The Neiman Marcus Group, Inc. v. Party
Night Inc.
Claim Number: FA0205000114350
PARTIES
Complainant
is The Neiman Marcus Group, Inc.,
Dallas, TX, USA (“Complainant”) represented by David J. Steele, of Christie,
Parker & Hale LLP. Respondent is Party Night Inc., Amsterdam,
NETHERLANDS (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <neimanmarcas.com>,
registered with Key-Systems GmbH.
PANEL
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.
John
J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 20, 2002; the Forum received a hard copy of the Complaint
on May 23, 2002.
On
May 22, 2002, Key-Systems GmbH confirmed by e-mail to the Forum that the domain
name <neimanmarcas.com> is
registered with Key-Systems GmbH and that Respondent is the current registrant
of the name. Key-Systems GmbH has
verified that Respondent is bound by the Key-Systems GmbH 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
May 24, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 13,
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@neimanmarcas.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
July 1, 2002, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the Forum appointed John J. Upchurch 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. Respondent’s <neimanmarcas.com> domain
name is confusingly similar to Complainant’s registered NEIMAN MARCUS mark.
2. Respondent has no rights or legitimate
interests in the <neimanmarcas.com> domain name.
3. Respondent registered and used the <neimanmarcas.com>
domain name in bad faith.
B. Respondent did not submit a Response.
FINDINGS
Complainant owns several U.S. Patent and
Trademark Office (“USPTO”) registrations, including: Reg. No. 601,375 first
used in 1907; Reg. No. 601,864 first used in 1939; and, Reg. No. 1,593,195
first used in 1965.
Complainant’s retail chain was
established in 1907 as a local specialty store and has since become an
internationally recognized innovator in fashion and merchandise. As a result of
nearly a century of use, the Complainant has made its NEIMAN MARCUS mark one of
the most famous and distinctive trademarks in retailing. The NEIMAN MARCUS
family of trademarks has valuable goodwill and an internationally established
reputation.
Respondent registered the disputed domain
name on April 30, 2002. Respondent has used the dispute domain in conjunction
with a pornographic website located at the <hanky-panky-college.com>
domain. Respondent’s attached website offers a variety of pornographic
services, such as XXX passwords and various websites containing pornographic
content.
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.
Complainant has established its rights in
the NEIMAN MARCUS mark through registration with the USPTO and subsequent
continuous use for nearly a century.
Respondent’s <neimanmarcas.com>
domain name is confusingly similar to Complainant’s mark. Respondent is
engaging in typosquatting, the intentional registration of a domain name that
is a misspelling of a distinctive or famous mark.
In
the present case, Respondent’s domain name is identical, except for replacing
the “u” in Complainant’s NEIMAN MARCUS mark with an “a”. Such a slight
deviation fails to detract from the overall presence of Complainant’s mark.
Furthermore, because the pronunciation of the “u” sound in Complainant’s MARCUS
mark is often pronounced as an “a” sound, Internet users are likely to misspell
the mark. See Hewlett-Packard Co.
v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a
domain name which is phonetically identical to Complainant’s mark satisfies ¶
4(a)(i) of the Policy); see also VeriSign
Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the
pronunciation and spelling between the domain name <venesign.com> and the
Complainant’s mark, VERISIGN, are so close that confusion can arise in the mind
of the consumer); see also Dow
Jones & Co. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000)
(holding that the deliberate introduction of errors or changes, such as the
addition of a fourth “w” or the omission of periods or other such generic typos
do not change the Respondent’s infringement on a core trademark held by
Complainant).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Because Respondent has not submitted a
Response in this proceeding, the Panel may presume it has no rights or
interests in respect of the disputed domain name. See Canadian Imperial Bank of Commerce v. D3M
Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed). Furthermore, Respondent’s failure to
respond allows all reasonable inferences made by Complainant to be deemed true.
See Vertical Solutions Mgmt., Inc.
v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(failure to respond allows all reasonable inferences of fact in the allegations
of Complainant to be deemed true).
