Neiman
Marcus Group, Inc. and NM
Claim Number: FA0906001267257
Complainant is The
Neiman Marcus Group, Inc. and NM
Nevada Trust (“Complainant”), represented by Anne F. Bradley, of Christie, Parker & Hale LLP, California,
USA. Respondent is Samir Kumar (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <neimemarcus.com>, registered with Communigal Communications Ltd.
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 June 9, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 10, 2009.
On June 15, 2009, Communigal Communications Ltd confirmed by e-mail to the National Arbitration Forum that the <neimemarcus.com> domain name is registered with Communigal Communications Ltd and that Respondent is the current registrant of the name. Communigal Communications Ltd has verified that Respondent is bound by the Communigal Communications Ltd 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 June 18, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 8, 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@neimemarcus.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 13, 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 <neimemarcus.com> domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark.
2. Respondent does not have any rights or legitimate interests in the <neimemarcus.com> domain name.
3. Respondent registered and used the <neimemarcus.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
NM Nevada Trust owns and licenses to The Neiman Marcus Group, Inc. (collectively “Complainant”) the NEIMAN MARCUS mark, which it has used for over one-hundred years to identify its successful retail business. Complainant is the owner of multiple registrations for the NEIMAN MARCUS mark with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 601,375 issued January 25, 1955). A variety of goods are available under Complainant’s NEIMAN MARCUS mark, including clothing, outerwear, shoes, and food products.
Respondent registered the <neimemarcus.com> domain name on August 4, 2008. 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. The Policy does not require Complainant to have registered its mark in the country of Respondent’s residence. 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant contends that Respondent’s <neimemarcus.com>
domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark. Respondent’s <neimemarcus.com>
domain name merely substitutes the letter “e” for the letters “an” in the word
“Neiman,” and adds the generic top-level domain “.com.” The Panel finds that Respondent’s substitution
of letters, creating a misspelling of Complainant’s mark, renders the <neimemarcus.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 Neiman Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN
MARCUS, and the domain name was confusingly
similar to the mark); see also
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant must present a prima facie case in support of these allegations. Once it has done so, the burden shifts to Respondent to prove that it nonetheless does have rights to or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights to or legitimate interests with respect to a contested domain name, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has presented the requisite prima facie case in support of its allegations and that Respondent has failed to respond to these proceedings. Therefore, the Panel may infer that Respondent does not possess rights to or legitimate interests in the disputed domain name. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). The Panel will, however, examine the record further to determine if there is any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name within the parameters set out in Policy ¶ 4(c).
Complainant contends that Respondent’s disputed domain name,
which resolves to a website featuring advertising links promoting competitors
of Complainant, does not qualify as a bona
fide offering of goods or services or a legitimate noncommercial or fair
use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii),
respectively. The Panel agrees and finds
that Respondent’s use of the <neimemarcus.com> domain name to
redirect Internet users to Complainant’s competitors, presumably for financial
gain, does not constitute 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 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)); see also Metro. Life Ins. Co. v. Bonds, FA
873143 (Nat. Arb.
Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to
divert Internet users to competing websites does not represent 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)).
Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii) because Respondent is not commonly known by the <neimemarcus.com> domain name. The WHOIS information lists the registrant as “Samir Kumar.” The Panel therefore concludes that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Furthermore,
Complainant contends that Respondent has engaged in the practice of
typosquatting. Respondent is taking
advantage of Internet users that are attempting to reach Complainant, but
mistakenly misspelling Complainant’s NEIMAN MARCUS mark by typing the
letter “e” instead of “an.” The Panel
finds that Respondent’s engagement in the practice of typosquatting is evidence
that Respondent lacks rights and legitimate interests in the <neimemarcus.com>
domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent is using the confusingly similar disputed domain name to attract Internet users to a website containing advertisement links to websites of Complainant’s competitors. The Panel finds that Respondent has misappropriated a misspelled version of Complainant’s NEIMAN MARCUS mark to divert Internet users to competing websites, and such use likely disrupts Complainant’s business. Therefore, Respondent has engaged in bad faith registration and use under 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 to competing websites bye 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 <neimemarcus.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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (“Respondent’s registration and use of the disputed domain name demonstrates a practice commonly referred to as ‘typosquatting.’ This practice diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use…”).
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 <neimemarcus.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: July 22, 2009
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