The Neiman Marcus Group, Inc. and NM
Nevada Trust v. Unasi Management Inc.
Claim Number: FA0503000448719
Complainant is The Neiman Marcus Group, Inc. and NM Nevada Trust (collectively
“Complainant”), represented by David J.
Steele, of Christie, Parker &
Hale LLP, 3501 Jamboree Road, Suite 6000, Newport Beach, CA 92660. Respondent is Unasi Management Inc. (“Respondent”), Galerias Alvear, Via
Argentina 2, Oficina #3, Zona 5, Panama 5235, Panama.
The
domain names at issue are <neimanmarcusshoes.com>, <neimanmarcuscatalog.com>,
<neimanmarcusfashion.com>, <www-neimanmarcus.com>, <neimanmarcs.com>, <neimanmarcys.com>, and <neimanmarcusbenefits.com>,
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.
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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
28, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 29, 2005.
On
April 1, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail
to the National Arbitration Forum that the domain names <neimanmarcusshoes.com>, <neimanmarcuscatalog.com>,
<neimanmarcusfashion.com>, <www-neimanmarcus.com>, <neimanmarcs.com>, <neimanmarcys.com>, and <neimanmarcusbenefits.com> are
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent
is the current registrant of the names. Iholdings.com, Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.com 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
April 1, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 21, 2005 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@neimanmarcusshoes.com,
postmaster@neimanmarcuscatalog.com,
postmaster @neimanmarcusfashion.com,
postmaster@www-neimanmarcus.com,
postmaster@neimanmarcs.com, postmaster@neimanmarcys.com, and postmaster@neimanmarcusbenefits.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 National Arbitration
Forum transmitted to the parties a Notification of Respondent Default.
On
April 27, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Judge Harold
Kalina (Ret.) 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 <neimanmarcusshoes.com>, <neimanmarcuscatalog.com>,
<neimanmarcusfashion.com>, <www-neimanmarcus.com>, <neimanmarcs.com>, <neimanmarcys.com>, and <neimanmarcusbenefits.com> domain
names are confusingly similar to Complainant’s NEIMAN MARCUS mark.
2. Respondent does not have any rights or
legitimate interests in the <neimanmarcusshoes.com>,
<neimanmarcuscatalog.com>, <neimanmarcusfashion.com>, <www-neimanmarcus.com>, <neimanmarcs.com>, <neimanmarcys.com>, and <neimanmarcusbenefits.com> domain
names.
3. Respondent registered and used the <neimanmarcusshoes.com>, <neimanmarcuscatalog.com>, <neimanmarcusfashion.com>, <www-neimanmarcus.com>, <neimanmarcs.com>, <neimanmarcys.com>, and <neimanmarcusbenefits.com> domain
names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
NM Nevada Trust owns and licenses to The Neiman Marcus Group, Inc., the NEIMAN
MARCUS mark. These two entities will be
collectively referred to as “Complainant.”
Complainant, was established in 1907 as a local specialty store and has
become an internationally recognized innovator in fashion and merchandise. Complainant owns several trademark
registrations with the United States Patent and Trademark Office for the NEIMAN
MARCUS mark. (Reg. No. 601,375 issued April 6, 1954; Reg. No. 601,864 issued
May 19, 1954; Reg. No. 601,723 issued February 1, 1955; and Reg. No. 1,733,202
issued September 5, 1943).
Complainant operates
35 Neiman Marcus stores located in premier retail locations in major markets
nationwide. In the Fall of 1999,
Complainant expanded its retailing strategy by launching an e-commerce website
available at <neimanmarcus.com>.
Respondent
registered the <neimanmarcusshoes.com>,
<neimanmarcuscatalog.com>, and
<neimanmarcusfashion.com> domain
names on March 7, 2005, the <www-neimanmarcus.com>
domain name on February 14, 2005, the <neimanmarcs.com>
domain name on April 1, 2004, the <neimanmarcys.com>
domain name on May 31, 2004, and the <neimanmarcusbenefits.com>
domain name on February 21, 2005. Respondent is using the domain names to
redirect Internet users to commercial websites in direct competition with
Complainant’s fashion and merchandise business.
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.
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 has
established with extrinsic proof in this proceeding that it has rights in the
NEIMAN MARCUS mark through registration with the United States Patent and
Trademark Office and by continuous use of its mark in commerce for the last
ninety-seven years. See 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 and have acquired
secondary meaning.”); see also Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding
that panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. The respondent has the burden of refuting
this assumption).
The <neimanmarcusshoes.com>, <neimanmarcuscatalog.com>, <neimanmarcusfashion.com>, and <neimanmarcusbenefits.com> domain
names are confusingly similar to Complainant’s NEIMAN MARCUS mark because the
domain names incorporate Complainant’s mark in its entirety and simply add the
generic or descriptive words “shoes,” “catalog,” “fashion,” or “benefits.” The mere addition of a generic or
descriptive word to a registered mark does not negate the confusingly similar
aspects of Respondent’s domain names pursuant to Policy ¶ 4(a)(i). See
L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14,
2000) (finding that combining the generic word “shop” with the complainant’s
registered mark “llbean” does not circumvent the complainant’s rights in the
mark nor avoid the confusing similarity aspect of the ICANN Policy); see also Oki Data Americas, Inc. v. ASD
Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name
incorporates a Complainant’s registered mark is sufficient to establish
identical or confusing similarity for purposes of the Policy despite the
addition of other words to such marks.”); see
also Westfield Corp., Inc. v. Hobbs, D2000-0227 (WIPO May 18, 2000)
(finding the <westfieldshopping.com> domain name confusingly similar
because the WESTFIELD mark was the dominant element).
