The Neiman-Marcus Group, Inc v. North Star Futon Factory
Claim Number: FA0110000100237
Complainant is The Neiman-Marcus Group, Inc, Dallas, TX ("Complainant") represented by David J. Steele, of Christie, Parker & Hale LLP. Respondent is North Star Futon Factory, Scarborough, Ontario, Canada ("Respondent").
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <neimanmarcusonline.com>, registered with Network Solutions.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 3, 2001; the Forum received a hard copy of the Complaint on October 4, 2001.
On October 4, 2001, Network Solutions confirmed by e-mail to the Forum that the domain name <neimanmarcusonline.com> is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 4, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 24, 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 firstname.lastname@example.org 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 November 5, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
No Response was received.
Complainant’s principal retail chain, The Neiman Marcus Company, was established in 1907. Complainant has developed a reputation for high quality as well as high prices.
Complainant owns several United States trademark registrations for NEIMAN-MARCUS (the Neiman-Marcus trademarks). Complainant has been the substantially exclusive user of the Neiman-Marcus trademarks in the United States since 1907, and has been using the mark continuously ever since.
At least the following United States trademark registrations are owned by the Complainant:
Reg. No. 601-375
First Use 01/01/1907
Women’s and misses’ wearing apparel – namely coats, raincoats, suits, dresses, [maternity dresses,] evening gowns, outer skirts, jackets, blouses, sweaters, outer shirts, vests, guimpes, scarves, shawls, neckties, [collar and cuff sets;] gloves of leather, and of fabric and of combinations there of; lounging, bath, and beach robes; bathing suits; negligee; kiminos; underwear; under skirts; petite coats; slips; pajamas and nightgowns; corsets, brassieres, and combination corset garments; garter belts, [garters, and hose supporters;] hosiery; boots, shoes, and slippers; hats, caps, and bonnets; fur garments – namely, coats, jackets, capes, wraps, stoles, neck pieces, scarves, collars, and muffs [and riding clothes – namely, britches, coats, and habits]. (Int’l Class 025)
Reg. No. 601-864
First Use 1939
[Watch fobs;] cuff links, tie pins, and tie clips, all three items made of precious metal; [dress clips] and broaches. (Int’l Class 014)
Reg. No. 601-723
First Use 09/22/1929
Men’s clothing – namely, overcoats, suits, jackets, sports coats, trousers, slacks, outer shirts, sports shirts, sweaters, underwear, pajamas, lounging robes, bathrobes, beach robes, beach shirts, swimming trunks, hosiery, garment belts, neckties, and hats. (Int’l Class 025)
Complainant’s trademark rights in Neiman-Marcus were established long before Respondent registered the contested domain name on January 24, 2000.
In 1999, the Complainant expanded its retailing strategy by launching an e-commerce website, available at <neimanmarcus.com>.
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
Identical and/or Confusingly Similar
Respondent’s registered domain name, <neimanmarcusonline.com>, is confusingly similar to Complainant’s Neiman-Marcus trademarks and <neimanmarcus.com> domain name. The fact that Respondent omitted the hyphen between "Neiman" and "Marcus", of course, does not remedy the confusion between the Neiman-Marcus trademarks and the domain name. See National Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, is confusingly similar to Complainant's mark).
Respondent’s use of the Neiman-Marcus mark as a prominent portion of the domain name also creates consumer confusion. That Respondent added the generic phrase "online" to the end of Complainant’s mark makes the disputed domain name confusingly similar to Complainant’s mark, as it describes another service affiliated with Complainant’s goods. See Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding confusing similarity were the domain name in dispute contains the identical mark of the Complainant combined with the generic term "online"); see also 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).
In the present case, because Complainant markets and sells its goods via the Internet or "online," Internet users who are familiar with the goods offered by Complainant under its Neiman-Marcus mark are highly likely to think that there is an affiliation between Respondent’s website and Complainant. See Awesome Kids LLC v. Selavy Comm., D2001-0210 (WIPO Apr. 16, 2001) (finding "identicality is not necessary. All that is necessary is that the domain name misappropriate sufficient textual components from the mark such that an ordinary Internet user who is familiar with the goods or services distributed under the mark would upon seeing the domain name likely think that owing to the visual and/or phonetic similarity between the mark and the domain name that an affiliation exists between the site identified by that domain name and the owner or licensed user of the mark").
Therefore, the domain name <neimanmarcusonline.com> is confusingly similar to Complainant’s mark, and Complainant has met the burden set forth under Policy 4(a)(i).
