national arbitration forum

 

DECISION

 

NORDSTROM, Inc. and NIHC, Inc. v. Private Registration c/o WhoisGuardService.com

Claim Number: FA1110001412491

 

PARTIES

Complainant is NORDSTROM, Inc. and NIHC, Inc. (“Complainant”), represented by William O. Ferron of Seed Intellectual Property Law Group PLLC, Washington, D.C., USA.  Respondent is Private Registration c/o WhoisGuardService.com (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwwmynordstrom.com>, registered with Nanjing Imperiosus Technology Co. Ltd.

 

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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 20, 2011; the National Arbitration Forum received payment on October 21, 2011. The Complaint was submitted in both Chinese and English.

 

On October 21, 2011, Nanjing Imperiosus Technology Co. Ltd. confirmed by e-mail to the National Arbitration Forum that the <wwwmynordstrom.com> domain name is registered with Nanjing Imperiosus Technology Co. Ltd. and that Respondent is the current registrant of the name.  Nanjing Imperiosus Technology Co. Ltd. has verified that Respondent is bound by the Nanjing Imperiosus Technology Co. Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On October 31, 2011, the Chinese language Forum served the Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of November 21, 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@wwwmynordstrom.com.  Also on October 31, 2011, the Chinese language Written Notice of the Complaint, notifying Respondent of the email 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 November 11, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 any response from Respondent.

 

Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <wwwmynordstrom.com> domain name is confusingly similar to Complainant’s NORDSTROM mark.

 

2.    Respondent does not have any rights or legitimate interests in the <wwwmynordstrom.com> domain name.

 

3.    Respondent registered and used the <wwwmynordstrom.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

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, Private Registration c/o WhoisGuardService.com, registered the <wwwmynordstrom.com> domain name on May 16, 2011. The disputed domain name resolves to a website that operates a phishing scheme by advertising a survey, purporting to be sponsored by Complainants, in an attempt to gather Internet users’ information for profit.

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 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 in 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 or link between the Complainants and will treat them as a single entity in this proceeding, collectively referring to Complainants as “Complainant.”

 

Identical and/or Confusingly Similar

 

Through multiple trademark registrations for the NORDSTROM mark with the USPTO, Complainant has rights in the NORDSTROM mark for the purposes of Policy ¶ 4(a)(i), even if the mark is not registered in Respondent’s country of operation or residence. See Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (finding that “Complainant’s timely registration with the USPTO and subsequent use of the BIG TOW mark establishes rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also 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 the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Complainant alleges that Respondent’s <wwwmynordstrom.com> domain name is confusingly similar to Complainant’s NORDSTROM mark because the disputed domain name merely adds the prefix “www” without the standard separating period, the generic term “my,” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. In Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003), a prior panel held that the prefix “www” followed by the trademark with no period separating them did not distinguish the disputed domain name from the mark. Prior panels also established that the addition of a generic term, such as “my,” had no effect on preventing confusing similarity, as seen in Bloomberg L.P. v. Mybloomberg.com, FA 97777 (Nat. Arb. Forum July 27, 2001). Finally, panels have repeatedly emphasized that the presence of a gTLD has no effect on differentiating a disputed domain name from the mark it contains. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). In accordance with this precedent, the Panel here determines that Respondent’s <wwwmynordstrom.com> domain name is confusingly similar to Complainant’s NORDSTROM mark pursuant to Policy ¶ 4(a)(i).

 

The Panel deems Policy ¶ 4(a)(i) met.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain name. Once Complainant establishes a prima facie case in support of its allegations, Policy ¶ 4(a)(ii) requires the burden to shift to Respondent to prove it has rights or legitimate interests in the disputed domain name. The Panel concludes that Complainant has established a prima facie case based on the arguments contained in the Complaint, and Respondent has failed to submit a Response to these proceedings. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests”); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“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.”). Nevertheless, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name.

 

Complainant contends that Respondent has not been licensed or permitted to use the NORDSTROM mark. Additionally, Complainant argues that Respondent is not commonly known by the disputed domain name, as supported by the WHOIS record that identifies the registrant as “Private Registration c/o WhoisGuardService.com” and reflects no association between Respondent and the disputed domain name. Based on the available evidence, the Panel finds that Respondent is not commonly known by the disputed domain name and consequently lacks rights and legitimate interests in the <wwwmynordstrom.com> domain name 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 name names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5. 2007) (determining that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).

 

Complainant asserts that Respondent uses the <wwwmynordstrom.com> domain name for a phishing scheme that aims to collect Internet users’ information by presenting a “Nordstrom” survey that offers prizes upon completion. The Panel finds that deceptively offering purported prizes under Complainant’s mark or attempting to collect Internet users’ information by suggesting an affiliation with Complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). See Homer TLC, Inc. v. Wang, FA 1336037 (Aug. 23, 2010) (concluding that respondent’s use of the disputed domain name to resolve to a website offering a prize in exchange for completing a survey was not a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).

 

The Panel deems Policy ¶ 4(a)(ii) met.

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s <wwwmynordstrom.com> domain name contains Complainant’s NORDSTROM mark, which confuses Internet users about Respondent’s affiliation with Complainant. Complainant contends that Respondent uses the confusingly similar disputed domain name to divert Internet users to the website containing the survey in an attempt to gather personal information from which it can profit. Complainant characterizes Respondent’s information-collecting efforts as phishing. The Panel finds this effort to attract and confuse Internet users for Respondent’s own commercial gain, including through phishing, is bad faith registration and use under Policy ¶ 4(b)(iv). See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name); see also Target Brands, Inc. v. Henderson, FA 1408381 (Nat. Arb. Forum Oct. 24, 2011) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where respondent’s disputed domain name resolved to a survey offering a prize in exchange for its completion, presumably for profit).

 

The Panel concludes that Respondent’s phishing scheme is also evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).  See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”).

 

Complainant also alleges that Respondent has at least constructive knowledge of Complainant’s rights in the NORDSTROM mark as the mark was registered with the USPTO well before the disputed domain name was registered. While constructive knowledge has not generally been held to suffice for a finding of bad faith registration and use, the Panel nevertheless finds that Respondent had actual notice of Complainant’s rights in the mark due to the widespread fame of the mark and Respondent’s use of the mark in connection with its phishing scheme. Accordingly, the Panel holds that Respondent registered the disputed domain name in bad faith according to Policy ¶ 4(a)(iii). 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 Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).

 

The Panel deems Policy ¶ 4(a)(iii) met.

 

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 <wwwmynordstrom.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  December 13, 2011

 

 

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