The Neiman Marcus Group, Inc. v. S1A
Claim Number: FA0210000128683
Complainant is The Neiman Marcus Group, Inc., Dallas, TX, USA (“Complainant”) represented by David J. Steele, of Christie, Parker & Hale LLP. Respondent is S1A, Novosibirsk, RUSSIAN FEDERATION (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwneimanmarcus.com>, registered with OnlineNIC, Inc.
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, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 22, 2002; the Forum received a hard copy of the Complaint on October 24, 2002.
On October 23, 2002, OnlineNIC, Inc. confirmed by e-mail to the Forum that the domain name <wwwneimanmarcus.com> is registered with OnlineNIC, Inc. and that Respondent is the current registrant of the name. OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, 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 October 25, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 14, 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 email@example.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 December 4, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Respondent’s <wwwneimanmarcus.com> domain name is confusingly similar to Complainant’s registered NEIMAN-MARCUS mark.
Respondent does not have any rights or legitimate interests in the <wwwneimanmarcus.com> domain name.
Respondent registered and used the <wwwneimanmarcus.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Neiman Marcus Group, Inc., holds rights in the NEIMAN-MARCUS family of registered marks (e.g. U.S. Reg. No. 601,375). Complainant first registered this mark on January 25, 1955 on the Principal Register of the United States Patent and Trademark Office (“USPTO”) and has used it in commerce since 1907.
Complainant uses its registered NEIMAN-MARCUS family of marks to denote its principal retail chain, the Neiman Marcus Company. Under this mark, Complainant has become an internationally recognized innovator in fashion and merchandise, selling high priced fashion apparel by world famous designers. Sales revenues for the Neiman Marcus stores and catalogs totaled in the hundreds of millions of dollars in the previous year.
Complainant registered its <neimanmarcus.com> domain name in 1999, and has used it to expand its retailing strategy by offering “extraordinary merchandise and superior service in an elegant environment” on the Internet.
Respondent, S1A, registered the <wwwneimanmarcus.com> domain name on July 20, 2002. Respondent is not licensed or otherwise authorized to make use of the NEIMAN-MARCUS family of marks for any purpose, and currently uses the domain name to redirect Internet users to its own website.
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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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.
Identical and/or Confusingly Similar
Complainant has established rights in its distinctive NEIMAN-MARCUS family of marks through registration on the Principal Register of the USPTO along with its widespread and continuous use of its marks in commerce worldwide. This showing is sufficient to allow Complainant to bring its Complaint under the UDRP. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which a Respondent operates. It is sufficient that a Complainant can demonstrate a mark in some jurisdiction).
Respondent’s <wwwneimanmarcus.com> domain name is confusingly similar to Complainant’s NEIMAN-MARCUS mark. The only difference between Respondent’s domain name and the registered mark of Complainant is the addition of the top-level domain “.com,” the removal of the hyphen from the mark, and the addition of a “www” prefix. As top-level domains are a required feature for each domain name, the “.com” in the disputed domain name does not prevent a finding of confusing similarity. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants"); see also Visit Am., Inc. v. Visit Am., FA 95093 (Nat. Arb. Forum Aug. 14, 2000) (finding that the “.com” is part of the Internet address and does not add source identity significance).
Similarly, the removal of the hyphen from Complainant’s NEIMAN-MARCUS mark does not create a notable distinction between the mark and the disputed domain name. See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to Complainant's mark); see also Ritz-Carlton Hotel Co. v. Club Car Executive, D2000-0611 (WIPO Sept. 18, 2000) (finding that removing a hyphen in the domain names is not sufficient to differentiate the domain names from the mark).
The addition of a “www” prefix to Complainant’s mark also fails to sufficiently differentiate the disputed domain name from the mark. The dominant feature of the disputed domain name remains Complainant’s distinctive NEIMAN-MARCUS mark. The “www” prefix does nothing to distinguish the domain name, but rather duplicates a common typing error that results from typing a Uniform Resource Locator that accidentally omits the period between the World Wide Web abbreviation (www) and the second-level domain name. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”).
Accordingly, the Panel finds that the <wwwneimanmarcus.com> domain name is confusingly similar to Complainant’s registered and distinctive NEIMAN-MARCUS family of marks under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant’s allegations that Respondent has no rights or legitimate interests in the disputed domain name have gone uncontested by Respondent. In such a situation, the Panel will accept all reasonable assertions by Complainant as true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also 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).
The Panel will also weigh Respondent’s lack of a Response as evidence that it has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).
In the present dispute, Respondent is using the <wwwneimanmarcus.com> domain name to redirect Internet users to its own website. Misdirecting Internet traffic by utilizing Complainant’s registered mark does not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it an example of legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii). Respondent is merely attempting to capitalize on a close similarity between its domain name and the registered mark of Complainant to gain additional Internet traffic for its own website. See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with 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 AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding that use of the domain name to direct users to other, unconnected websites does not constitute a legitimate interest in the domain name).
Complainant has not authorized Respondent to use its NEIMAN-MARCUS family of marks and Respondent’s contact information implies that it is not “commonly known by” the name WWWNEIMANMARCUS or <wwwneimanmarcus.com>. In light of Respondent’s failure to offer any evidence that it has ever been commonly known by the disputed domain name, the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See 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"); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding that Respondent is not commonly known by the mark contained in the domain name where Complainant has not permitted Respondent to use the NOKIA mark and no other facts or elements can justify prior rights or a legitimate connection to the names “Nokia” and/or “wwwNokia”).
By successfully demonstrating that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i)-(iii), Complainant shifts the burden of proof to Respondent to produce evidence rebutting these assertions. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist). As Respondent submitted no Response to the Complaint, it fails to meet this burden.
Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <wwwneimanmarcus.com> domain name under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
While the Policy lists four factors evidencing bad faith use and registration of a domain name, this list is meant to be merely illustrative, not exhaustive or exclusive. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in ¶4(b), does not mean that the domain names at issue were not registered in and are not being used in bad faith”).
The practice of “typosquatting,” not specifically enumerated in the Policy, has been recognized as a bad faith use of a domain name. In this dispute, Respondent is taking advantage of a common typing error (omitting the period between the “www” and a second-level domain name) to redirect Internet users seeking Complainant’s website to its own website. This is evidence of bad faith use of the disputed domain name under the UDRP. See e.g. AltaVista Co. v. Stoneybrook, D2000-0886 (WIPO Oct. 26, 2000) (awarding <wwwalavista.com>, among other misspellings of altavista.com, to Complainant); see also Dow Jones & Co. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (awarding domain names <wwwdowjones.com>, <wwwwsj.com>, <wwwbarrons.com> and <wwwbarronsmag.com> to Complainants).
As Complainant’s mark is distinctive in nature, Respondent’s behavior in registering a nearly identical version of that mark indicates prior knowledge of the mark. This registration of a domain name, done with the intent of capitalizing on typographical errors committed by Internet users attempting to reach Complainant’s <neimanmarcus.com> domain name, evidences bad faith registration. In light of Respondent’s failure to submit a Response to the Complaint, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the NEIMAN-MARCUS mark prior to its registration of the <wwwneimanmarcus.com> domain name, and that registration was done in bad faith. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (“The Respondent intentionally registered a domain name which uses the Complainant’s name. There is no reasonable possibility that the name karlalbrecht.com was selected at random. There may be circumstances where such a registration could be done in good faith, but absent such evidence, the Panel can only conclude that the registration was done in bad faith”).
Accordingly, the Panel finds that Respondent registered and used the <wwwneimanmarcus.com> domain name in bad faith, and Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <wwwneimanmarcus.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 6, 2002
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