The <neimanmarcs.com> domain name is
confusingly similar to Complainant’s NEIMAN MARCUS mark because the domain name
incorporates Complainant’s mark in its entirety and omits the letter “u” from
the word “Marcus” in Complainant’s mark.
The omission of the letter “u” from Complainant’s mark does not negate
the confusingly similar aspects of Respondent’s domain name pursuant to Policy
¶ 4(a)(i). See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA
94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name
<statfarm.com> was confusingly similar to the complainant’s STATE FARM
mark); see also Compaq Info. Techs.
Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding
that the domain name <compq.com> was confusingly similar to the
complainant’s COMPAQ mark because the omission of the letter “a” in the domain
name does not significantly change the overall impression of the mark).
The <neimanmarcys.com> domain name is
confusingly similar to Complainant’s NEIMAN MARCUS mark because the domain name
incorporates Complainant’s mark in its entirety and merely replaces the letter
“u” in the word “marcus” with the letter “y.”
The replacement of the letter “u” with the letter “y” in Complainant’s
mark does not negate the confusingly similar aspects of Respondent’s domain
name pursuant to Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency to be confusingly
similar to the trademark where the trademark is highly distinctive); see also Toronto-Dominion Bank v. Karpachev,
D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names
<tdwatergouse.com> and <dwaterhouse.com> were virtually identical
to the complainant’s TD WATERHOUSE name and mark).
The <www-neimanmarcus.com> domain
name is confusingly similar to Complainant’s NEIMAN MARCUS mark because the
domain name incorporates Complainant’s mark in its entirety and merely adds the
letters “www” and a hyphen to Complainant’s mark. The addition of the letters “www” and a hyphen to Complainant’s
mark does not negate the confusingly similar aspects of Respondent’s domain
name pursuant to Policy ¶ 4(a)(i). See Bank of Am. Corp. v. InterMos, FA
95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that the respondent’s domain name
<wwwbankofamerica.com> was confusingly similar to the complainant’s
registered trademark BANK OF AMERICA because it “takes advantage of a typing
error (eliminating the period between the www and the domain name) that users
commonly make when searching on the Internet”); see also Marie Claire Album
v. Blakely, D2002-1015 (WIPO Dec. 23, 2002) (holding that the letters
"www" are not distinct in the "Internet world" and thus the
respondent 's <wwwmarieclaire.com> domain name was confusingly similar to
the complainant's MARIE CLAIRE trademark); see
also Chernow Communications, Inc. v. Kimball, D2000-0119 (WIPO May 18,
2000) (“[T]he use or absence of punctuation marks, such as hyphens, does not
alter the fact that a name is identical to a mark."); see also Mrs. World Pageants,
Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding
that punctuation is not significant in determining the similarity of a domain
name and mark).
Furthermore,
Respondent’s <neimanmarcusshoes.com>,
<neimanmarcuscatalog.com>, <neimanmarcusfashion.com>, <www-neimanmarcus.com>, <neimanmarcs.com>, <neimanmarcys.com>, and <neimanmarcusbenefits.com> domain
names are confusingly similar to Complainant’s NEIMAN MARCUS mark because the
domain names incorporate Complainant’s mark in its entirety and deviate with
the addition of the generic top-level domain “.com.” The mere addition of generic top-level domains does not negate
the confusingly similar aspects of Respondent’s domain name pursuant to Policy
¶ 4(a)(i). See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that the domain name
<gaygames.com> was identical to the complainant's registered trademark
GAY GAMES); see also Little Six, Inc. v. Domain For Sale, FA
96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> was
plainly identical to the complainant’s MYSTIC LAKE trademark and service mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent has no rights or legitimate interests in the <neimanmarcusshoes.com>, <neimanmarcuscatalog.com>, <neimanmarcusfashion.com>, <www-neimanmarcus.com>, <neimanmarcs.com>, <neimanmarcys.com>, and <neimanmarcusbenefits.com> domain
names. Once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent to
prove that it does have such rights or legitimate interests pursuant to Policy
¶ 4(a)(ii). Due to Respondent’s failure
to respond to the Complainant, the Panel will assume that Respondent has not
established rights and legitimate interests in the disputed domain name. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that where the complainant has asserted that respondent has no rights
or legitimate interests with respect to the domain name it is incumbent on
respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Clerical Med. Inv.
Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding
that under certain circumstances the mere assertion by the complainant that the
respondent has no rights or legitimate interests is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
Moreover, where
Complainant makes the prima facie showing and Respondent does not respond, the
Panel may accept all reasonable allegations and inferences in the Complaint as
true. 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) (holding that the respondent’s failure to respond
allows all reasonable inferences of fact in the allegations of the complainant
to be deemed true).
