The Neiman Marcus Group, Inc. and NM Nevada
Trust v. Faith McGary
Claim Number: FA0607000757475
PARTIES
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 Faith McGary (“Respondent”), 1324 Madison Ave, Bethlehem, PA 18018.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <neimanmarcusmobile.info>
and <neimanmarcusonline.info>, registered with Schlund+Partner AG.
PANEL
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.
Alan L. Limbury as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on July 21, 2006; the National Arbitration Forum received a hard
copy of the Complaint on July 24, 2006.
On July 25, 2006, Schlund+Partner AG confirmed by e-mail to the
National Arbitration Forum that the <neimanmarcusmobile.info>
and <neimanmarcusonline.info> domain names are registered with Schlund+Partner
AG and that the Respondent is the current registrant of the names. Schlund+Partner AG has verified that
Respondent is bound by the Schlund+Partner AG 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 August 1, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of August 21, 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@neimanmarcusmobile.info and
postmaster@neimanmarcusonline.info by e-mail.
A Response was received in electronic but not hard copy on August 2,
2006 and thus the National Arbitration Forum has deemed the Response deficient
according to Supplemental Rule #5(a).
The Panelist has nevertheless taken the Response into account in the
interests of procedural fairness.
On August 9, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Alan L. Limbury as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to The Neiman Marcus Group, Inc.
PARTIES’ CONTENTIONS
A. Complainant
Complainant conducts under the name Neiman Marcus a retail business
established in 1907 as a specialty store in Dallas, Texas and which has since
grown into a nationwide chain of retail stores and a worldwide mail order
catalog retail business, internationally recognized as an innovator in high end
fashion and merchandising. It has been
conducting business online since 1999 through the website reached through the
domain name <neimanmarcus.com>.
NM Nevada Trust owns and licenses to The Neiman Marcus Group, Inc. the
famous trademark NIEMAN MARCUS, which is the subject of numerous United States
trademark registrations, including No. 934,177 registered in International
Class 42 on May 16, 1972 in respect of retail specialty department store
services, citing first use in commerce in 1907.
The disputed domain names are confusingly similar to Complainant’s
NEIMAN MARCUS marks; Respondent has no rights or legitimate interests in
relation to the domain names, which were registered and are being used in bad
faith, in particular under paragraph 4(b)(i) of the Policy. Having ignored Complainant’s Counsel’s offer
to reimburse to Respondent her documented out of pocket expenses paid to the
Registrar when registering the domain names, Respondent is now directing users
to Complainant’s website at <neimanmarcus.com>.
B. Respondent
Respondent denies cybersquatting and denies that the domain names were
ever for sale to anyone. The domain
names point to Complainant’s website.
She has tried to transfer the domain names to Complainant but has been
unable to do so because of the Registrar Lock placed upon them upon the filing
of the Complaint.
FINDINGS
Complainant has established all the elements
entitling it to the relief sought.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
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.
Many cases have established that the test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors, such as the "Sleekcraft factors" – AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 346 (9th Cir. 1979), usually considered in trademark infringement or unfair competition cases. See BWT Brands, Inc. and British American Tobacco (Brands), Inc v. NABR, D2001-1480 (WIPO Mar. 26, 2002); Britannia Building Society v. Britannia Fraud Prevention, D2001‑0505 (WIPO Jul. 12, 2001); Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 21, 2000); Koninklijke Philips Electronics N.V. v. In Seo Kim, D2001‑1195 (WIPO Nov. 12, 2001); Energy Source Inc. v. Your Energy Source, FA 96364 (Nat. Arb. Forum Feb. 19, 2001); Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, Inc., D2001-1121 (WIPO Nov. 7, 2001). See also Northern Light Tech., Inc. v. N. Lights Club 2000 U.S. Dist. LEXIS 4732 (D. Mass. March 31, 2000) (adopting a similar approach in U.S. Federal court).
In Microsoft
Corp. v. Microsof.com a/k/a Tarek Ahmed, D2000-0548 (WIPO Jul. 24, 2000),
contributing factors to the likelihood of confusion were held to be the visual
similarity between the domain name and the complainant’s mark and the mark
being strong and immediately recognizable.
Respondent has not denied
Complainant’s assertion that the NEIMAN MARCUS mark is famous. The addition to Complainant’s mark of the
words MOBILE in one case and ONLINE in the other, together with the
inconsequential “.info,” do nothing to detract from the distinctiveness of that
mark. The domain names are clearly
confusingly similar to Complainant’s famous NEIMAN MARCUS mark.
Complainant has established this element of
its case.
