The
Neiman-Marcus Group, Inc v. John Zuccarini
Claim Number: FA0109000099763
PARTIES
Complainant is The Neiman-Marcus Group, Inc., Dallas, TX (“Complainant”)
represented by David J. Steele, of Christie, Parker & Hale LLP. Respondent is John Zuccarini, Andalusia, PA (“Respondent”).
REGISTRAR AND
DISPUTED DOMAIN NAMES
The domain names at issue are <niemannmarcus.com> and <neimannmarcus.com>, registered with Internet Council of Registrars.
PANEL
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 21, 2001; the Forum received a hard copy of the Complaint on September 24, 2001.
On September 25, 2001, Internet Council of Registrars confirmed by e-mail to the Forum that the domain names <niemannmarcus.com> and <neimannmarcus.com> are registered with Internet Council of Registrars and that Respondent is the current registrant of the name. Internet Council of Registrars has verified that Respondent is bound by the Internet Council of Registrars 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 September 25, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 15, 2001 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@niemannmarcus.com and postmaster@neimannmarcus.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 October 19, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 urges the following:
·
The domain names in issue are confusingly similar to
the Complainant’s marks.
· Respondent has no rights or legitimate interests in the domain names that contain in its entirety Complainant’s marks.
· Respondent registered and used the domain names in bad faith.
B. Respondent did not file a submission in this proceeding.
Complainant’s principal retail chain, Neiman Marcus, was established in 1907 as a local specialty store and has become an internationally recognized innovator in fashion and merchandise. Complainant has developed a reputation for high quality, which has made the “Neiman-Marcus” name synonymous with high fashion and world famous designers.
Complainant owns several United States trademark registrations for NEIMAN-MARCUS. Complainant has been the substantially exclusive user of the Neiman-Marcus trademarks in the United States since at least as early as 1907 and has been using the mark continuously since that time.
Complainant has operated its <neimanmarcus.com> website since August, 1995.
Respondent registered the disputed <niemannmarcus.com> and <neimannmarcus.com> domain names on December 15, 1999 and December 12, 1999, respectively.
Respondent’s sole use of the domain names is to trigger multiple pop-up advertisements when unsuspecting Internet users misspell Complainant’s name and mark in the domain name. The Internet users are then trapped or “mousetrapped” in the sites, unable to exit without clicking on a succession of ads. Respondent has been known to receive between ten and twenty-five cents from the advertisers for every click, totaling revenues in excess of one million dollars per year.
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.
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;
(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’s rights in the famous trademark NEIMAN-MARCUS are established.
The domain names registered by Respondent are virtually identical to or confusingly similar to Complainant’s famous mark. Each of the domain names registered by Respondent has a slight misspelling that permits the inference that Respondent intended the domain names to be confusingly similar to Complainant’s mark. See Victoria's Secret et al v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that Respondent’s domain names <victoriasecretmodels.com>, <victoriasecretsmodesl.com>, <victoriassecretmodesl.com>, <victoriasecerets.com>, <victoriasecretes.com>, <victoreasecret.com>, <victoriasecerts.com>, <lanebyrant.com>, and <laynebryant.com> were misspellings of Complainant’s VICTORIA’S SECRET and LANE BRYANT marks and thus, satisfied Policy ¶ 4(a)(i)).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has established rights to and legitimate interests in the NEIMAN-MARCUS mark that is contained in its entirety in the disputed domain names in issue. Respondent has not come forward to demonstrate rights to or legitimate interests in the <niemannmarcus.com> and <neimannmarcus.com> domain names. There is a presumption that a Respondent has no rights or legitimate interests with respect to the disputed domain names when that Respondent fails to submit a response. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (finding that failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Respondent is using the <niemannmarcus.com> and <neimannmarcus.com> domain names to mousetrap users into a series of commercial links that cannot be easily exited. Such a use does not constitute a bona fide offering of goods or services as provided under Policy ¶ 4(c)(i). See FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website).
Additionally, Complainant asserts, and Respondent did not refute, that Respondent is not known by the <niemannmarcus.com> and <neimannmarcus.com> mark or domain names pursuant to 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) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).
Finally, Respondent is using the disputed domain names to link users to a series of commercial sites that are not affiliated with the Complainant's marks; this is not a legitimate noncommercial or fair use of the <niemannmarcus.com> and <neimannmarcus.com> domain names as set forth under Policy ¶ 4(c)(iii). See AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent registered and is using the domain names in issue in bad faith. Respondent is using the <niemannmarcus.com> and <neimannmarcus.com> domain names to intentionally attract, for commercial gain, users to websites that are not affiliated with Complainant by creating a likelihood of confusion with respect to Complainant's marks and the source, sponsorship, or endorsement of these other websites. Such use is evidence of bad faith according to Policy ¶ 4(b)(iv). See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the Respondent attracted users to advertisements); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements under the ICANN Policy, the Panel concludes that the requested relief should be granted.
Accordingly, it is Ordered that the <niemannmarcus.com> and <neimannmarcus.com> domain names be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 2, 2001.
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