Respondent is
using the <neimanmarcusshoes.com>,
<neimanmarcuscatalog.com>, <neimanmarcusfashion.com>, <www-neimanmarcus.com>, <neimanmarcs.com>, <neimanmarcys.com>, and <neimanmarcusbenefits.com> domain
names to redirect Internet users to commercial websites in direct competition
with Complainant’s fashion and merchandise business. Respondent’s use of a domain name confusingly similar to
Complainant’s NEIMAN MARCUS mark to redirect Internet users interested in
Complainant’s products to a commercial website that offers similar goods is not
a use in connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the
domain name pursuant to Policy ¶ 4(c)(iii).
See Bank of America Corp. v. Out
Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (holding that
the respondent’s use of infringing domain names to direct Internet traffic to a
search engine website that hosted pop-up advertisements was evidence that it
lacked rights or legitimate interests in the domain name); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000)
(“[I]t would be unconscionable to find a bona fide offering of services in a
respondent’s operation of a web-site using a domain name which is confusingly
similar to the Complainant’s mark and for the same business.”); see also U.S. Franchise Sys., Inc. v. Howell,
FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of
the complainant’s mark and the goodwill surrounding that mark as a means of
attracting Internet users to an unrelated business was not a bona fide offering
of goods or services).
Moreover,
Respondent has offered no evidence and there is no proof in the record
suggesting that Respondent is commonly known by the <neimanmarcusshoes.com>, <neimanmarcuscatalog.com>,
<neimanmarcusfashion.com>, <www-neimanmarcus.com>, <neimanmarcs.com>, <neimanmarcys.com>, and <neimanmarcusbenefits.com> domain
names. Thus, Respondent has not
established rights or legitimate interests in the disputed domain names
pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interests 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); see also Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark); see also Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because the respondent was not
commonly known by the disputed domain name nor was the responondent using the
domain name in connection with a legitimate or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <neimanmarcusshoes.com>,
<neimanmarcuscatalog.com>, <neimanmarcusfashion.com>, <www-neimanmarcus.com>, <neimanmarcs.com>, <neimanmarcys.com>, and <neimanmarcusbenefits.com> domain
names, which are confusingly similar to Complainant’s NEIMAN MARCUS mark, to
redirect Internet users to commercial websites in direct competition with
Complainant’s fashion and merchandise business. The Panel finds that such use constitutes disruption and is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000)
(finding the respondent acted in bad faith by attracting Internet users to a
website that competes with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000)
(finding that the respondent diverted business from the complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii)).
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
competing websites. Since Respondent’s
domain names are confusingly similar to Complainant’s NEIMAN MARCUS mark,
Internet users accessing Respondent’s domain names may become confused as to
Complainant’s affiliation with the resulting website. Thus, Respondent’s commercial use of the <neimanmarcusshoes.com>, <neimanmarcuscatalog.com>,
<neimanmarcusfashion.com>, <www-neimanmarcus.com>, <neimanmarcs.com>, <neimanmarcys.com>, and <neimanmarcusbenefits.com> domain
names constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002)
(finding that if the respondent profits from its diversionary use of the
complainant’s mark when the domain name resolves to commercial websites and the
respondent fails to contest the complaint, it may be concluded that the
respondent is using the domain name in bad faith pursuant to Policy ¶
4(b)(iv)); see also Drs. Foster &
Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad
faith where the respondent directed Internet users seeking the complainant’s
site to its own website for commercial gain).
Furthermore,
Respondent registered the <neimanmarcusshoes.com>,
<neimanmarcuscatalog.com>, <neimanmarcusfashion.com>, <www-neimanmarcus.com>, <neimanmarcs.com>, <neimanmarcys.com>, and <neimanmarcusbenefits.com> domain
names with actual or constructive knowledge of Complainant’s rights in the
NEIMAN MARCUS mark due to Complainant’s registration of the mark with the
United States Patent and Trademark Office.
Moreover, the Panel infers that Respondent registered the domain name
with actual knowledge of Complainant’s rights in the mark due to the obvious
connection between the content advertised on Respondent’s website and
Complainant’s business. Registration of
a domain name that is confusingly similar to another’s mark despite actual or
constructive knowledge of the mark holder’s rights in the mark is evidence of
bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here
is a legal presumption of bad faith, when the respondent reasonably should have
been aware of the complainant’s trademarks, actually or constructively.”); see also Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) (“[T]he complainant’s OXICLEAN mark is
listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”); see
also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that
because the link between the complainant’s mark and the content advertised on
the respondent’s website was obvious, the respondent “must have known about the
complainant’s mark when it registered the subject domain name”).
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 <neimanmarcusshoes.com>,
<neimanmarcuscatalog.com>, <neimanmarcusfashion.com>, <www-neimanmarcus.com>, <neimanmarcs.com>, <neimanmarcys.com>, and <neimanmarcusbenefits.com> domain
names be TRANSFERRED from Respondent
to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
May 10, 2005
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