The Neiman Marcus Group,
Inc. and NM
Claim Number: FA0803001159811
Complainant is The Neiman Marcus Group, Inc. and NM Nevada
Trust (“Complainant”), represented by
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <niemanns.com>, registered with Enom, Inc.
The undersigned certifies that he 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 7, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 10, 2008.
On March 11, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <niemanns.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 March 24, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 14, 2008 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on April 14, 2008.
A timely Additional Submission was received from Complainant in accordance with Supplemental Rule 7. A timely Additional Submission was received from Respondent in accordance with Supplemental Rule 7.
On April 18, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
Complainant requests that the domain name be transferred from Respondent to The Neiman Marcus Group, Inc. and NM Nevada Trust.
Complainant asserts trademark rights and alleges that the disputed domain name is confusingly similar to its trademarks.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
In particular, NM Nevada Trust owns and licenses the trademarks NEIMAN
MARCUS and NEIMANS to The Neiman Marcus Group, Inc. The trademark NEIMAN MARCUS (in plain and
stylized forms) is the subject of numerous registrations. The trademark NEIMENS is not registered. The trademarks have been used continuously since
1907 to identify Complainant’s fashion retail business. Complainant alleges that since inception the
business has been known by its customers as “Neimans.” Complainant alleges both trademarks enjoy a
sizable reputation and goodwill in the
Complainant alleges Respondent has no rights or legitimate interest in the disputed domain name since it is not known by that name, is not conducting a bona fide business under that name, and has no license or approval to use the trademarks. Complainant claims that Respondent is a “typosquatter” who has consciously registered a misspelling of the trademark NEIMANS in order to illegitimately generate revenue.
Complainant alleges Respondent’s bad faith actions fall squarely under Policy ¶ 4(b)(iv) as discussed later.
Respondent broadly denies Complainant’s allegations and claims Complainant has attempted so-called “reverse domain name hijacking.”
In particular, whilst Respondent admits that Complainant has rights in the trademark NEIMAN MARCUS, it denies Complainant has rights in the common surname NEIMANS. Respondent argues, a fortiori, that Complainant has no rights in the common surname and geographical placename, NIEMANNS. Respondent argues that since the disputed domain name consists essentially of a generic term, there can be no confusion.
Respondent asserts that it is making fair, non-commercial use of the domain name by reason of the fact that it consists essentially of a common surname and geographical placename to which it and other traders have a right of use.
Respondent denies that it has acted in bad faith and argues that Complaint fails to show any evidence of bad faith. In so far as Policy ¶ 4(b)(iv) is concerned, Respondent repeats its claim that “the domain name in question represents a different unique surname” and alleges that it “has gained a total of $0.00 in revenues from the domain name.”
C. Additional Submissions
Complainant submitted that Respondent’s interpretation of Policy ¶ 4(b)(a)(i) and (ii) is misconceived. Complainant alleges bad faith use and registration of the disputed domain name, claiming Respondent is a serial cybersquatter who has registered numerous domain names that are confusingly similar to known trademarks.
In reply, Respondent produces correspondence with his account manager at “parked.com” said to show that at no time did Respondent add the domain name to a parked account. Respondent points to a number of trademark registrations around for the world for NIEMANN and so argues that Complainant has no unique reputation in that name, nor monopolizes the trademark. Respondent claims that Complainant has not pointed to any case where a respondent was found to have no rights in a domain name consisting of a geographical placename. Finally, Respondent responds to Complainant’s claim that he is a serial cybersquater in the following terms:
Complainants’ amendment states that “Complainants’ additional research reveals that Respondent has registered and uses other domain names that are confusingly similar to famous registered trademarks including mercedezbenzoffortlauderdale.com, landolakes.net, and parishiltondigest.com, just to list a few!” This statement seems to imply that Respondent owns many confusingly similar domains. If this were the case, the Complainants could have surely found more than 3 examples, all of which are geographic related… All 3 domains, as well as niemanns.com were registered in GOOD FAITH as part of an automated process of obtaining domain names containing geographic locations. Respondent is also the registrant of over 4,000 other geographic related domain names…Respondent registered niemanns.com by automated methods in GOOD FAITH based on the geographic significance of the term “NIEMANN”.
