The Neiman Marcus Group, Inc. and NM
Nevada Trust v. A Witt
Claim
Number: FA0503000436561
Complainant is The Neiman Marcus Group, Inc. and NM Nevada Trust (collectively, “Complainant”), represented by David J. Steele, of Christie, Parker and
Hale LLP, 3501 Jamboree
Road, Suite 6000, Newport Beach, CA 92660.
Respondent is A Witt (“Respondent”), 2308 New Copeland Road,
Tyler, TX 75701.
REGISTRAR AND
DISPUTED DOMAIN NAME
The
domain name at issue is <neimanbarkus.org>, registered with Tucows
Inc.
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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
7, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 8, 2005.
On
March 8, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <neimanbarkus.org> 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
March 10, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 30, 2005 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@neimanbarkus.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
April 1, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Honorable Paul
A. Dorf (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." 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <neimanbarkus.org>
domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark.
2. Respondent does not have any rights or
legitimate interests in the <neimanbarkus.org> domain name.
3. Respondent registered and used the <neimanbarkus.org>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
NM
Nevada Trust owns and licenses to Complainant, The Neiman Marcus Group, Inc.,
the Neiman Marcus trade name and NEIMAN MARCUS mark. These two entities will be
collectively referred to as “Complainant.” Complainant’s Neiman Marcus retail
business is a nationwide chain of retail stores and a worldwide mail order
catalog retail business, internationally recognized as an innovator in high-end
fashion and merchandising. In the Fall of 1999, Complainant expanded its
retailing strategy by launching an e-commerce website available at
<neimanmarcus.com>.
Complainant
offers a wide assortment of merchandise under its NEIMAN MARCUS mark. For years
it has offered merchandise for pet owners both in its retail stores and on its
website. Complainant’s customers have come to closely associate the Neiman
Marcus trademarks with merchandise for pet owners, including items for dogs.
Complainant
owns several United States registrations for the NEIMAN MARCUS mark (Reg. No.
601,375 issued April 6, 1954; Reg. No. 601,864 issued May 19, 1954; Reg. No.
601,723 issued February 1, 1955; Reg. No. 1,593,195 issued October 5, 1988 and
Reg. No. 1,733,202 issued September 5, 1943).
Respondent
registered the <neimanbarkus.org> domain name on August 14, 2004.
Respondent’s domain name resolves to a website that offers information about
Respondent’s pet grooming business, offering “Stylz For The Pampered Pet.”
Moreover, the website offers a “Grooming Shop” as well as “Grooming Prices.”
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.
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.
Complainant has
established with extrinsic proof in this proceeding that it has rights in the
NEIMAN MARCUS mark through registration with the United States Patent and
Trademark Office and by continuous use of its mark in commerce. 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).
Respondent’s <neimanbarkus.org>
domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark because
the domain name incorporates Complainant’s mark and simply replaces the letters
“m” and “c” in “Marcus” with the letters “b” and “k.” Such minor changes are
insufficient to circumvent Complainant’s rights in the mark nor avoid the
confusing similarity aspect of Policy ¶ 4(a)(i). See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18,
2000) (finding that, by misspelling words and adding letters to words, a
Respondent does not create a distinct mark but nevertheless renders the domain
name confusingly similar to Complainant’s marks); see also Belkin Components
v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain
name confusingly similar to
Complainant's BELKIN mark because the name merely exchanged the letter “i” in
Complainant's mark with the letter “e”).
Furthermore, Respondent’s addition of the generic top-level domain
“.com” and the omission of the space between the words in Complainant’s NEIMAN
MARCUS mark is not enough to overcome a finding of confusing similarity
pursuant to Policy ¶ 4 (a)(i). See
Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (finding it is
a “well established
principle that generic top-level domains are irrelevant when conducting a
Policy ¶ 4(a)(i) analysis”); see also Nev.
