The Neiman Marcus Group,
Inc. & NM
Claim Number: FA0902001246433
Complainant is The Neiman Marcus Group, Inc. & NM
Nevada Trust (“Complainant”),
represented by David J. Steele, of Christie, Parker & Hale LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lastcallsale.com> and <lastcallsale.net>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
A timely Response was received and determined to be complete on
Additional Submissions were received from Complainant and Respondent and were considered by the Panel.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lastcallsale.com> and <lastcallsale.net> domain names, the domain names at issue, are confusingly similar to Complainant’s LAST CALL mark.
2. Respondent does not have any rights or legitimate interests in the domain names at issue.
3. Respondent registered and has used the domain names at issue in bad faith.
B. Respondent makes the following assertions:
1. Respondent denies that the domain names at issue are identical or confusingly similar to a mark in which Complainant has exclusive rights and asserts that the domain names at issue are composed of generic terms.
2. Respondent claims rights and legitimate interests in the domain names at issue.
3. Respondent denies that it has registered or used the domain names at issue in bad faith.
4. Respondent requests a finding of reverse domain name hijacking.
C. Complainant filed an Additional Submission which rebutted most of the assertions of Respondent in its Response. Respondent filed an Additional Submission which was considered by the Panel.
NM Nevada Trust owns and licenses to The Neiman Marcus Group, Inc. (collectively “Complainant”) the trade name and mark LAST CALL, which it has used for over twenty-five years to identify a highly successful retail business. Complainant asserts that Respondent registered the subject domain names, which are virtually identical to Complainant’s registered LAST CALL mark, in February of 2007 and uses the domain names to divert consumers looking for Complaint’s goods and services to websites which advertise and sell directly competing goods. Complainant has operated its own website associated with the <lastcall.com> domain name since 2003, four years prior to the registration of the domain names at issue.
Complainant notes that Respondent was not commonly know by either of the domain names at issue prior to having received a cease and desist letter from counsel for Complainant. Subsequently, in 2008, Respondent filed an affidavit in the Dallas County Texas Assumed Name Records to do business as Last Call Sale Advertising. Further, Complainant notes that it has not licensed or otherwise authorized Respondent to use the LAST CALL mark in any way.
Complainant says that Respondent has registered and is using both of the domain
names at issue in bad faith. For example
the website associated with the <lastcallsale.com>
domain name is used to sell products and services which are competitive with
those of Complainant. Additionally,
Respondent’s address in
Respondent says that it is a small business and is not a cybersquatter. Further, it claims that Complainant’s LAST CALL mark, while incontestable, is not invincible and is, after all, just generic. Also, Respondent argues the domain names at issue are not identical or confusingly similar to the LAST CALL mark, partly because of the inclusion of “sale” in each of the domains.
Respondent says that it could not have registered and used the domains in bad faith because LAST CALL is just generic and the goods and services associated with the domains are not competitive with those sold by Complainant at its LAST CALL stores.
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 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.
Complainant has rights in the LAST
CALL mark pursuant to Policy ¶ 4(a)(i) due its registration with the United
States Patent and Trademark Office (“USPTO”) (Reg. No. 1,774,545 issued
The <lastcallsale.com> and <lastcallsale.net> domain names are confusingly similar to Complainant’s LAST CALL
mark pursuant to Policy ¶ 4(a)(i). The
disputed domain names consist of Complainant’s mark with the addition of the
descriptive word “sale” and the generic top-level domain (“gTLD”) “.com” or
“.net.” The Panel finds that the term
“sale” has a connection to Complainant’s use of the mark in connection with its
discount stores and the addition of a gTLD is irrelevant. Accordingly, the disputed domain names are
confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Isleworth
Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum
While Respondent contends that the <lastcallsale.com> and <lastcallsale.net> domain names are comprised of common, descriptive terms and as such cannot be found to
be identical to Complainant’s mark, such a determination is not necessary under
Policy ¶ 4(a)(i) as this portion of the Policy considers only whether
Complainant has rights in the mark and whether the disputed domain names are
identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871
(Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to
Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Complainant has not granted Respondent any
license to use its LAST CALL mark.
The WHOIS information associated with the disputed domain names lists
Respondent as “Rosanna
Silverio.” Respondent has not
established rights or legitimate interests in the disputed domain names under
Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v.
740335 (Nat. Arb. Forum
Respondent’s <lastcallsale.com> and <lastcallsale.net> domain names resolve to a website offering
items for sale, including clothing, footwear, and jewelry which are similar to
those offered by Complainant. The Panel
finds this is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the disputed
domain names to sell products in competition with Complainant has disrupted Complainant’s
business. Accordingly, Respondent
engaged in bad faith registration and use under Policy ¶ 4(b)(iii). See Jerie v. Burian, FA 795430 (Nat. Arb. Forum
has engaged in such usage for commercial benefit in violation of Policy ¶
4(b)(iv) by creating a likelihood of confusion as to Complainant’s source,
affiliation, and endorsement of the disputed domain names and corresponding
website. Accordingly, the Panel
finds that Respondent engaged in bad faith registration and use under Policy ¶
4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Reverse Domain Name Hijacking
Respondent offered no evidence sufficient to the Panel to support a finding of 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 <lastcallsale.com> and <lastcallsale.net> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 24, 2009
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