2. There is ample evidence that Complainant uses and is known by the trademark NEIMANS as an abbreviated name.
3. Complainant has rights in the trademark NEIMANS through use alone.
4. Complainant has not in any way authorized Respondent to use its trademarks or any variations thereon.
5. There is no evidence that “Niemanns” is a geographical placename.
some evidence that “Niemann” may be the name of a village or small locality in
7. There is no evidence of “Niemanns” as a surname.
evidence of the surname “Niemann” shows it to be relatively uncommon, at least
9. Respondent registered the disputed domain name on October 10, 2007.
WHOIS information shows him to be domiciled in the
11. That website provides links to numerous commercial websites having no connection with Complainant.
12. Respondent has registered thousands of domain names, some of which include the names of well known personalities or manufacturers.
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.
The gTLD, “.com,” can be ignored for the purpose of comparison of the domain name with the trademarks. The question is whether “niemanns” is identical or confusingly similar to one or both of “neiman marcus” and “neimans.” Clearly, it is not identical to either trademark. Nor does the Panel find that “niemanns” is confusingly similar to “neiman marcus.” The only serious question is whether “niemanns” is confusingly similar to “neimans.” The Panel assumes that both “Niemann” and “Neiman” were originally German surnames. The additional “n” makes no phonetic difference. The inversion of “ei” to “ie” is elemental to pronunciation in the German language, but those two dipthongs are often pronounced identically by non-German speakers. The Panel finds that the differences are insufficient to distinguish the domain name from the trademark and so avoid confusion.
The Panel gives no weight to Respondent’s
argument that there would be no confusion because “Niemanns” is a placename and
a common surname. In the first place, it
has not used the surname, but a pluralized or possessive form of it (absent
punctuation as is typical in domain names) and by that alone has brought the
name closer to the trademark. There is
no evidence that “Niemanns” is a placename and the evidence of the existence of
a place in
The Panel finds the domain name confusingly similar to a trademark in which Complainant has rights.
The Panel finds that the circumstances described in the Complaint are sufficient to constitute a prima facie showing by Complainant of Respondent’s absence of rights or legitimate interests in the disputed domain name and to shift the evidentiary burden to Respondent to show that it does have a right or legitimate interest in the domain name.
Policy ¶ 4(c) states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent does not satisfy any of those criteria. He is not known by the domain name and has no permission of any kind to use the trademark. As discussed, the domain name is not shown to be generic and so there is no sustainable fair use argument. Moreover, contrary to Respondent’s assertions, his use is demonstrably commercial. Respondent claims that his use of the domain name to provide “sponsored” click through advertisements is non-commercial because he has made no money. Respondent provides a website at the domain name that displays advertisements for third-party goods and services under “Sponsored Results.” Those advertisements appear to be provided by Parked.com. Parked.com advertises on its homepage that “just owning a domain name can earn you money with Parked.com. All you have to do is send us your visitors.” Respondent denies that the domain name is used in that scheme. He offers in evidence a casual email exchange with the scheme administrator which the Panel finds inconclusive. In any event, prior decisions under the Policy have long held that actual monetary gain is not essential. The website corresponding to the disputed domain name is clearly of a commercial character and the Panel accordingly finds that there are no circumstances supporting Respondent’s claim to rights or a legitimate interest in the domain name.
The Panel finds that Complainant has established the second element under the Policy.
Complainant alleges that Respondent’s conduct falls under Policy ¶ 4(b)(iv) which states that:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on‑line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.
What is noteworthy about Policy ¶ 4(b) is that all four bad faith examples there described are cases of both registration and use in bad faith. It is therefore logical to first test the facts against the given circumstances before looking to any other claims of bad faith.
Complainant alleges that Respondent is a “typosquatter” who is using
the domain name to attract Internet users to its website by creating a
likelihood of confusion with Complainant’s NEIMANS mark. The evidence before the Panel supports that
claim. Both parties are located in the
The Panel has already found a likelihood of confusion between the domain name and Complainants’ trademark and has already found a commercial purpose. The Panel finds bad faith use and satisfaction of Policy ¶ 4(b)(iv) requirements. The Panel adds that even if the website content was provided by a third party parking company, that still constitutes bad faith use under the Policy.
