The Neiman Marcus Group, Inc. v.
AchievementTec, Inc.
Claim Number: FA0309000192316
PARTIES
Complainant
is The Neiman Marcus Group, Inc.,
Dallas, TX (“Complainant”) represented by David
J. Steele of Christie, Parker & Hale LLP.
Respondent is AchievementTec, Inc.,
Grand Prairie, TX (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <neimanmarcushiring.com>
registered with Tucows, Inc.
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 September 2, 2003; the Forum received a hard copy of the
Complaint on September 2, 2003.
On
September 2, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the
domain name <neimanmarcushiring.com>
is registered with Tucows, Inc. and that Respondent is the current registrant
of the name. Tucows, Inc. has 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
September 3, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 23, 2003 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@neimanmarcushiring.com
by e-mail.
A
timely Response was received on September 23, 2003. However, the Response did
not comply with Rule 5(a) because it was received in hard copy form only.
The Panel, in its discretion, has considered the
Response. See
Strum v. Nordic Net Exchange AB,
FA 102843 (Nat. Arb. Forum Feb. 21, 2002) (finding that "[r]uling a
Response inadmissible because of formal deficiencies would be an extreme remedy
not consistent with the basic principles of due process").
On
September 26, 2003, Complainant submitted a timely and complete Additional
Submission.
On October 9, 2003, 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.
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 <neimanmarcushiring.com> domain name is confusingly similar
to Complainant’s NEIMAN MARCUS mark.
2. Respondent does not have any rights or
legitimate interests in the <neimanmarcushiring.com>
domain name.
3. Respondent registered and used the <neimanmarcushiring.com> domain
name in bad faith.
B.
Respondent
Respondent
asserts that it was requested by Complainant to create an online demo of
Respondent’s web-based applicant attraction and recruiting process. Respondent
claims that it uses the company’s name and information in the domain name when
creating these demos, per its standard procedure. Respondent maintains that it has expended $2,000 to create its
demonstration for Complainant.
C.
Additional Submissions
Complainant
contends that it has not authorized Respondent to perform any work for it and
has not authorized Respondent to use Complainant’s marks in a domain name.
FINDINGS
Complainant’s principal retail chain, The Neiman Marcus
Company (“Neiman Marcus”), was established in 1907 as a local specialty store
and has become an internationally recognized innovator in fashion and merchandise. Complainant developed a reputation for high
prices and quality, which made the Neiman Marcus name synonymous with high
fashion and world famous designers.
Complainant owns several United States trademark registrations for
NEIMAN-MARCUS and NEIMAN MARCUS (the Neiman Marcus trademarks). Complainant has been the substantially
exclusive user of the Neiman Marcus trademarks in the United States since at
least as early as 1907, and has been using the mark continuously ever since.
As a result of nearly a century of use,
the Complainant has created in NEIMAN MARCUS one of the most famous and
distinctive marks in retailing. The
Neiman Marcus trademarks have an invaluable good will and reputation, not only
in the United States but also throughout the world. The Complainant operates
thirty-five Neiman Marcus stores located in premier retail locations in major
markets nation wide. Hundreds of
thousands of consumers hold Neiman Marcus charge accounts, as sales revenues
for the Neiman Marcus stores and catalogs total in the hundreds of millions of
dollars during the past year alone.
In the Fall of 1999, Complainant launched
an e-commerce web site available at <neimanmarcus.com>. Complainant also owns and operates the
domain name <neimanmarcuscareers.com> which it uses in connection with
its employment efforts, including hiring of associates.
Complainant conducted an extensive search of Complainant’s business
records and interviewed all personnel who might be aware of prior dealings
between Complainant and Respondent.
Complainant did not discover any evidence of any prior dealings between
Complainant and Respondent, nor any request by Complainant to Respondent
regarding its goods or services.
Further, Complainant is unaware of any obligation Complainant has to pay
Respondent for any goods or services.
On September 22, 2003, Complainant requested via electronic mail that
Respondent disclose the name(s) of the employee with whom Respondent had
dealt. Respondent did not reply to this
request.
Regardless
of whether or not Respondent had any prior business dealings with Complainant,
Complainant has not authorized Respondent to register or use a domain name that
incorporates in whole or in part, Complainant’s NEIMAN MARCUS mark.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
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;
(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 produced evidence of a number of
trademark registrations with the United States Patent and Trademark Office
(“USPTO”) for the NEIMAN MARCUS mark, including Reg. No. 934,177 (registered on
May 16, 1972) in relation to retail specialty department store services.
Complainant’s trademark registrations with the USPTO establish Complainant’s
rights in the mark for purposes of Policy ¶ 4(a)(i). See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16,
2002) (“Under U.S. trademark law, registered marks hold a presumption that they
are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption).