Rights or Legitimate Interests
Respondent has no rights or legitimate interests in the disputed domain name because Respondent has attempted to generate revenue by trading on Complainant’s famous trademarks and creating confusion and mistake as to an affiliation with the Complainant. In general, a Respondent has no rights or legitimate interests where it intentionally and misleadingly diverts users away from Complainant's site to a competing website. Such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights or legitimate interests where Respondent diverted Complainant’s customers to his websites); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also Household Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (inferring that Respondent registered the domain name <householdbank.com>, which incorporates Complainants HOUSEHOLD BANK mark, with hopes of attracting Complainant’s customers and thus finding no rights or legitimate interests).
Because Respondent has requested "serious coin" in exchange for the disputed domain name and has hoarded a number of domain names that incorporate other parties’ marks, it is likely that Respondent registered the disputed domain name with the intention of selling the domain name for profit. See Globosat Programadora Ltda v. Artmidia Comunicacao Visual Criacao E Arte Ltda, D2000-0605 (WIPO Sept. 13, 2000) (finding that "the fact that almost all the domain names registered by the Respondent or the Administrative Contact for these domains are inactive and redirected to a site apparently dedicated to the commerce of domain names, force this Panelist to consider that….Respondent has registered the domain names primarily for the purpose of selling, renting or otherwise transferring the domain names registration to the Complainant or to a Complainant's competitor for valuable consideration"). Attempting to sell a domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the Respondent registered the domain name with the intention of selling the domain name).
Complainant has established that Respondent is not known individually, or as a business, or in any other manner by "Neiman-Marcus" or "Neimanmarcusonline." Respondent has no affiliation or relationship with the Complainant nor any legitimate reason or purpose for using the Neiman-Marcus trademark in its domain name. See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in domain name when Respondent is not known by the mark).
In any case, Complainant’s Neiman-Marcus mark is so well established that this Panel would find it nearly impossible for Respondent to be commonly known by the disputed <neimanmarcusonline.com> domain name. See Victoria’s Secret et al v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well established use of the mark); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one "would be hard pressed to find a person who may show a right or legitimate interest" in a domain name containing Complainant's distinct and famous NIKE trademark).
Therefore, the Panel determines that Respondent has not established any rights or legitimate interests in the domain name, and that Complainant has met the burden set forth under Policy 4(a)(ii).
Registration and Use in Bad Faith
Respondent’s request for compensation in excess of documented out-of-pocket costs directly related to the domain name is evidence of bad faith registration and use under Policy ¶ 4(b)(i). See American Anti-Vivisection Soc’y v. "Infa dot Net" Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that "general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith"); see also Southern Co. v. Doms, D2000-0184 (WIPO May 8, 2000) (finding that the Respondent violated Policy ¶ 4(b)(i), by indicating to Complainant that he would "consider a cash offer", invited Complainant to "submit an opening cash or stock offer", and failed to reply to Complainant’s offer).
Respondent has also acted in bad faith under Policy ¶ 4(b)(ii). Respondent has established a pattern of conduct by registering numerous domain names that incorporate other parties’ famous trademarks. See General Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that the Respondent engaged in a pattern of conduct, by registering over fifty domain names such as <amazondirect.com> and <lycosdirect.com>, and intended to prevent holders from using their marks in corresponding domain names); see also Hitachi, Ltd. v. Fortune Int’l Dev. Ent, D2000-0412 (WIPO July 2, 2000) (finding a pattern of conduct where the Respondent registered numerous domain names with the number 2000, including <bmw2000.com>, <mercedesbenz2000.com>, <saab2000.net>, etc.); see also Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names, which infringe upon others’ famous and registered trademarks).
Respondent is taking advantage of the recognition that Complainant has created for its Neiman-Marcus mark and therefore profiting by diverting users seeking the Neiman-Marcus website to Respondent’s site. This is bad faith use and registration under Policy ¶ 4(b)(iv). See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the Respondent registered the domain name <bigtex.net> to infringe on the Complainant’s good will and attract Internet users to the Respondent’s website); see alsoMathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked <drmath.com>, which contains Complainant’s Dr. Math mark, to a website run by the Respondent, creating confusion for Internet users regarding the endorsement, sponsorship, of affiliation of the website); 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).
Lastly, because the Neiman-Marcus trademark is so obviously connected with Complainant, use of a confusingly similar domain name by someone with no connection with Complainant suggests bad faith. See Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 WIPO May 30, 2000 (finding that the domain name is so obviously connected with the Complainant and its services that its very use by someone with no connection with the Complainant suggests opportunistic bad faith).
In the present case Respondent has no connection with Complainant, and a finding of bad faith is fully supported by precedent.
Therefore, the Panel concludes that Respondent registered and used the domain name in bad faith, and that Complainant has established the burden set forth under Policy 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <neimanmarcusonline.com> be transferred from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: November 9, 2001
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