The Neiman Marcus Group, Inc., and NM
Nevada Trust v. Tyson Rukash
Claim
Number: FA0503000444456
Complainant is The Neiman Marcus Group, Inc. and NM Nevada Trust (“Complainant”), represented by David J. Steele of Christie, Parker &
Hale LLP, 3501 Jamboree
Road, Suite 6000, Newport Beach, CA 92660.
Respondent is Tyson Rukash (“Respondent”),
2/66 Sturt st Kingsford, Sydney, New South Wales 2032, Australia.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <neimanmarcuz.com>, <neimanmarceus.com>,
<neimanmarchs.com>, <neimanmarcjs.com>, <neimanmarcoos.com>,
<neimanmarcsu.com>, <neimanmarcuus.com>, <neimanmarcyus.com>,
<neimanmarxus.com>, <neimanmmarcus.com>, <nneimanmarcus.com>,
<neimanmarcua.com>, <neimanmarcuc.com>, <neimanmarcud.com>,
<neimanmarcue.com>, <neimanmarcuw.com>, and <neimanmarcux.com>,
registered with Go Daddy Software, 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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
21, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 22, 2005.
On
March 21, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain names <neimanmarcuz.com>, <neimanmarceus.com>,
<neimanmarchs.com>, <neimanmarcjs.com>, <neimanmarcoos.com>,
<neimanmarcsu.com>, <neimanmarcuus.com>, <neimanmarcyus.com>,
<neimanmarxus.com>, <neimanmmarcus.com>, <nneimanmarcus.com>,
<neimanmarcua.com>, <neimanmarcuc.com>, <neimanmarcud.com>,
<neimanmarcue.com>, <neimanmarcuw.com>, and <neimanmarcux.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
March 23, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 12, 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@neimanmarcuz.com, postmaster@neimanmarceus.com, postmaster@neimanmarchs.com,
postmaster@neimanmarcjs.com, postmaster@neimanmarcoos.com, postmaster@neimanmarcsu.com,
postmaster@neimanmarcuus.com, postmaster@neimanmarcyus.com, postmaster@neimanmarxus.com,
postmaster@neimanmmarcus.com, postmaster@nneimanmarcus.com, postmaster@neimanmarcua.com, postmaster@neimanmarcuc.com, postmaster@neimanmarcud.com,
postmaster@neimanmarcue.com, postmaster@neimanmarcuw.com, and postmaster@neimanmarcux.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
April 20, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Tyrus R.
Atkinson, Jr., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <neimanmarcuz.com>,
<neimanmarceus.com>, <neimanmarchs.com>, <neimanmarcjs.com>,
<neimanmarcoos.com>, <neimanmarcsu.com>, <neimanmarcuus.com>,
<neimanmarcyus.com>, <neimanmarxus.com>, <neimanmmarcus.com>,
<nneimanmarcus.com>, <neimanmarcua.com>, <neimanmarcuc.com>,
<neimanmarcud.com>, <neimanmarcue.com>, <neimanmarcuw.com>,
and <neimanmarcux.com> domain names are confusingly similar to
Complainant’s NEIMAN-MARCUS and NEIMAN MARCUS marks.
2. Respondent does not have any rights or
legitimate interests in the <neimanmarcuz.com>, <neimanmarceus.com>,
<neimanmarchs.com>, <neimanmarcjs.com>, <neimanmarcoos.com>,
<neimanmarcsu.com>, <neimanmarcuus.com>, <neimanmarcyus.com>,
<neimanmarxus.com>, <neimanmmarcus.com>, <nneimanmarcus.com>,
<neimanmarcua.com>, <neimanmarcuc.com>, <neimanmarcud.com>,
<neimanmarcue.com>, <neimanmarcuw.com>, and <neimanmarcux.com>
domain names.
3. Respondent registered and used the <neimanmarcuz.com>,
<neimanmarceus.com>, <neimanmarchs.com>, <neimanmarcjs.com>,
<neimanmarcoos.com>, <neimanmarcsu.com>, <neimanmarcuus.com>,
<neimanmarcyus.com>, <neimanmarxus.com>, <neimanmmarcus.com>,
<nneimanmarcus.com>, <neimanmarcua.com>, <neimanmarcuc.com>,
<neimanmarcud.com>, <neimanmarcue.com>, <neimanmarcuw.com>,
and <neimanmarcux.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
NM Nevada Trust
owns and licenses to The Neiman Marcus Group, Inc., the Neiman Marcus trade
name and the NEIMAN-MARCUS and NEIMAN MARCUS trademarks (collectively, the
NEIMAN MARCUS marks); both will be referred to collectively as
“Complainant.” Complainant’s retail
business was established in 1907 as a specialty store in Dallas, Texas. Over the decades, Complainant has grown into
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. Complainant has
developed a reputation for high quality goods and services through use of its
NEIMAN MARCUS marks.
