The Neiman Marcus Group, Inc. and NM
Nevada Trust v. Unasi Management Inc.
Claim
Number: FA0505000470918
Complainant is The Neiman Marcus Group, Inc. and NM Nevada Trust (collectively “Complainant”), represented by David J. Steele, of Christie, Parker &
Hale LLP, 3501 Jamboree
Road, Suite 6000, Newport Beach, CA 92660.
Respondent is Unasi Management
Inc. (“Respondent”), Galerias Alvear, Via Argentina 2, Oficina #3, Zona 5,
Panama, 5235, Panama.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <neymanmarcus.com> and <neimanmrcus.com>,
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com.
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 April
29, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 2, 2005.
On
May 2, 2005, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by e-mail to
the National Arbitration Forum that the domain names <neymanmarcus.com>
and <neimanmrcus.com> are registered with Iholdings.com, Inc.
d/b/a Dotregistrar.com and that Respondent is the current registrant of the
names. Iholdings.com, Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com,
Inc. d/b/a Dotregistrar.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
May 5, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 25, 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@neymanmarcus.com
and postmaster@neimanmrcus.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
June 2, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <neymanmarcus.com>
and <neimanmrcus.com> domain names are confusingly similar to
Complainant’s NEIMAN MARCUS mark.
2. Respondent does not have any rights or
legitimate interests in the <neymanmarcus.com> and <neimanmrcus.com>
domain names.
3. Respondent registered and used the <neymanmarcus.com>
and <neimanmrcus.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
NM Nevada Trust owns and licenses to The Neiman Marcus Group, Inc., the NEIMAN
MARCUS mark. These two entities will be
collectively referred to as “Complainant.”
Complainant, was established in 1907 as a local specialty store and has
become an internationally recognized innovator in fashion and merchandise. Complainant owns several trademark
registrations with the United States Patent and Trademark Office 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; and Reg. No. 1,733,202
issued September 5, 1943).
Complainant
operates 35 Neiman Marcus stores located in premier retail locations in major
markets nationwide. In the Fall of
1999, Complainant expanded its retailing strategy by launching an e-commerce
website available at <neimanmarcus.com>.
Respondent
registered the <neimanmrcus.com> domain name on May 5, 2003 and
the <neymanmarcus.com> domain name on March 25, 2005. Respondent
is using the disputed domain names to redirect Internet users to commercial
websites in direct competition with Complainant’s fashion and merchandise
business.
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. The
respondent has the burden of refuting this assumption).
The <neymanmarcus.com>
domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark because
the domain name incorporates Complainant’s mark in its entirety and merely
replaces the letter “i” in the word “neiman” with the letter “y.” The replacement of the letter “i” with the
letter “y” in Complainant’s mark does not negate the confusingly similar
aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). 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
Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001)
(finding that the domain names <tdwatergouse.com> and
<dwaterhouse.com> were virtually identical to the complainant’s TD
WATERHOUSE name and mark).
The <neimanmrcus.com>
domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark because
the domain name incorporates Complainant’s mark in its entirety and omits the
letter “a” from the word “marcus” in Complainant’s mark. The omission of the letter “a” from
Complainant’s mark does not negate the confusingly similar aspects of
Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See
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> was
confusingly similar to the complainant’s STATE FARM mark); see also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat.
Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> was
confusingly similar to the complainant’s COMPAQ mark because the omission of
the letter “a” in the domain name does not significantly change the overall
impression of the mark).
Furthermore,
Respondent’s <neymanmarcus.com> and <neimanmrcus.com>
domain domain names are confusingly similar to Complainant’s NEIMAN MARCUS mark
because the domain names incorporate Complainant’s mark in its entirety and
deviate with the addition of the generic top-level domain “.com.” The addition of generic top-level domains
does not negate the confusingly similar aspects of Respondent’s domain name
pursuant to Policy ¶ 4(a)(i). See Fed’n of Gay Games, Inc. v. Hodgson, D2000-0432 (WIPO June 28, 2000) (finding that
the domain name <gaygames.com> was identical to the complainant's
registered trademark GAY GAMES); see also
Little Six, Inc. v. Domain For
Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that
<mysticlake.net> was plainly identical to the complainant’s MYSTIC LAKE
trademark and service mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent has no rights or legitimate interests in the <neymanmarcus.com>
and <neimanmrcus.com> domain names. Once Complainant makes a prima facie case in support of
its allegations, the burden shifts to Respondent to prove that it does have
such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to
the Complaint, the Panel will assume that Respondent has not established rights
and legitimate interests in the disputed domain names. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that where the complainant has asserted that respondent has no rights
or legitimate interests with respect to the domain name it is incumbent on
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 Clerical Med. Inv.
Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding
that under certain circumstances the mere assertion by the complainant that the
respondent has no rights or legitimate interests is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that the respondents’ failure to respond can be
construed as an admission that they have no legitimate interest in the domain
names).
Because
Complainant made a prima facie showing and Respondent has not submitted
a response, the Panel may accept all reasonable allegations and inferences in
the Complaint as true. 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) (holding
that the respondent’s failure to respond allows all reasonable inferences of
fact in the allegations of the complainant to be deemed true).
Respondent is
using the <neymanmarcus.com> and <neimanmrcus.com>
domain names to redirect Internet users to commercial websites in direct
competition with Complainant’s fashion and merchandise business. Respondent’s use of domain names confusingly
similar to Complainant’s NEIMAN MARCUS mark to redirect 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 pursuant to Policy ¶ 4(c)(iii).
See Bank of Am. Corp. v. Out
Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (holding that
the respondent’s use of infringing domain names to direct Internet traffic to a
search engine website that hosted pop-up advertisements was evidence that it
lacked rights or legitimate interests in the domain name); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000)
(“[I]t would be unconscionable to find a bona fide offering of services in a
respondent’s operation of a 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 the respondent’s use of
the 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 <neymanmarcus.com>
or <neimanmrcus.com> domain name.
Thus, Respondent has not established rights or legitimate interests in
the disputed domain names 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 the respondent was not
commonly known by the mark and never applied for a license or permission from
the complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb.
Forum Jan. 23, 2001) (finding that the respondent does not have rights in a
domain name when the 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 the
respondent was not commonly known by the disputed domain name nor was the
responondent 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
using the <neymanmarcus.com> and <neimanmrcus.com>
domain names, which are confusingly similar to Complainant’s NEIMAN MARCUS
mark, to redirect Internet users to commercial websites in direct competition
with Complainant’s fashion and merchandise business. The Panel finds that such use constitutes disruption and 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 the respondent acted in bad faith by attracting Internet users to a
website that competes with the complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000)
(finding that the respondent diverted business from the complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii)).
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
competing websites. Since Respondent’s
domain names are confusingly similar to Complainant’s NEIMAN MARCUS mark,
Internet users accessing Respondent’s domain names may become confused as to
Complainant’s affiliation with the resulting website. Thus, Respondent’s commercial use of the <neymanmarcus.com>
and <neimanmrcus.com> domain names 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 the 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 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).
Furthermore,
Respondent registered the <neymanmarcus.com> and <neimanmrcus.com>
domain names with actual or constructive knowledge of Complainant’s rights in
the NEIMAN MARCUS mark due to Complainant’s registration of the mark with the
United States Patent and Trademark Office.
Moreover, the Panel infers that Respondent registered the domain names
with actual knowledge of Complainant’s rights in the mark due to the obvious
connection between the content advertised on Respondent’s website and
Complainant’s business. Registration of
a domain name that is confusingly similar to another’s mark despite actual or
constructive knowledge of the mark holder’s rights in the mark is evidence of
bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here
is a legal presumption of bad faith, when the respondent reasonably should have
been aware of the complainant’s trademarks, actually or constructively.”); see also Orange Glo Int’l v. Blume, FA
118313 (Nat. Arb. Forum Oct. 4, 2002) (“[T]he 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. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that
because the link between the complainant’s mark and the content advertised on
the respondent’s website was obvious, the respondent “must have known about the
complainant’s mark when it registered the subject domain name”).
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 <neymanmarcus.com> and <neimanmrcus.com>
domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated:
June 15, 2005
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