misspelling Complainant’s NEIMAN MARCUS mark by
typing the letter “f” instead of the letter “s.” The Panel finds that Respondent’s engagement
in the practice of typosquatting is evidence that Respondent lacks rights or
legitimate interests in the <neimanmarcuf.com> domain name under
Policy ¶ 4(a)(ii).
See Microsoft
Corp. v. Domain Registration
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent is using a confusingly similar domain name to attract Internet users to a website containing advertisement links to websites of Complainant’s competitors. The Panel finds that appropriating a misspelled version of Complainant’s NEIMAN MARCUS mark to divert Internet users to competing websites likely disrupts Complainant’s business. Therefore, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
The website resolving from the confusingly similar domain
name contains sponsored links which presumably generate revenue for Respondent. The Panel therefore finds that such intent to
attract unknowing Internet users by capitalizing on Complainant’s mark
demonstrates bad faith registration and use under Policy ¶ 4(b)(iv). See Zee TV USA, Inc.
v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that
the respondent engaged in bad faith registration and use by using a domain name
that was confusingly similar to the complainant’s mark to offer links to
third-party websites that offered services similar to those offered by the
complainant); see also Asbury Auto. Group, Inc.
v.
Complainant further alleges that typosquatting is itself evidence of bad faith registration and use under Policy ¶ 4(a)(iii). The Panel agrees and finds that Respondent’s <neimanmarcuf.com> domain name is merely a typosquatted version of Complainant’s NEIMAN MARCUS mark, and that such typosquatting constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to Policy 4 ¶ (a)(iii)).
Complainant has satisfied Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <neimanmarcuf.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: June 30, 2009
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