NORDSTROM, Inc. and NIHC, Inc. v. PrivacyProtect.org / Domain Admin
Claim Number: FA1107001398811
Complainant is NORDSTROM, Inc. and NIHC, Inc. (“Complainant”), represented by Seed Intellectual Property Law Group PLLC, Washington, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nordtrom.com>, registered with Tirupati Domains and Hosting Private Limited.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 14, 2011; the National Arbitration Forum received payment on July 18, 2011.
After numerous requests, the Registrar, Tirupati Domains and Hosting Private Limited, has not confirmed to the National Arbitration Forum that the <nordtrom.com> domain name is registered with Tirupati Domains and Hosting Private Limited or that Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
On August 10, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 30, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@nordtrom.com. Also on August 10, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <nordtrom.com> domain name is confusingly similar to Complainant’s NORDSTROM mark.
2. Respondent does not have any rights or legitimate interests in the <nordtrom.com> domain name.
3. Respondent registered and used the <nordtrom.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, NIHC, Inc., is the owner of numerous registrations for the NORDSTROM mark, which it licenses to its parent corporation, Complainant Nordstrom, Inc. Complainants sell goods and services, including shoes, clothing, accessories, footwear and leather goods, through its retail locations throughout the U.S., Canada, and Europe and online at its <nordstrom.com> domain name. Complainants own multiple trademark registrations for the NORDSTROM mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 1,280,785 registered June 5, 1984;
Reg. No. 1,281,000 registered June 5, 1984;
Reg. No. 2,378,940 registered August 22, 2000;
Reg. No. 2,650,059 registered November 12, 2002;
Reg. No. 2,753,232 registered August 19, 2003;
Reg. No. 3,029,052 registered December 13, 2005; &
Reg. No. 3,308,200 registered October 9, 2007.
Respondent, PrivacyProtect.org / Domain Admin, registered the <nordtrom.com> domain name on July 24, 2002. The disputed domain name hosts a website that fraudulently deceives customers into divulging their personal information by masquerading as an authorized NORDSTROM site and making false promises of free gift cards.
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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.
Preliminary Issue: Multiple Complainants
In the instant proceedings, Complainants, Nordstrom, Inc. and NIHC, Inc., are bringing this Complaint together. UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” Complainant, NIHC, Inc., is the owner of numerous registrations for the trademark NORDSTROM, which it licenses to its parent corporation, Complainant Nordstrom, Inc. The Panel finds that this relationship is sufficient to establish a nexus between the Complainants and will treat them as a single entity in this proceeding, collectively referring to Complainants as “Complainant.”
The Panel finds that Complainant has proven its rights in the NORDSTROM mark with its USPTO trademark registrations, even though Respondent is located in Australia. See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006), where the panel found that a USPTO trademark registration satisfied the Policy ¶ 4(a)(i) requirement that a Complainant prove its rights in the mark; see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007), where the panel held that proof of registration in the country of respondent’s residence was not necessary under the Policy.
Respondent’s <nordtrom.com> domain name modifies Complainant’s NORDSTROM mark by deleting the letter “s” and attaching the generic top-level domain (“gTLD”) “.com,” insufficient to distinguish the domain name from Complainant’s mark. In Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000), the panel found that a domain name differing from a mark by a single letter is confusingly similar to the mark. Similarly, a prior panel in Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) held that the omission of a single letter did not negate a finding of confusing similarity. See also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000), and Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003), where the panel disregarded the addition of a gTLD. The Panel thus concludes that Respondent’s <nordtrom.com> domain name is confusingly similar to Complainant’s NORDSTROM mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. According to Policy ¶ 4(a)(ii), Complainant must present a prima facie case against Respondent before the burden to demonstrate rights and legitimate interests is transferred to Respondent. The Panel finds Complainant has adequately presented a prima facie case. Respondent’s failure to respond to the Complaint demonstrates that Respondent has not met its burden to prove rights and legitimate interests in the disputed domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to Policy ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inference’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.’”). The Panel elects, however, to review the record to determine whether Respondent possesses any rights and legitimate interests in the disputed domain names according to Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <nordtrom.com> domain name and the WHOIS information does not facially indicate any association between Respondent and the disputed domain name. Complainant states that Respondent is not licensed or otherwise permitted to use the NORDSTROM mark. The Panel therefore finds that Respondent is not commonly known by the disputed domain name and lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant contends that Respondent’s use of the <nordtrom.com> domain name does not give Respondent rights and legitimate interests because the resolving website fraudulently deceives consumers into providing their personal information by making false offers of a $1,000 NORDSTROM gift card. In Exxon Mobil Corp. v. Internet Admin., FA 1267986 (Nat. Arb. Forum July 28, 2009), a prior panel found that using false offers of gift cards to obtain consumers’ personal information did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Likewise, the panel in Victoria’s Secret Stores Brand Mgmt., Inc. v. 500dollarvictoriasecretgiftcar, FA 1359979 (Nat. Arb. Forum Jan. 3, 2011), decided that purported offers for gift cards from Complainant in exchange for personal information did not represent a bona fide offer of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Similarly, the Panel here concludes that Respondent’s use of the <nordtrom.com> domain name does not satisfy Policy ¶¶ 4(c)(i) or (iii).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent uses the confusing similarity between Complainant’s mark and the disputed domain name to attract Internet users and fraudulently deceive them into providing personal information by offering gift cards, purportedly from Complainant. Respondent presumably profits in some way by operating this site. In Victoria’s Secret Stores Brand Mgmt., Inc. v. Rodriguez, FA 1343306 (Nat. Arb. Forum Oct. 7, 2010), the panel determined that Respondent’s resolving website offering a gift card purportedly from Complainant in exchange for personal information demonstrated bad faith under Policy ¶ 4(b)(iv) as Respondent commercially gained from its misleading activities. The panel also found in Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006), that respondent’s efforts to profit by diverting and confusing Internet users shows bad faith pursuant to Policy ¶ 4(b)(iv). The Panel finds that Respondent’s use of the <nordtrom.com> domain name indicates bad faith registration and use according to Policy ¶ 4(b)(iv).
The Panel finds that, due to the fame of Complainant’s mark, Respondent had actual knowledge of the mark and Complainant’s rights, a further indication of bad faith. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (“The Panel also finds that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark as well.”). Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nordtrom.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 8, 2011
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