Rights
or Legitimate Interests
Once a complainant establishes a prima facie case against a respondent, the burden is on the respondent to provide evidence of its right or legitimate interests under paragraph 4(c) of the Policy. See, e.g., Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753 (WIPO Nov. 11, 2004).
Both domain names were registered on April 20, 2006. In an email response to a communication from
Complainant’s Counsel before the Complaint was filed, Respondent said on June
28, 2006:
These are parked and not being used. I
purchased them but do not intend to use them.
Respondent has not denied Complainant’s
assertions that she is not known individually or as a business or in any other
manner by any of the domain names; that she has no affiliation or relationship
with Complainant and has no reason for using Complainant’s trademark as a
domain name. Accordingly, no finding
can be made of rights or legitimacy under paragraph 4(c)(ii) of the Policy. Respondent’s expressed intent not to use the
domain names precludes any finding of rights or legitimacy under paragraphs
4(c)(i) and (iii) of the Policy. See
State Farm Mutual
Automobile Ins. Co. v. Faw,
FA 94971 (Nat. Arb. Forum Jul. 12, 2000) (finding no legitimate interest where
Respondent had not used nor developed the domain name for a legitimate
non-commercial or fair purpose and was not using the domain name in connection
with a bona fide offering of goods or services); see also Leland
Stanford Junior University v. Zedlar Transcription & Translation, FA
94970 (Nat. Arb. Forum Jul. 11, 2000).
Despite her denials of intent to use,
Respondent has in fact used the domain names to point to Complainant’s
website. This affords no foundation for
a finding of rights or legitimacy, however.
Complainant has established this element of
its case.
It should be noted that the circumstances
which, under paragraph 4(b) of the Policy,
constitute evidence of both bad faith registration and bad faith use are
not exhaustive and that each of these may be proved separately.
Respondent’s email of June 28, 2006
continued:
You[r] clients could have purchased these
domains. .info has been out now for
several years. Yet your clients did
choose with thought not to use these, leaving the door open for someone else to
purchase them. Your clients appear to
not care about their brand or name or these would have been purchased several
years back when .info was offered in both the silent and land rush opportunities.
So…they invited others to pick up something that they disregarded. Some[one] is
not “Cyber Squatting” if the domain is parked and not in use. If your clients want these domains, then..
then [sic] need to make a fair offer.
You can not require someone to turn over something they paid money for. I am trying to be fair about this. But, I did pay for these, and your clients
elected not to care enough to get them, so I do not understand why they care
now. The can purchase from me just like
they would from a domain company. The
domain company would not have given it to them for free either”.
In light of this, the Panel concludes that
Respondent was aware of Complainant’s famous mark when registering the domain
names and that this was an opportunistic act of bad faith registration. See Deutsche Bank AG v. Diego-Artyuro Bruckner, D2000-0277 (WIPO May
30, 2000).
As to Respondent’s assertion that there
cannot be cybersquatting unless there is use of the domain names, the ‘use’
requirement has been found not to require positive action, inaction being
within the concept. See Telstra
Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18,
2000); Barney’s, Inc. v. BNY Bulletin Board, D2000-0059 (WIPO
Apr. 5, 2000); CBS Broadcasting, Inc. v. Dennis Toeppen, D2000-0400
(WIPO Jul. 11, 2000); Video Networks Limited v. Larry Joe King, D2000-0487
(WIPO Jul. 25, 2000); Recordati S.P.A. v. Domain Name Clearing Company, D2000-0194
(WIPO Jul. 24, 2000); Revlon Consumer Products Corporation v. Yoram Yosef,
D2000-0468 (WIPO Aug. 2, 2000).
Here, however, there has been active use in
“parking” the domain names at Complainant’s website. This must give the false impression to Internauts seeking
Complainant’s site of an authorized association between Complainant and
Respondent which Respondent knew did not exist. The Panel finds this to constitute use in bad faith. See Sydney Opera House Trust v. Trilynx Pty.
Limited, D2000-1224 (WIPO
Nov. 8, 2000).
Further, the combination of the absence of
any rights or legitimate interest in the domain names, the terms of
Respondent’s email and the subsequent “parking” of the domain names at
Complainant’s website enable the inference to be drawn that Respondent
registered the domain names primarily for the purpose of selling them to
Complainant for valuable consideration in excess of her documented
out-of-pocket costs directly related to the domain names. Under paragraph 4(b)(i) of the Policy, this
is evidence of both bad faith registration and bad faith use.
Complainant has established this element of
its case.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <neimanmarcusmobile.info> and
<neimanmarcusonline.info> domain names be TRANSFERRED from
Respondent to Complainant The Neiman Marcus Group, Inc.
Alan L. Limbury, Panelist
Dated: August 22, 2006.
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