Nordstrom, Inc. and NIHC, Inc. v. Steven Grotte
Claim Number: FA0207000115347
Complainant is Nordstrom Inc. and NIHC, Inc., Seattle, WA (“Complainant”) represented by Timothy L. Boller, of Seed Intellectual Property Law Group PLLC. Respondent is Steven Grotte, Fernley, NV (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <nordstrominc.com> and <nordstromsinc.com>, registered with Go Daddy Software, Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 15, 2002; the Forum received a hard copy of the Complaint on July 16, 2002.
On July 16, 2002, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain names <nordstrominc.com> and <nordstromsinc.com> are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 July 17, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 6, 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 email@example.com and firstname.lastname@example.org 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 August 20, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
1. Respondent’s <nordstrominc.com> and <nordstromsinc.com> domain names are confusingly similar to Complainant’s registered NORDSTROM mark.
2. Respondent does not have any rights or legitimate interests in the <nordstrominc.com> and <nordstromsinc.com> domain names.
3. Respondent registered and used the <nordstrominc.com> and <nordstromsinc.com> domain names in bad faith.
B. Respondent did not submit a Response in this proceeding.
Complainant owns numerous trademarks listed on the Principal Register of the U.S. Patent and Trademark Office (“USPTO”) reflecting its NORDSTROM mark, including, inter alia: Reg. No. 1,281,000 registered on June 5, 1984 and designating first use of the mark in commerce as being November 1972; Reg. No. 1,280,785; Reg. No. 1,409,938 for the NORDSTROM RACK mark; and, Reg. No. 1,730,205 for the NORDSTROM ESSENTIALS mark.
Respondent registered the <nordstrominc.com> and <nordstromsinc.com> domain names on June 22, 2001 and June 25, 2001, respectively. Complainant’s Submission indicates that Respondent made various demands relating to monetary payment in exchange for control of the domain names, and made offers to sell the domain name registration for “a reasonable counteroffer.” Complainant’s investigation also reveals that Respondent is the owner of numerous domain names that incorporate famous marks with an “inc” inserted at the end of the second-level domain (e.g., <haininc.com>, <marvinwindowsinc.com>, <nordicasepticinc.com> and <jasperfoodsinc.com>).
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.
Complainant has established its rights in the NORDSTROM mark through securing a variety of trademark registrations with the USPTO reflecting its NORDSTROM mark. Complainant has also been extensively using the NORDSTROM moniker as source identification of its products and services since at least 1972.
Respondent’s <nordstrominc.com> and <nordstromsinc.com> domain names are confusingly similar to Complainant’s NORDSTROM mark. The only differences between Complainant’s NORDSTROM mark and Respondent’s domain names are the addition of “inc” after the mark and pluralizing the mark.
Respondent’s addition of “inc” to its domain names represents an insubstantial deviation from Complainant’s NORDSTROM mark because “inc” is commonly known to denote “incorporation” or “incorporated.” Respondent’s use of an industry related word that has an obvious relationship with Complainant’s mark and business fails to transform its domain names into separate and distinct marks; thus, rendering them confusingly similar. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).
Furthermore, the addition of the letter, which represents a common pluralizing technique and typographical error with regards to Complainant’s NORDSTROM mark, cannot overcome a confusingly similar analysis under Policy ¶ 4(a)(i). Respondent’s intentions of creating an affiliation with Complainant’s mark by registering domain names with slight and intuitive differences are clear. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the Complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Nat’l Geographic Soc. v. Stoneybrook Inv., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to Complainant’s “National Geographic” mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent failed to refute Complainant’s Submission and averments regarding Respondent’s rights and legitimate interests concerning the subject domain names; thus, Complainant’s allegations have gone unopposed. Therefore, the Panel is permitted to make all reasonable inferences in favor of Complainant. 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 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’s lack of participation also creates the presumption that it lacks rights and legitimate interests in the <nordstrominc.com> and <nordstromsinc.com> domain names pursuant to Policy ¶ 4(a)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
Respondent has not used the disputed domain names in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). Respondent registered the domain names over twelve months ago and has yet to develop a purpose in conjunction with the domain names, or show demonstrable preparations to use the domain names in connection with a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Respondent’s passive holding of the domain names and lack of legitimate use implies that it lacks rights and interests in the domain name. When confronted with Complainant’s supported contentions, the evidential burden shifts to Respondent. Respondent’s failure to contest Complainant’s allegations implies that they have merit. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).
There is no evidence or information before the Panel that would suggest a connection between Respondent and the <nordstrominc.com> and <nordstromsinc.com> domain names. Complainant’s numerous registrations in the United States and Respondent’s place of domicile create the presumption that Respondent is not commonly known by the domain names that incorporate the registered NORDSTROM mark; thus, Respondent fails to demonstrate rights or legitimate interests under Policy ¶ 4(c)(ii). See 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); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
Accordingly, the Panel determines that Policy ¶ 4(a)(ii) has been satisfied.
Complainant’s submission provides uncontested evidence that Respondent registered the subject domain names primarily for the purpose of selling or transferring its rights in the registrations to Complainant. On April 27, 2002, Respondent made a demand of $1500 per week from Complainant in exchange for an agreement not to make any use of the domain names. On May 6, 2002, a representative of Complainant spoke with Respondent by telephone where Respondent suggested that Complainant “make a reasonable counteroffer.” Respondent’s attempts to extort compensation for registering an infringing domain name constitute bad faith registration and use under Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).
Complainant provides evidence establishing that Respondent habitually registers infringing domain names that incorporate famous marks. Precedent supports the inference that, where Complainant’s mark and Respondent’s domain name are logically related and confusingly similar, Respondent registered the domain name in order to prevent Complainant from reflecting its mark in a corresponding domain name; thus, Respondent’s actions evidence bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names, which infringe upon others’ famous and registered trademarks); see also Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <nordstrominc.com> and <nordstromsinc.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 26, 2002
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