State Bank v. Modern Ltd. – Cayman Web Dev., FA
204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that
the addition of a generic top-level domain is irrelevant when considering
whether a domain name is identical or confusingly similar under the Policy.”); see
also Hannover
Ruckversicherungs-AG v. Ryu,
FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be
identical to HANNOVER RE, “as spaces are impermissible in domain names and a
generic top-level domain such as ‘.com’ or ‘.net’ is required in domain
names”); see also Croatia Airlines
v. Kijong, AF-0302 (eResolution Sept. 25, 2000) (finding that the domain
name <croatiaairlines.com> is identical to Complainant's CROATIA AIRLINES
trademark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel may accept all reasonable allegations set forth in
the Complaint as true and accurate. 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 Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on Respondent’s
failure to respond: (1) Respondent does not deny the facts asserted by
Complainant, and (2) Respondent does not deny conclusions which Complainant
asserts can be drawn from the facts).
Additionally,
the Panel may interpret Respondent’s failure to respond to the Complaint as an
admission that Respondent lacks rights and legitimate interests in the <neimanbarkus.org>
domain name pursuant to Policy ¶ 4(a)(ii).
See 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); see
also Bank of Am. Corp. v.
McCall,
FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not
only results in its failure to meet its burden, but also will be viewed as
evidence itself that Respondent lacks rights and legitimate interests in the
disputed domain name.”).
Respondent is
using the <neimanbarkus.org> domain name to direct Internet users
to a commercial website displaying goods and services similar to those offered
on Complainant’s website. Respondent’s
use of a domain name confusingly similar to Complainant’s NEIMAN MARCUS mark to
direct Internet users interested in Complainant’s products to a commercial
website that offers similar goods is not a use in connection with a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). See Computerized Sec.
Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that
Respondent’s appropriation of Complainant’s mark to market products that
compete with Complainant’s goods does not constitute a bona fide offering of
goods and services); see also Am.
Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“It would be
unconscionable to find a bona fide offering of services in a respondent’s
operation of web-site using a domain name which is confusingly similar to the
Complainant’s mark and for the same business”); see also U.S. Franchise
Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of Complainant’s
mark and the goodwill surrounding that mark as a means of attracting Internet
users to an unrelated business was not a bona fide offering of goods or
services).
Moreover, Respondent has offered no evidence and there is no proof in
the record suggesting that Respondent is commonly known by the <neimanbarkus.org>
domain name. Thus, Respondent has not
established rights 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 interests 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); see also Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because Respondent was not commonly
known by the disputed domain name nor was Respondent using the domain name in
connection with a legitimate or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
is capitalizing on the goodwill of the NEIMAN MARCUS mark by using the disputed
domain name to direct Internet users to a commercial website. Since the disputed domain name is
confusingly similar to Complainant’s mark, a consumer searching for Complainant
could become confused as to Complainant’s affiliation with the resulting
website. Therefore, Respondent’s
opportunistic and commercial use of the disputed domain name represents bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan,
FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that, if Respondent profits
from its diversionary use of Complainant's mark when the domain name resolves
to commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy ¶ 4(b)(iv)); see also Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where Respondent directed Internet users seeking
Complainant’s site to its own website for commercial gain).
Furthermore, Respondent had
actual or constructive knowledge of Complainant’s rights in the NEIMAN MARCUS
mark due to Complainant’s registration of the mark with the USPTO as well as
the international recognition associated with Complainant’s mark. Thus, the Panel concludes that Respondent’s
registration of the <neimanbarkus.org> domain name with actual or
constructive knowledge of Complainant’s rights in the NEIMAN MARCUS mark is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s
OXICLEAN mark is listed on the Principal Register of the USPTO, a status that
confers constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”); 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 worldwide prominence of the mark and thus Respondent
registered the domain name in bad faith).
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 GRANTED.
Accordingly, it
is Ordered that the <neimanbarkus.org> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
April 19, 2005
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
National
Arbitration Forum