NM Nevada Trust, The Neiman Marcus Group, Inc. and Bergdorf
Goodman, Inc. v. David Bedwell
Claim Number: FA0202000104965
Complainants are
NM Nevada Trust, The Neiman Marcus Group, Inc. and Bergdorf Goodman, Inc.,
Las Vegas, NV (collectively referred to hereinafter as “Complainant”) represented
by David J. Steele, of Christie, Parker & Hale LLP. Respondent is David Bedwell, Los Angeles, CA (“Respondent”).
REGISTRAR AND DISPUTED
DOMAIN NAME
The domain name at issue is <bergdorfs.com>, registered with EasySpace, Ltd.
PANEL
The undersigned certifies that she has acted
independently and impartially and to the best of her knowledge, has no known
conflict in serving as Panelist in this proceeding.
Sandra Franklin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National
Arbitration Forum (the “Forum”) electronically on February 20, 2002; the Forum
received a hard copy of the Complaint on February 21, 2002.
On February 21, 2002, EasySpace, Ltd. confirmed by
e-mail to the Forum that the domain name <bergdorfs.com>
is registered with EasySpace, Ltd. and that Respondent is the current
registrant of the name. EasySpace, Ltd.
has verified that Respondent is bound by the EasySpace, Ltd. 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 February 25, 2002, a Notification of Complaint
and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of March 18, 2002 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@bergdorfs.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 March 22, 2002, pursuant to Complainant’s request
to have the dispute decided by a single-member Panel, the Forum appointed
Sandra Franklin 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 name be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1.
Complainant owns a family of at least seven United
States registrations containing BERGDORF and variations thereof, as well as the
world-famous common law trademark BERGDORF.
Collectively, these marks are referred herein as the BERGDORF
trademarks.
2.
Complainant has
been the substantially exclusive user of the BERGDORF trademarks in the United
States since at least as early as 1901, and has been using the marks
continuously ever since.
3.
Complainant’s
trademark rights in BERGDORF were established long before Respondent registered
the contested domain name.
4.
As
a result of over a century of use, the operation of Complainant’s flagship
Fifth Avenue store, and the worldwide distribution of mail order catalogs,
Complainant has created in the BERGDORF marks some of the most famous and
prestigious marks in retailing.
5.
The
BERGDORF trademarks have invaluable goodwill and reputation, not only in the
United States but also throughout the world.
Hundreds of thousands of customers hold Bergdorf Goodman charge
accounts, and sales revenues for the Bergdorf Goodman stores and catalogs total
in the hundreds of millions of dollars during the past decade alone.
6.
Respondent’s
domain name <bergdorfs.com> is
virtually identical to Complainant’s family of BERGDORF marks.
7.
Respondent
is not known individually, or as a business, or in any other manner by
“Bergdorfs” or <bergdorfs.com>.
8.
Complainant
has not licensed or otherwise permitted
Respondent to use any of its trademarks and has not licensed or otherwise
permitted Respondent to apply for or use any domain name incorporating any of
those marks.
9.
Respondent
has not made any use of, or demonstrable preparations to use, the domain
name. Accordingly, Respondent cannot
claim any legitimate noncommercial or fair use of the domain name.
10.
Respondent’s
registration and “passive holding” of <bergdorfs.com>
amounts to bad faith.
11.
Respondent
has shown further bad faith by supplying false information to the registrar
when registering the domain name.
12.
Complainant
sent a cease and desist letter sent to the Respondent using the contact name
and address reported to the registrar.
The letter was returned with the comment “no such person” written across
the front of the envelope.
B. Respondent
No Response was received.
FINDINGS
Complainant owns the
following marks:
|
MARK |
REG. NO. |
GOODS DESCRIPTION |
|
BERGDORF GOODMAN |
Reg. No. 674,632 First Use: 1901 Filed: 04/19/1957 |
Ladies’ coats, suits, and
dresses (Int’l class 25) |
|
BERGDORF GOODMAN |
Reg. No. 992,733 First Use: 1901 Filed: 08/20/1973 |
Retail specialty department
store service (Int’l Class 042) |
|
BERGDORF GOODMAN |
Reg. No. 866,011 First Use: 1928 Filed: 04/18/1967 |
Billfolds, business and
credit card cases, handbags, and wallets.
(Int’l Class 018); Watches.
(Int’l Class 014); Jewelry-namely, bracelets, pins, rings, earrings,
necklaces. (Int’l class 014); Antique
furniture-namely, chairs, tables [and lamps]. (Int’l Class 020); Women’s Clothing-namely, brassieres,
chemises, coats, dresses, furs, girdles, gloves, hats, jackets, nightgowns,
peignoirs, petticoats, raincoats, robes, scarves, shoes, skirts, slacks,
slippers, slips, stockings, sweaters; and men’s clothing-namely-coats,
cummerbunds, jackets, pajamas, pants, robes, shirts, sweaters, swimming
trunks, ties and vests. (Int’l Class
018); Umbrellas. (Int’l Class 018);
Perfumes, cologne, bath oil, dusting powder, shaving soap, after-shave
lotion, personal deodorants, and hairdressings. (Int’l Class 003); Toilet soap. (Int’l class 003) |
|
BERGDORF GOODMAN |
Reg. No. 845,203 First Use: 1928 Filed: 04.18/1967 |
Full Storage Service.
