National Arbitration Forum

 

DECISION

 

The Neiman Marcus Group, Inc. & NM Nevada Trust v. Rosanna Silverio

Claim Number: FA0902001246433

 

PARTIES

Complainant is The Neiman Marcus Group, Inc. & NM Nevada Trust (“Complainant”), represented by David J. Steele, of Christie, Parker & Hale LLP, California, USA.  Respondent is Rosanna Silverio (“Respondent”), represented by Alvin Green Texas, USA.

 

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.

 

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.

 

James A. Carmody, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 5, 2009; the National Arbitration Forum received a hard copy of the Complaint on February 6, 2009.

 

On February 9, 2009, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <lastcallsale.com> and <lastcallsale.net> domain names are registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that the Respondent is the current registrant of the names.  Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 13, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 5, 2009 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@lastcallsale.com and postmaster@lastcallsale.net by e-mail.

 

A timely Response was received and determined to be complete on March 5, 2009.

 

Additional Submissions were received from Complainant and Respondent and were considered by the Panel.

 

On March 11, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

            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.

 

FINDINGS

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.

 

Finally, 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 Frisco, Texas is near to two of Complainant’s LAST CALL retail stores, so Respondent can hardly be heard to assert that it was unaware of Complainant’s mark.

 

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. 

 

In terms of use, Respondent points to its Yellow Page ad and assumed name registration for Last Call Advertising.  Respondent has been using the domain names at issue to sell goods and services over the Internet and has been doing so since at least February of 2007 which was prior to notification of this dispute with Complainant.  Respondent says that it had not heard of Complainant’s LAST CALL trademark when the domains were registered and came up with the notion of “last call” to use in the domain names at issue by virtue of a “LAST CALL” message on a cell phone.

 

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.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

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 June 1, 1993) and through it use of the mark for retail stores selling items previously offered for sale at Neiman Marcus stores.  Complainant’s registration of the mark with the USPTO establishes its rights in the LAST CALL mark under Policy ¶ 4(a)(i).  See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant trademark registrations with the USPTO).

 

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 Sept. 27, 2002) (“[I]t is a well           established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark).

 

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 June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).

 

            The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

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 Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

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. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

 

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 June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate website that offered services that competed with those offered by the complainant under its marks). 

 

Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

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 Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).

 

Respondent 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 May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).

 

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.

 

DECISION

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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