Complainant now
operates thirty-five stores bearing the NEIMAN MARCUS mark located in premier
retailing locations in major markets worldwide. Hundreds of thousands of consumers hold Complainant’s charge
accounts, and sales revenues for Complainant’s stores and mail order catalogs
are in excess of $1 billion annually.
Complainant
operates its main website at the <neimanmarcus.com> domain name, which
launched in the Fall of 1999.
Complainant
holds numerous registrations with the United States Patent and Trademark Office
for the NEIMAN-MARCUS mark (Reg. No. 601,864 issued February 8, 1955; Reg. No.
601,375 issued January 25, 1955; and Reg. No. 601,723 issued February 1, 1955)
and the NEIMAN MARCUS mark (Reg. No. 1,733,202 issued November 17, 1992).
Respondent
registered the disputed domain names on January 30, 2005. Respondent is using the domain names to
redirect Internet users to a website that features Complainant’s and its
competitor’s products, a search engine, “Popular Categories,” pop-up
advertisements, and banner ads.
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 rights in the NEIMAN MARCUS marks through registration with the
United States Patent and Trademark Office (“USPTO”) and its use in commerce
over the last ninety-eight years. 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 and that a respondent has the burden of refuting this assumption); see
also Tuxedos By Rose v. Nunez, FA
95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark
where its use was continuous and ongoing, and secondary meaning was
established).
Respondent’s <neimanmarcuz.com>,
<neimanmarceus.com>, <neimanmarchs.com>, <neimanmarcjs.com>,
<neimanmarcoos.com>, <neimanmarcsu.com>, <neimanmarcuus.com>,
<neimanmarcyus.com>, <neimanmarxus.com>, <neimanmmarcus.com>,
<nneimanmarcus.com>, <neimanmarcua.com>, <neimanmarcuc.com>,
<neimanmarcud.com>, <neimanmarcue.com>, <neimanmarcuw.com>,
and <neimanmarcux.com> domain names are confusingly similar to
Complainant’s NEIMAN MARCUS marks because the domain names are misspelled
versions of Complainant’s marks. The
domain names simply contain a replacement of one letter of Complainant’s marks
with another adjacent letter on the keyboard, a transposition of two letters in
Complainant’s marks, or the addition of a single letter. Respondent’s misspelling of Complainant’s
marks in its domain names does not distinguish the domain names pursuant to
Policy ¶ 4(a)(i). Thus, the Panel
concludes that Respondent’s minor alterations to Complainant’s marks are not
sufficient to differentiate Respondent’s domain names from Complainant’s
marks. See VeriSign, Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000)
(finding that the pronunciation and spelling between the domain name
<venesign.com> and Complainant’s mark, VERISIGN, are so close that
confusion can arise in the mind of the consumer); see also 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 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 the complainant’s
marks).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
failed to contest Complainant’s assertion that Respondent lacks rights and
legitimate interests in the disputed domain names. Because Complainant’s evidence and arguments are unopposed, the
Panel is permitted to accept all reasonable inferences made in the Complaint as
true. See Do the Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a
respondent to come forward to [contest complainant’s allegations] is tantamount
to admitting the truth of complainant’s assertion in this regard”); see also
Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb.
Forum June 17, 2002) (finding that, in the absence of a Response the Panel is
free to make inferences from the very failure to respond and assign greater
weight to certain circumstances than it might otherwise do); see also Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on the
respondent’s failure to respond: (1) the respondent does not deny the facts
asserted by the complainant, and (2) the respondent does not deny conclusions
which the complainant asserts can be drawn from the facts).
Additionally,
Complainant has submitted a prima facie case to the Panel, thereby
shifting the burden to Respondent.
Respondent’s failure to fulfill its burden means that Respondent has
failed to invoke any circumstances that could demonstrate rights or legitimate
interests in the domain names. See Do
The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(finding that, once the complainant asserts that the respondent has no rights
or legitimate interests with respect to the domain, the burden shifts to the
respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also G.D. Searle v. Martin
Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this information
is “uniquely within the knowledge and control of the respondent”); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that, by not submitting a response, the
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name).
Respondent is
using the disputed domain names to redirect Internet users to websites that
feature pop-up and banner advertisements for an array of services and hosts a
search engine to link viewers to a variety of websites, including sites that
offer the same type of goods and services that Complainant offers online and in
its stores. Respondent’s use of domain
names, which are confusingly similar to Complainant’s NEIMAN MARCUS marks, to
redirect Internet users interested in Complainant’s products to commercial
websites that link to retail-related websites and pop-up advertisements is not
a use in connection with a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain names
pursuant to Policy ¶ 4(c)(iii). See
Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar.
18, 2003) (holding that a respondent’s use of
confusingly similar derivatives of Complainant’s WELLS FARGO mark to divert
Internet users to websites featuring pop-up advertisements was not a bona fide
offering of goods or services); see also Toronto-Dominion Bank v.
