The Neiman Marcus Group, Inc. v. Oui!
Claim Number: FA0212000135599
PARTIES
Complainant
is The Neiman Marcus Group, Inc.,
Dallas, TX, USA (“Complainant”) represented by David J. Steele of Christie
Parker & Hale LLP. Respondent
is Oui!, Lisbon, PORTUGAL
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <neimannarcus.com>,
registered with Tucows, Inc.
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 December 2, 2002; the Forum received a hard copy of the
Complaint on December 2, 2002.
On
December 3, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain
name <neimannarcus.com> is
registered with Tucows, Inc. and that Respondent is the current registrant of
the name. Tucows, Inc. verified that Respondent is bound by the Tucows, 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
December 6, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 26, 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@neimannarcus.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 name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations:
1. Complainant argues that Respondent’s <neimannarcus.com>
domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark.
2. Complainant argues that Respondent has no
rights to or legitimate interests in the <neimannarcus.com>
domain name.
3. Complainant argues that Respondent
registered and used the <neimannarcus.com>
domain name 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 thereafter has become 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, which has made the NEIMAN MARCUS 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 said mark, registered on
the Principal Register of 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 and has not given permission to
Respondent to use the mark in any manner.
The domain name registered by Respondent,
<neimannarcus.com>, was registered March 22, 2002. According to
Complainant’s independent research and investigation, Respondent is a notorious
typosquatter that regularly registers domain names that are similar to many
other famous marks. Currently, Respondent owns approximately 1,682 domain
names, most of which are misspellings of famous marks. For example, Respondent
holds rights in the domain names: <1800glowers.com>,
<americanespress.com>, <alotvista.com>, <eddievauer.com>, and
<schwav.com>. Respondent’s <neimannarcus.com>
domain name redirects Internet
users to a commercial website located at <superinternetdeals.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
has established in this proceeding that it has rights in the NEIMAN MARCUS mark
through registration with the USPTO and by subsequent continuous use of the
mark.
Respondent is engaging in typosquatting,
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. The changing of the letter “m” to “n” from
MARCUS to NARCUS does not significantly alter the mark so as to distinguish it
from Complainant’s famous mark. Therefore, Respondent’s <neimannarcus.com>
domain name is confusingly similar to the NEIMAN MARCUS mark under a Policy ¶
4(a)(i) confusingly similar analysis. See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15,
2001) (finding that the domain names
<tdwatergouse.com> and <dwaterhouse.com> are virtually identical to
Complainant’s TD WATERHOUSE name and mark); State
Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum
June 15, 2000) (finding that the domain name <statfarm.com> is
confusingly similar to Complainant’s STATE FARM mark).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has thus been satisfied.
Respondent did not respond to the
Complaint, thereby allowing the Panel to accept as true all reasonable
inferences alleged by Complainant. Moreover, by failing to reply, Respondent
failed to fulfill its burden of demonstrating rights or legitimate interests in
the disputed domain name. 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 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). No evidence contradicts
Complainant’s allegations. Complainant
presented evidence that substantiates its claim that Respondent has no rights
or legitimate interests in the contested <neimannarcus.com>
domain name.
The domain name
registered by Respondent, <neimannarcus.com>, has been used
by Respondent to link to the commercial website <superinternetdeals.com>.
Respondent’s use of the domain name shows that it is intentionally using the
fame of Complainant’s mark to attract Internet traffic to another website,
which is not associated with Complainant. Respondent’s behavior in relation to
the domain name has not exhibited a use in connection with a bona fide offering
of goods and services pursuant to Policy ¶ 4(c)(i). See State Farm Mut. Auto. Ins. Co. v.
LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that
“unauthorized providing of information and services under a mark owned by a
third party cannot be said to be the bona fide offering of goods or services”);
Vapor Blast Mfg. Co. v. R & S Tech.,
Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s
commercial use of the domain name to confuse and divert Internet traffic is not
a legitimate use of the domain name).
No evidence submitted indicates that
Respondent has any affiliation with Complainant and nothing suggests that
Respondent is known by the <neimannarcus.com>
domain name. Complainant has
established itself as the sole holder of all rights and legitimate interests in
the NEIMAN MARCUS mark. Since Respondent has not come forward with a viable alternative supporting its use of Complainant’s mark, and does not have
authorization or consent to use the mark, the Panel may accept as true
Complainant’s allegation that Respondent has no rights or legitimate interests
to the domain name under Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) Respondent is not a licensee of
Complainant; (2) Complainant’s prior rights in the domain name precede
Respondent’s registration; (3) Respondent is not commonly known by the domain
name in question); see also Nike,
Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights
or legitimate interests where one “would be hard pressed to find a person who
may show a right or legitimate interest” in a domain name containing
Complainant's distinct and famous NIKE trademark).
Respondent
used the domain name <neimannarcus.com> to
divert Internet users to a commercial website. 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 name. When one misleadingly diverts consumers to a commercial
website, or intentionally attracts Internet users through a misspelling of a
famous mark, it is considered to to be an unfair or illegitimate 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
international identification of Complainant with the NEIMAN MARCUS mark, the
Panel is permitted to infer that Respondent was aware of the mark and had
actual notice of Complainant’s rights in the mark. Since Complainant’s mark is
so widely held as distinct and exclusive to Complainant, Respondent’s
registration of the disputed domain name thereafter, containing Complainant’s
mark despite actual knowledge of Complainant’s rights, 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 <neimannarcus.com> to commercial websites, used the
domain name in bad faith. Respondent is intentionally trying to attract
Internet consumers to its websites for commercial gain by deliberately causing
confusion between Respondent’s domain name and Complainant’s mark. This
behavior is evidence of bad faith registration and use under Policy ¶
4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if
Respondent profits from its diversionary use of Complainant's mark when the
domain name resolves to commercial websites and Respondent fails to contest the
Complaint, it may be concluded that Respondent is using the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv)); see also G.D. Searle & Co. v.
Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that
Respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to
attract Internet users to its commercial website).
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 name <neimannarcus.com>
be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: January 15, 2003.
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