Complainant has satisfied the third and final aspect of the Policy.
Reverse Domain Name Hijacking
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <niemanns.com> domain name be TRANSFERRED from Respondent to Complainant, The Neiman Marcus Group, Inc. and NM Nevada Trust.
Debrett G. Lyons, Panelist
Dated: May 2, 2008
 Uncontested use of the business name as a trademark for over 100
years. Complainant operates 31
NEIMAN MARCUS stores in the
 Complainant has established rights to the
NEIMAN MARCUS mark by registration of the mark with the United States Patent
and Trademark Office (“USPTO”) on January 25, 1955 (Reg. No. 601,375). See Men’s Wearhouse, Inc. v.
Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
 See Keppel
TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of
long and substantial use of [KEPPEL BANK] in connection with its banking
business, it has acquired rights under the common law.”); see also Tuxedos By Rose v. Nunez, FA
95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark
where its use was continuous and ongoing, and secondary meaning was
established). Paragraph 4(a)(i) does not require a complainant to have a trademark
registration for a mark in order to establish rights in it. See SeekAmerica Networks Inc. v.
Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not
require that the complainant’s trademark or service mark be registered by a
government authority or agency for such rights to exist); see also Great
Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum
 See Rollerblade, Inc. v. McCrady, D2000‑0429 (WIPO June 28, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top‑level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top‑level domains are a required element of every domain name.”).
 The Policy requires an abstracted comparison of the domain name with the trademark. So, for example, in the recent decision of Red Bull GmbH v. Carl Gamel, D2008‑0253 (WIPO Apr. 14, 2008), it was said: “The question is whether, in the abstract, which amongst other things means putting to one side the repute the trademark in question might enjoy, the domain name and the trademark have confusing similarity.”
generally, The Neiman Marcus Group, Inc. v. Triple E Holdings Limited, FA 105896 (Nat. Arb. Forum Apr. 25, 2002). See also Victoria’s Secret v. Zuccarini,
FA 95762 (Nat. Arb. Forum Nov. 18, 2000) finding that, by misspelling
words and adding letters to words, a respondent does not create a distinct mark
and renders the domain name confusingly similar to complainant’s mark). See Hewlett-Packard Co. v.
 See Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 23, 2000); Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
 See, for example, WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) finding that respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to complainant’s mark, websites where respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy. See also Deutsche Telekom AG v. SKK, D2003-0744 (WIPO Nov. 17, 2003).
 Which of the four prescribed circumstances under the Policy is unique in focusing on use rather than registration. In any event, respondent subjective intention is irrelevant under this part of the Policy: see Paule Ka v. Korenek, D2003-0453 (WIPO July 24, 2003), where the panel held that the reference to the registrant’s intention in paragraph 4(b)(iv) of the Policy should be regarded as importing an objective, rather than a subjective, test:
“…. how is the ‘intentional’ element required under paragraph 4(b)(iv) to be defined? The Panel is guided in its consideration of the issue by the fact that a subjective test of intent (thus considered more or less as a mens rea element) would be difficult if not impossible to apply given that credibility must be assessed only on the basis of documentary evidence. It is difficult to enter the minds of the parties to determine their subjective intent. The proper test in this Panel’s view is whether the objective consequence or effect of the Respondent’s conduct is to free ride on the Complainant’s goodwill, whether or not that was the primary (subjective) intent of the Respondent.”
 See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”); see also K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).
 See St. Farm Mutual
“… the Respondent routinely enters newly registered domain names into a “pay-per-click” scheme. On the available evidence, the Panel found that the Respondent either passively condoned or was indifferent to the material posted to its domains by another party. The very intention of that other party is to drive traffic through the websites. It would appear from the evidence that one strategy to do so maybe to use a third party trademark which is similar to the domain name. The Panel believes that registrations made as part of such a scheme are made and used in bad faith for the purposes of this Policy if it is held that the domain name in point is confusingly similar to a mark in which a third-party complainant has rights.”