The Neiman Marcus Group, Inc. v. Peter
Carrington and Party Night, Inc.
Claim Number: FA0211000135019
PARTIES
Complainant
is The Neiman Marcus Group, Inc.,
Dallas, TX, USA, (“Complainant”), represented by David J. Steele of Christie,
Parker & Hale LLP. Respondent
is Peter Carrington and Party Night,
Inc., Amsterdam, THE NETHERLANDS (“Respondent”)
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <niemanmarcas.com>
and <niemanmarkus.com>, registered with Key-Systems GmbH.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on November 27, 2002; the Forum received a hard copy of the
Complaint on November 27, 2002.
On
December 2, 2002, Key-Systems GmbH
confirmed by e-mail to the Forum that the domain names <niemanmarcas.com> and
<niemanmarkus.com> are
registered with Key-Systems GmbH
and that Respondent is the current registrant of the names. 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
December 9, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of December
29, 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@niemanmarcas.com and postmaster@niemanmarkus.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
January 6, 2003, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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 names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations:
1. Complainant urges that Respondent’s <niemanmarcas.com> and <niemanmarkus.com> domain names are confusingly similar to
Complainant’s NEIMAN MARCUS mark.
2. Complainant asserts that Respondent has
no rights or legitimate interests in the <niemanmarcas.com>
and <niemanmarkus.com> domain names.
3. Complainant argues that Respondent
registered and used the <niemanmarcas.com>
and <niemanmarkus.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant’s principal retail chain, The
Neiman Marcus Company, was established in 1907 as a local specialty store.
Complainant is an internationally recognized innovator in fashion and
merchandising and currently runs 31 retail stores located in premier markets
nationwide. Complainant developed a reputation for high quality and high
prices, which has made the NEIMAN MARKUS name and mark synonymous with high
fashion and world famous designers. Complainant expanded its services to
include worldwide catalog sales and online ordering and purchasing at
<neimanmarcus.com>.
Complainant is the owner of numerous
trademarks for NEIMAN MARCUS and other variations of the mark, registered on
the Principal Register with the United States Patent and Trademark Office
(“USPTO”) (Reg. Nos. 601,375 and 601,864). Since Complainant’s inception in
1907, it has continuously used the mark worldwide and has not given permission
to Respondent to use the mark in any manner.
Respondent registered the <niemanmarcas.com> and <niemanmarkus.com> domain names April 30, 2002. Respondent’s
only use of the website is to misdirect Internet consumers to a pornographic
website. Internet consumers intending to reach Complainant actually end up at
<hanky-panky-college.com>.
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
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; 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.
Complainant
established in this proceeding that it has established rights in the NEIMAN
MARCUS mark and is a famous international leader in retail fashions.
Complainant need not be registered in every international country in order to
claim infringement on a mark under the UDRP. Trademark registration with the
USPTO, combined with worldwide recognition of a distinctive mark, is sufficient
to establish Complainant’s rights in the NEIMAN MARCUS name and mark.
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); see
also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000)
(noting that the Policy “does not distinguish between registered and
unregistered trademarks and service marks in the context of abusive registration
of domain names” and applying the Policy to “unregistered trademarks and
service marks”).
The domain names registered by
Respondent, <niemanmarcas.com> and <niemanmarkus.com>,
are confusingly similar in nature. Respondent is engaging in typosquatting.
Typosquatting is the intentional registration of a domain name that is a
misspelling of a distinctive or famous mark, causing an Internet user who makes
a slight spelling or typing error to reach an unintended website. Both disputed
domain names transpose the “i” and the “e” in the NEIMAN portion of the NEIMAN
MARCUS name. Respondent’s <niemanmarcas.com> domainn name also substitutes the “u” in
MARCUS with an “a”. Respondent’s <niemanmarkus.com>
domain name substitutes the “c” in MARCUS with a “k”. Both disputed domain names are examples of
typosquatting and the transposition of letters within Complainant’s mark and
intentional misspellings that fail to create unique marks in and of themselves
capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis. See Google
Inc. v. Jon G., FA 106084 (Nat. Arb. Forum
Apr. 26, 2002) (finding <googel.com> to be confusingly similar to
Complainant’s GOOGLE mark and noting that “[t]he transposition of two letters
does not create a distinct mark capable of overcoming a claim of confusing
similarity, as the result reflects a very probable typographical error”); see
also Hewlett-Packard Co. v.
Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name
<hewlitpackard.com> to be identical or confusingly similar to
Complainant’s HEWLETT-PACKARD mark).
Moreover, both
of Respondent’s disputed domain names are phonetically similar to Complainant’s
NEIMAN MARCUS name and mark. A domain name is still regarded as confusingly
similar if the domain name is attempting to imitate a famous mark by means of
being phonetically identical to the famous mark. See YAHOO!
