The Neiman Marcus Group, Inc. and NM Nevada Trust v. Dewey MacKay dba PMA Media Group
Claim Number: FA0610000813531
Complainant is The Neiman Marcus Group, Inc. and NM Nevada Trust (“Complainant”), represented by David J. Steele, of Christie, Parker & Hale LLP, 3501 Jamboree Road, Suite 6000, Newport Beach, CA 92660. Respondent is Dewey MacKay d/b/a PMA Media Group (“Respondent”), 554 E. Technology Way, Orem, UT 84097.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <neimanmarcuswear.info> and <marcusneimanstyle.info>, registered with RegisterFly.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 9, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 9, 2006.
On October 10, 2006, RegisterFly.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <neimanmarcuswear.info> and <marcusneimanstyle.info> domain names are registered with RegisterFly.com, Inc. and that Respondent is the current registrant of the names. RegisterFly.com, Inc. has verified that Respondent is bound by the RegisterFly.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 October 13, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 2, 2006 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@neimanmarcuswear.info and postmaster@marcusneimanstyle.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 8, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <neimanmarcuswear.info> and <marcusneimanstyle.info> domain names are confusingly similar to Complainant’s NEIMAN MARCUS mark.
2. Respondent does not have any rights or legitimate interests in the <neimanmarcuswear.info> and <marcusneimanstyle.info> domain names.
3. Respondent registered and used the <neimanmarcuswear.info> and <marcusneimanstyle.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, The Neiman Marcus Group, Inc., is an internationally recognized fashion and merchandising company. In connection with the provision of these goods and services, Complainant has registered a number of trade and service marks including the NEIMAN MARCUS mark, which has been registered with the United States Patent and Trademark Office (“USPTO”)(Reg. No. 934,177 issued May 16, 1972).
Respondent registered the <neimanmarcuswear.info> and <marcusneimanstyle.info> domain names June 28, 2006. Respondent’s disputed domain names resolve to blank websites with no content. Respondent has failed to provide accurate contact information.
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.
Complainant asserts rights in the NEIMAN MARCUS mark through registration with the USPTO. The Panel finds that Complainant’s registration with the USPTO and extensive use of the NEIMAN MARCUS mark for over thirty years is sufficient to establish rights pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
Complainant contends that Respondent’s <neimanmarcuswear.info> and <marcusneimanstyle.info> domain names are confusingly similar to Complainant’s mark. Respondent’s disputed domain names feature Complainant’s NEIMAN MARCUS mark and, in the first instance, add the generic term “wear” and in the second instance, the mark is inverted with the addition of the generic term “style.” The Panel finds that the addition of a generic term to an otherwise identical mark and the inversion of the words of a mark fail to sufficiently distinguish a domain name from a mark pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also NCRAS Mgmt., LP v. Cupcake City, D2000-1803 (WIPO Feb. 26, 2001) (finding the domain name <nationalrentalcar.com> confusingly similar to the mark NATIONAL CAR RENTAL and holding that “merely inverting the terms of a mark . . . is quite insufficient to dispel consumer confusion; the mark and the resulting domain name are simply too similar to each other”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights or legitimate interests in the <neimanmarcuswear.info> and <marcusneimanstyle.info> domain names. In instances where Complainant has made a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth concrete evidence that it does possess rights or legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
The Respondent is using the disputed domain names to resolve to blank websites that feature no information. The Panel finds that Respondent’s use of the disputed domain names is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb.18, 2000) (finding (i) the fact that the complainant has not licensed or otherwise permitted the respondent to use any of its trademarks, and (ii) the fact that the word TELSTRA appears to be an invented word, and as such is not one traders would legitimately choose unless seeking to create an impression of an association with the complainant, demonstrate that the respondent lacks rights or legitimate interests in the domain name).
Additionally, Complainant contends that Respondent is neither commonly known by the <neimanmarcuswear.info> and <marcusneimanstyle.info> domain names nor authorized to register domain names featuring Complainant’s NEIMAN MARCUS mark in any way. In the absence of evidence suggesting otherwise, the Panel finds that Respondent has not established rights or legitimate interests in accordance with Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The <neimanmarcuswear.info> and <marcusneimanstyle.info> domain names resolve to blank pages with no content. Furthermore, Respondent has failed to set forth evidence of demonstrable preparation to use the disputed domain names. As such, the Panel finds that the Respondent’s failure to use the <neimanmarcuswear.info> and <marcusneimanstyle.info> domain names amounts to evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that the failure to use a domain name permits an inference of registration and use in bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <neimanmarcuswear.info> and <marcusneimanstyle.info> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 22, 2006
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