The
<neimanmarcushiring.com> domain name is confusingly similar to
Complainant’s NEIMAN MARCUS mark because the disputed domain name incorporates
Complainant’s mark and adds the generic or descriptive term “hiring” to the end
of the mark. The addition of a generic or descriptive term does not
significantly differentiate the domain name from the mark under Policy ¶
4(a)(i). See Arthur
Guinness Son & Co. (Dublin) Ltd. v.
Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity
where the domain name in dispute contains the identical mark of Complainant
combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding that “[n]either the addition of an ordinary descriptive word . . . nor
the suffix ‘.com’ detract from the overall impression of the dominant part of
the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is
satisfied).
Accordingly,
the Panel finds that the <neimanmarcushiring.com> domain name is confusingly similar to Complainant’s NIEMAN MARCUS mark
under Policy ¶ 4(a)(i).
Respondent has submitted no evidence in
support of its contention that it was requested by Complainant to create a
website. Nor has Respondent provided
any evidence of authorization to use Complainant’s trademark in a domain
name. See Allen-Edmonds Shoe Corporation v. Takin’ Care of Bus., D2002-0799, (WIPO October 10, 2002) (even
where a reseller is an authorized reseller, “without a specific agreement
between the parties, the reseller does not have the right to use the licensor’s
trademark as a domain name”); see also MatchMaker International Development
Corporation v. Kaiser Development Corporation, FA 146933 (Nat. Arb. Forum
May 9, 2003).
Respondent
is not commonly known by NEIMAN MARCUS HIRING or <neimanmarcushiring.com>. Complainant has not licensed Respondent to use Complainant’s
trademarks. The Panel concludes that Respondent has not established any rights
to or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See 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); see also 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).
Respondent has neither used nor made any
demonstrable preparations to use the <neimanmarcushiring.com> domain name. The Panel may find that
Respondent’s lack of proof of demonstrable preparations to use the disputed
domain name before recieving notice of this dispute suggests that Respondent lacks
any rights to or legitimate interests in the domain name with regard to Policy
¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that when Respondent declares its
intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1)
‘demonstrable’ evidence of such preparations to use the domain name, and 2)
that such preparations were undertaken ‘before any notice to [Respondent] of
the dispute’”); see also Household
Int’l, Inc. v. Cyntom Enter., FA 95784 (Nat. Arb. Forum Nov. 7, 2000)
(holding that Respondent’s “vague and unsupported assertion of ‘plans to sell
household goods, supplies and appliances over the Internet’” was insufficient
to be considered proof of a legitimate business plan).
Respondent’s
only use of the <neimanmarcushiring.com> domain name was
to offer the domain name registration to Complainant for sale for $2,000.
Respondent’s offer to sell the disputed domain name to Complainant indicates
that Respondent has no rights to or legitimate interests in the domain name. See American Nat’l Red Cross v. Domains a/k/a Best
Domains a/k/a John Barry, FA 143684 (Nat. Arb. Forum March 4, 2003) (“Respondent’s lack of rights and legitimate
interests in the domain name is further evidenced by Respondent’s attempt to
sell its domain name registration to Complainant, the rightful holder of the
RED CROSS mark”); see also J. Paul
Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7,
2000) (finding rights or legitimate interests do not exist when one has made no
use of the websites that are located at the domain names at issue, other than
to sell the domain names for profit).
Accordingly,
the Panel finds that Respondent does not have rights or legitimate interests in
the <neimanmarcushiring.com> domain name under Policy ¶ 4(a)(ii).
Respondent offered the <neimanmarcushiring.com>
domain name registration to Complainant for $2,000. Therefore, Respondent acquired the disputed
domain name primarily for the purpose of selling the domain name registration
to Complainant for valuable consideration in excess of Respondent’s
out-of-pocket costs, which is evidence of bad faith registration and use under
Policy ¶ 4(b)(i). See Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000)
(finding that a failure to use the domain name in any context other than to
offer it for sale to Complainant amounts to a use of the domain name in bad
faith); see also Universal City
Studios, Inc. v. Meeting Point Co., D2000-1245 (WIPO Dec. 7, 2000) (finding
bad faith where Respondent made no use of the domain names except to offer them
to sale to Complainant).
The <neimanmarcushiring.com> domain name is
obviously connected with Complainant because Complainant’s NEIMAN MARCUS mark
is the primary element of the domain name. The registration of the disputed
domain name by anyone other than Complainant suggests that the domain name was
registered in bad faith. See
Entrepreneur Media, Inc. v. Smith,
279
F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an
alleged infringer chooses a mark he knows to be similar to another, one can
infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also Deutsche Bank AG v. Diego-Arturo
Bruckner, WIPO D2000-0277 (Athe domain name is so obviously connected with
the Complainant and its services that its very use by someone with no
connection with the Complainant suggests opportunistic bad faith”).
The
Panel thus finds that Respondent registered and used the <neimanmarcushiring.com> domain name in bad faith, and that Policy ¶
4(a)(iii) is satisfied.
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 <neimanmarcushiring.com>
domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated: October 15, 2003
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