(Int’l Class 039) |
|
BERGDORF GOODMAN and design |
Reg. No. 1,902,799 First Use: 1928 Filed: 01/10/1994 |
Full line of men’s and
women’s apparel. (Int’l Class 025) |
|
BERGDORF MEN |
Reg. No. 2,110,801 First Use: 09/02/1996 Filed: 11/25/1996 |
Retail specialty department
store services. (Int’l Class 035) |
|
MISS BERGDORF |
Reg. No. 863,351 First Use: 08/00/1955 Filed: 04/18/1967 |
Women’s clothing-namely
coats, dresses, furs, hats, jackets, raincoats, shoes, shirts, skirts,
slacks, and swimwear. (Int’l Class 018) |
Respondent registered the
disputed domain name on April 20, 2000 and has failed to resolve the domain
name to a website.
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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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; and
(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 domain name incorporates the dominant section of Complainant’s BERGDORF marks. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to Complainant’s ASPREY & GARRARD and MISS ASPREY marks). Also, the addition of the letter “s” does not reduce the confusingly similar aspect of the domain name. See Nat’l Geographic Soc. v. Stoneybrook Inv., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to Complainant’s “National Geographic” mark).
Respondent has misappropriated a sufficient textual component of the BERGDORF marks to cause confusion. The fact that subject domain name <bergdorfs.com> is not identical to the Complainants’ family of trademarks is not of importance. “[I]denticality 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.” Awesome Kids LLC v. Selavy Comm., D2001-0210 (WIPO Apr. 16, 2001).
Accordingly, the Panel
finds that Respondent’s domain name is confusingly similar to Complainant’s
family of marks and that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate
Interests
Complainant has established that it has rights to
and legitimate interests in the marks contained in their entirety in the
disputed domain names that Respondent registered. In addition, Complainant has shown that Respondent has no such rights. Respondent’s passive holding of the <bergdorfs.com> domain name does
not demonstrate a use in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i). See
Am. Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001)
(finding no rights or legitimate interests in the domain name
<solgarvitamins.com> where Respondent merely passively held the domain
name).
No evidence is found in this record, and Respondent
has not come forward to establish such evidence, that Respondent is commonly
known by the <bergdorfs.com> domain
name, pursuant to Policy ¶ 4(c)(ii).
Additionally, Complainant has not
licensed or otherwise permitted the Respondent to use any of its trademarks and
has not licensed or otherwise permitted Respondent to apply for or use any
domain name incorporating any of those marks. See Systima Ltd. v. Byrne, D2001-0300 (WIPO Apr. 23, 2001)
(finding “[t]here is no indication from the evidence before this Administrative
Panel that the Respondent has ever been known by the said domain name so as to
claim rights or a legitimate interest in accordance with Paragraph 4(c)(ii) of
the Policy”).
Furthermore, no evidence demonstrates that
Respondent is making any legitimate, noncommercial or fair use of the <bergdorfs.com> domain name
pursuant to Policy ¶ 4(c)(iii). See
Chanel, Inc. v. Heyward, D2000-1802 (Feb. 23, 2001) (finding no rights or
legitimate interests where "Respondent registered the domain name and did
nothing with it").
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad
Faith
Respondent’s passive holding of the domain name is
sufficient to find bad faith under Policy ¶ 4(a)(iii). See Alitalia –Linee Aeree Italiane S.p.A
v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where
the Respondent made no use of the domain name in question and there were no
other indications that the Respondent could have registered and used the domain
name in question for any non-infringing purpose); see also DCI S.A. v.
Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the
Respondent’s passive holding of the domain name satisfies the requirement of
paragraph 4(a)(iii) of the Policy).
Furthermore, Respondent has acted in bad faith by
providing incorrect contact information to the registrar. See Home Director, Inc. v. HomeDirector,
D2000-0111, (WIPO Apr. 11, 2000) (finding that providing false or misleading
information in connection with the registration of the domain name is evidence
of bad faith).
The Panel finds that Complainant has satisfied the
burden under Policy ¶ 4(a)(iii).
DECISION
Having established all three
elements required under the ICANN Policy, the Panel concludes that the
requested relief be hereby granted.
Accordingly, it is Ordered
that the domain name <bergdorfs.com>
be transferred from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: March 27, 2002
Click Here to
return to the main Domain Decisions Page.
Click Here to return to our Home Page