Karpachev, 188 F.Supp.2d 110, 114 (D.
Mass. 2002) (finding that, because a respondent's sole purpose in selecting the
domain names was to cause confusion with Complainant's website and marks, its
use of the names was not in connection with the offering of goods or services
or any other fair use); see also Geoffrey, Inc. v. Toyrus.com, FA
150406 (Nat. Arb. Forum Apr. 5, 2003) (holding that a respondent’s use of the
disputed domain name, a simple misspelling of the complainant’s mark, to divert
Internet users to a website that featured pop-up advertisements and an Internet
directory, was neither a bona fide offering of goods or services nor a
legitimate noncommercial or fair use of the domain name).
In addition,
Complainant has asserted that Respondent is not commonly known by the disputed
domain names. Furthermore, nothing in
Respondent’s WHOIS contact registration information indicates that it is known
by the disputed domain names, and there is nothing further in the record to
refute Complainant’s assertions.
Therefore, the Panel determines that Respondent has not established
rights and legitimate interests in the disputed domain names pursuant to Policy
¶ 4(c)(ii). See Tercent Inc.
v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii)
does not apply); see also RMO,
Inc. v. Burbridge, FA
96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to
require a showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail"); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) the respondent is not a licensee of
the complainant; (2) the complainant’s rights in the mark precede respondent’s
registration; (3) the respondent is not commonly known by the domain name in
question).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered
the disputed domain names, which consist of misspellings of Complainant’s
well-known marks, for Respondent’s commercial gain. Respondent’s domain names divert Internet users seeking
Complainant’s goods or services to Respondent’s commercial websites through the
use of domain names that are confusingly similar to Complainant’s marks. Furthermore, Respondent is unfairly and
opportunistically benefiting from the goodwill associated with Complainant’s
NEIMAN MARCUS marks. Respondent’s
practice of diversion, motivated by commercial gain, constitutes 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 a respondent profits from its diversionary use of the
complainant's mark when the domain name resolves to commercial websites and the
respondent fails to contest the Complaint, it may be concluded that the
respondent is using the domain name in bad faith pursuant to Policy ¶
4(b)(iv)); see also Reuters Ltd.
v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad
faith where a respondent attracted users to a website sponsored by the
respondent and created confusion with the complainant’s mark as to the source,
sponsorship, or affiliation of that website); see also eBay, Inc v. Progressive Life Awareness
Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where a
respondent is taking advantage of the recognition that eBay has created for its
mark and therefore profiting by diverting users seeking the eBay website to the
respondent’s site).
Respondent is
using the disputed domain names to advertise a search engine and links to
shopping-related websites.
Complainant’s business provides retail goods to consumers throughout the
world. The Panel finds that, by
creating confusion around Complainant’s NEIMAN MARCUS marks, Respondent is
attempting to disrupt the business of a competitor. Respondent’s use of domain names confusingly similar to
Complainant’s marks to sell Complainant’s goods and those of its competitors is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding a respondent acted in bad faith
by attracting Internet users to a website that competes with the complainant’s
business); see also EBAY, Inc. v.
MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that a respondent
registered and used the domain name <eebay.com> in bad faith where the
respondent has used the domain name to promote competing auction sites); see
also Hewlett Packard Co. v. Full Sys.,
FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that a respondent registered
and used the domain name primarily for the purpose of disrupting the business
of Complainant by offering personal e-mail accounts under the domain name
<openmail.com> which is identical to Complainant’s services under the
OPENMAIL mark).
Moreover,
Respondent’s registration of domain names that include misspelled versions of
Complainant’s registered marks suggests that Respondent knew of Complainant’s
rights in its marks. Furthermore,
Complainant’s registration of the marks with the United States Patent and
Trademark Office imputes constructive knowledge to anyone attempting to use the
mark. Therefore, the Panel finds that
Respondent chose the disputed domain names based on the distinctive qualities
of Complainant’s marks, and thus registered and used the domain names in bad
faith pursuant to Policy ¶ 4(a)(iii). See
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 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 Pfizer, Inc. v. Internet Gambiano Prods., D2002-0325
(WIPO June 20, 2002) (finding a respondent “was aware of and had knowledge of”
the complainant’s mark when registering the domain name because the
complainant’s mark was a coined arbitrary term with no meaning apart from the
complainant’s products).
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 <neimanmarcuz.com>, <neimanmarceus.com>,
<neimanmarchs.com>, <neimanmarcjs.com>, <neimanmarcoos.com>,
<neimanmarcsu.com>, <neimanmarcuus.com>, <neimanmarcyus.com>,
<neimanmarxus.com>, <neimanmmarcus.com>, <nneimanmarcus.com>,
<neimanmarcua.com>, <neimanmarcuc.com>, <neimanmarcud.com>,
<neimanmarcue.com>, <neimanmarcuw.com>, and <neimanmarcux.com>
domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
April 25, 2005
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