Respondent’s registration of a domain
name that emulates a famous mark, save one indistinguishable difference, fails
to establish Respondent’s rights and legitimate interests in the disputed
domain name. Respondent’s actions represent an attempt to divert Internet
traffic to its website while opportunistically trading on Complainant’s
established goodwill. Respondent’s actions are not in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor do they
represent a legitimate noncommercial or fair use of the domain name under
Policy ¶ 4(c)(iii). See Toronto-Dominion
Bank v. Karpachev, 188 F.Supp.2d
110, 114 (D.Mass
2002) (finding that, because the Respondent's sole purpose in selecting the
domain names was to cause confusion with the Complainant's website and marks,
it's use of the names was not in connection with the offering of goods or
services or any other fair use); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000)
(finding no rights or legitimate interests in the famous MSNBC mark where
Respondent attempted to profit using the Complainant’s mark by redirecting
Internet traffic to its own website).
Additionally, Respondent’s use of
Complainant’s famous NEIMAN MARCUS mark by creating a perceived affiliation
between Complainant and Respondent’s pornographic websites does not establish
rights under Policy ¶ 4(a)(ii). See Brown
& Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001)
(finding that infringing on another's well-known mark to provide a link to a
pornographic site is not a legitimate or fair use); see also MatchNet plc. v. MAC Trading,
D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of
goods or services to use a domain name for commercial gain by attracting
Internet users to third party sites offering sexually explicit and pornographic
material where such use is calculated to mislead consumers and to tarnish the
Complainant’s mark).
Respondent is not commonly known by
“neimanmarcas” or <neimanmarcas.com> pursuant to Policy ¶
4(c)(ii). It is not apparent, and Respondent has not provided any evidence,
that Respondent is known by the disputed domain name. See Canadian Imperial Bank of Commerce v. D3M
Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the Panel and Respondent did not come forward to suggest any right
or interest it may have possessed); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark).
The Panel finds that Respondent has
failed to establish rights to and legitimate interests in the <neimanmarcas.com>
domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
Because of the famous and distinct nature
of Complainant’s mark, the international presence and use of the NEIMAN MARCUS
mark for nearly a century, Respondent is thought to have been on notice as to
the existence of Complainant’s preexisting rights in the mark. Respondent did
not coincidentally register the <neimanmarcas.com> domain name.
Respondent’s registration and use of a confusingly similar domain name despite
knowledge of another’s rights represents bad faith under Policy ¶ 4(a)(iii). See
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb.
11, 2002) (finding that "[w]here an alleged infringer chooses a mark he
knows to be similar to another, one can infer an intent to confuse"); see
also Exxon Mobil Corp. v. Fisher,
D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive
knowledge of Complainant’s EXXON mark given the world-wide prominence of the
mark and thus Respondent registered the domain name in bad faith); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration).
Respondent registered <neimanmarcas.com>,
a domain name that is confusingly similar to Complainant’s mark, in order to
trade on Complainant’s goodwill and create confusion as to the source or
sponsorship of its website. Such behavior demonstrates bad faith registration
and use within the meaning of Policy ¶ 4(b)(iv). Respondent’s sole purpose in
registering the domain name was to maximize the amount of Internet traffic it
could divert to its website, thereby commercially benefiting from the
confusion. See Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent
registered and used an infringing domain name to attract users to a website
sponsored by Respondent); 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).
Respondent intentionally registered a
domain name bearing an uncanny resemblance to Complainant’s NEIMAN MARCUS mark.
Respondent’s domain name redirects unsuspecting Internet users to a
pornographic website that utilizes the devious mouse- trapping technique that
deliberately compounds the amount of confusion. Respondent’s commercial gain
from linking Complainant’s mark to pornographic images represents bad faith
registration and use under Policy ¶ 4(a)(iii). See Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding
that absent contrary evidence, linking the domain names in question to graphic,
adult-oriented websites is evidence of bad faith); see generally Rittenhouse Dev. Co. v.
Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8,
2002) (finding that “when a party registers and uses a domain name that
incorporates a well-known mark and connects the domain name with a website that
depicts offensive images,” the party has registered and used the disputed
domain name in bad faith).
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 the requested relief should be
hereby GRANTED.
Accordingly, it is Ordered that the <neimanmarcas.com> domain name be
TRANSFERRED from
Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 9, 2002
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