The Neiman Marcus Group, Inc. v. Party
Night, Inc.
Claim Number: FA0206000114546
PARTIES
Complainant is The Neiman Marcus
Group, Inc., Dallas, TX, USA (“Complainant”) represented by David J.
Steele, of Christie, Parker & Hale LLP. Respondent is Party Night, Inc.,
Geneva, SWITZERLAND (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <neimanmacus.com>,
registered with Joker.com.
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 (the “Forum”) electronically on June 10, 2002;
the Forum received a hard copy of the Complaint on June 12, 2002.
On June 12, 2002, Joker.com confirmed
by e-mail to the Forum that the domain name <neimanmacus.com> is
registered with Joker.com and that Respondent is the current registrant of the
name. Joker.com has verified that
Respondent is bound by the Joker.com 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 June 17, 2002, a Notification of
Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 8, 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@neimanmacus.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 July 15, 2002, pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the
Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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
The <neimanmacus.com>
domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark.
Respondent has no rights or legitimate
interests in the <neimanmacus.com> domain name.
Respondent registered and used the <neimanmacus.com>
domain name in bad faith.
B. Respondent
Respondent
failed to submit a Response in this proceeding.
FINDINGS
Complainant
owns several trademark registrations for NEIMAN-MARCUS and NEIMAN MARCUS with
the United States Patent and Trademark Office (“USPTO”) (e.g., Reg Nos.
601,375; 601,864; 601,723, 1,593,195; and 1,733,202). Complainant first used the NEIMAN MARCUS mark in 1907 in
connection with a specialty-clothing store.
Over the years, Complainant has developed into an internationally
recognized innovator in fashion and merchandise. Complainant’s use of the NEIMAN MARCUS mark for nearly a century
has resulted in international recognition of the mark.
In
1999, Complainant expanded its retail operations to include e-commerce. Complainant developed a commercial retail
website at <neimanmarcus.com> to facilitate its e-commerce expansion
efforts.
Respondent
registered the <neimanmacus.com> domain name on March 4,
2002. Respondent uses the domain name
to direct Internet users to a pornographic website located at
<hanky-panky-college.com>. At
this website, banner advertisements are displayed, which in turn provide a
source of revenue for Respondent.
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 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights; and
(2) the 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 the NEIMAN MARCUS mark through registration with the
USPTO and continuous use since 1907.
Respondent’s
<neimanmacus.com> domain name represents a simple misspelling of
Complainant’s NEIMAN MARCUS mark.
Respondent’s domain name is a classic example of typosquatting, the
process of registering a common misspelled version of a famous mark in a domain
name. It has been consistently held
that typosquatting renders the domain name confusingly similar to the altered
famous mark. See Reuters Ltd.
v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a
domain name which differs by only one letter from a trademark has a greater
tendency to be confusingly similar to the trademark where the trademark is
highly distinctive); see also Bama Rags, Inc. v. Zuccarini, FA 94380
(Nat. Arb. Forum May 8, 2000) (finding that the domain names,
<davemathewsband.com> and <davemattewsband.com>, are common
misspellings and therefore confusingly similar); see also 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 the Complainant’s STATE FARM mark); 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).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights
or Legitimate Interests
In
light of Complainant’s assertion that Respondent has no rights or legitimate
interests in the <neimanmacus.com> domain name and Respondent’s
failure to respond, the Panel may presume that Respondent has no such rights or
interests in the 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). Furthermore, because Respondent did not
submit a Response, all reasonable inferences may be drawn in favor of
Complainant. See 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).
Respondent
uses the <neimanmacus.com> domain name to link to a pornographic
website located at <hanky-panky-college.com>. Respondent commercially benefits from this use because once an
Internet user is diverted to the pornographic website banner advertisements
pop-up. Altering Complainant’s famous
mark for purposes of capturing Internet consumers searching for Complainant
does not constitute legitimate rights and interests in the domain name pursuant
to Policy ¶¶ 4(c)(i) and (iii). See
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); see also 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
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 tarnish the Complainant’s mark).
Respondent
is not commonly known as NEIMAN MACUS or <neimanmacus.com>. Therefore, Respondent has no rights or
legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent
does not have rights in a domain name when Respondent is not known by the
mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356
(Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because Respondent is not commonly known by the disputed domain name or using
the domain name in connection with a legitimate or fair use).
Accordingly,
the Panel finds that Respondent has no rights or legitimate interests in the <neimanmacus.com>
domain name, thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration
and Use in Bad Faith
The
Panel is not limited to the circumstances presented in Policy ¶ 4(b) when
determining bad faith. See Cellular One Group v. Brien,
D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of
the Policy is not an exhaustive list of bad faith evidence). The Panel must
consider the totality of circumstances when deciding whether Respondent
registered and/or used the domain name in bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA
93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain
name has been registered in bad faith, the Panel must look at the “totality of
circumstances”).
Complainant
has developed a substantial amount of international goodwill in relation to its
NEIMAN MARCUS mark over the years.
Also, Respondent previously registered the <neimanmarcas.com>
domain name and used it in the exact same manner it presently uses <neimanmacus.com>. Due to the aforementioned circumstances, it
is clear that Respondent was put on notice of Complainant’s interests in the
NEIMAN MARCUS mark. Respondent’s misspelling of Complainant’s famous mark in
its domain name represents an opportunistic attempt to trade off of
Complainant’s established goodwill.
Therefore, Respondent’s registration constitutes bad faith under Policy
¶ 4(a)(iii). See Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 8, 2000) (finding bad
faith where (1) the Respondent knew or should have known of the Complainant’s
SONY marks and (2) Respondent registered multiple domain names which infringed
upon the Complainant’s mark); see also Victoria's Secret v. Hardin,
FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the
notoriety of Complainants' famous marks, Respondent had actual or constructive
knowledge of the BODY BY VICTORIA marks at the time she registered the disputed
domain name and such knowledge constituted bad faith); see also 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 world-wide prominence of the mark and thus Respondent registered the
domain name in bad faith).
Respondent’s
use of Complainant’s NEIMAN MARCUS mark in the <neimanmacus.com>
domain name to attract Internet users to its pornographic website, for
commercial gain, represents bad faith use under Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc.
v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
the Respondent directed Internet users seeking the Complainant’s site to its
own website for commercial gain); see also 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).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
should be hereby GRANTED.
Accordingly,
it is Ordered that the <neimanmacus.com> domain name be TRANSFERRED
from Respondent to Complainant.
The
Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated:
July 23, 2002
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