Inc. v. Murray,
D2000-1013 (WIPO Nov. 17, 2000) (finding that the domain name <yawho.com>
is confusingly similar to Complainant’s YAHOO mark); 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 Complainant’s mark, VERISIGN,
are so close that confusion can arise in the mind of the consumer).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has thus been satisfied.
Rights or Legitimate Interests
When
Respondent fails to file a Response, the Panel may accept all reasonable
allegations made in the Complaint to be factually correct. Unless the
assertions presented are clearly in conflict with the majority of the evidence
on record, a presumption of validity favors the Complaint. See Talk City, Inc.
v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a
response, it is appropriate to accept as true all allegations of the
Complaint”); see also Desotec N.V.
v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing
to respond allows a presumption that Complainant’s allegations are true unless
clearly contradicted by the evidence).
Respondent’s <niemanmarcas.com>
and <niemanmarkus.com> domain names are used as links to the website <hanky-panky-college.com>,
a pornographic website. Respondent’s use of the domain names shows
that Respondent is intentionally using the fame of Complainant’s mark to
attract Internet traffic to a pornographic website, which is not associated
with Complainant. Respondent, by linking the disputed domain names to
pornographic websites, is not making a
bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i). See
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 Complainant’s mark); see also 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).
By failing to submit evidence, Respondent
has not given the Panel any plausible reason as to why the Panel should accept
that Respondent is known by Complainant’s mark or that Respondent is known by
the domain names <niemanmarcas.com>
and <niemanmarkus.com>.
Complainant has established itself as the exclusive holder of all rights and
legitimate interests in the NEIMAN MARCUS name and mark. Complainant also
established that Respondent has no authorization or consent to use
Complainant’s mark or any variation thereof. The Panel therefore accepts as
true Complainant’s assertion that Respondent has no rights or legitimate
interests in the domain names under Policy ¶ 4(c)(ii). See Victoria’s Secret v. Asdak, FA 96542
(Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was
not commonly known by a domain name confusingly similar to Complainant’s
VICTORIA’S SECRET mark because of Complainant’s well-established use of the
mark); 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”).
Respondent
used <niemanmarcas.com> and <niemanmarkus.com> to
divert Internet users to a commercial website. Moreover, since Respondent
intentionally engaged in the misspelling of a famous mark to attract Internet
consumers, it is therefore deemed an unfair or non-commercial use of the
disputed domain names. When one misleadingly diverts consumers to a commercial
website, or intentionally attracts Internet users through misspelling of famous
marks, it is not considered to be a legitimate noncommercial or fair use of the
domain name under Policy ¶ 4(c)(iii). See Encyclopaedia Brittanica, Inc. v.
Zuccarini, D2000-0330
(WIPO June 7, 2000) (finding that fair use does not apply where the domain
names are misspellings of Complainant's mark); 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).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has thus been satisfied.
Given the
worldwide identification of the NEIMAN MARCUS mark, the Panel is permitted to
infer that Respondent was aware of the mark, and therefore had actual notice of
Complainant’s rights. Since Complainant’s mark is so widely held as distinct
and exclusive to Complainant, Respondent’s registration of the disputed domain
names containing variations of Complainant’s mark is evidence of bad faith
registration. See 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 worldwide prominence of the mark and thus Respondent
registered the domain name in bad faith); see also Yahoo! Inc. v.
Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO!
mark negated any plausible explanation for Respondent’s registration of the
<yahooventures.com> domain name).
Respondent, by
linking <niemanmarcas.com> and <niemanmarkus.com> to a
pornographic website, used the domain names in bad faith. Respondent is
intentionally trying to attract Internet consumers to its website for
commercial gain, by deliberately trying to cause confusion between Respondent’s
domain names and Complainant’s mark. This behavior is evidence of bad faith
registration and use under Policy ¶ 4(b)(iv). See Geocities
v. Geociites.com,
D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked
the domain name in question to websites displaying banner advertisements and
pornographic material); see also Land O' Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001)
(finding bad faith under Policy ¶ 4(b)(iv) where Respondent utilized a domain
name confusingly similar to Complainant’s mark and used a confusingly similar
pornographic depiction of Complainant’s registered trademark on its website to
cause confusion as to the source or affiliation of the site).
Accordingly, the Panel finds that Policy
¶ 4(a)(iii) has thus been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel hereby concludes that the requested
relief shall be GRANTED. Accordingly,
it is ordered that the domain names <niemanmarcas.com>
and <niemanmarkus.com> be TRANSFERRED from Respondent to
Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: January 15, 2003.
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