The Neiman Marcus Group, Inc. & NM
Nevada Trust v. Netsolutions Proxy Services
Claim
Number: FA0505000482630
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 Netsolutions Proxy
Services (“Respondent”), PO Box 9948, Tsuen Wan, Hong Kong 00000.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <neimanmarcusoutlet.com>, registered with Fabulous.com
Pty Ltd.
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.
James
A. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
22, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 24, 2005.
On
May 24, 2005, Fabulous.com Pty Ltd. confirmed by e-mail to the National
Arbitration Forum that the domain name <neimanmarcusoutlet.com> is
registered with Fabulous.com Pty Ltd. and that Respondent is the current
registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is
bound by the Fabulous.com Pty Ltd. 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 26, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 15, 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@neimanmarcusoutlet.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 22, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed James A. Crary
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 <neimanmarcusoutlet.com>
domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark.
2. Respondent does not have any rights or
legitimate interests in the <neimanmarcusoutlet.com> domain name.
3. Respondent registered and used the <neimanmarcusoutlet.com>
domain name 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 and has since 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).
Respondent
registered the <neimanmarcusoutlet.com> domain name on Apr. 14,
2005. Respondent’s domain name resolves
to a website featuring advertisements and links to products and services
unrelated to Complainant’s 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. The Panel is
entitled to accept all reasonable allegations and inferences set forth in the
Complaint as true unless the evidence is clearly contradictory. See
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 complaint to
be deemed true); see also 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.").
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 (“USPTO”) and by continuous use of the mark in commerce. See Am. Online, Inc.
v. Thomas P. Culver Enters.,
D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration
with the United States Patent and Trademark Office creates a presumption of
rights in a mark); 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 <neimanmarcusoutlet.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 adds
the common word “outlet.” This change
is not enough to overcome the confusingly similar aspects of Respondent’s
domain name pursuant to Policy ¶ 4(a)(i).
See 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); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002)
(finding that because the subject domain name incorporates the VIAGRA mark in
its entirety, and deviates only by the addition of the word “bomb,” the domain
name is rendered confusingly similar to Complainant’s mark) .
Furthermore,
Respondent’s <neimanmarcusoutlet.com> domain name is confusingly
similar to Complainant’s NEIMAN MARCUS mark because the domain name
incorporates Complainant’s mark in its entirety and deviates with the addition
of the generic top-level domain “.com.”
The addition of a generic top-level domain 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.
Respondent is
using the <neimanmarcusoutlet.com> domain name to redirect
Internet users to a website featuring links and advertisements. Respondent’s use of a domain name that is
confusingly similar to Complainant’s NEIMAN MARCUS mark to redirect Internet
users interested in Complainant’s products to a website featuring links and
advertisements unrelated to Complainant’s business 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 Wells Fargo & Co. v. Shing, FA 205699 (Nat.
Arb. Forum Dec. 8, 2003) (finding that using a domain name to
direct Internet traffic to a website featuring pop-up advertisements and links
to various third-party websites is neither a bona fide offering of goods
or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii) because the registrant presumably receives
compensation for each misdirected Internet user); see
also Bank
of Am. Corp. v. Northwest Free Cmty. Access, FA 180704 (Nat.
Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to
divert Internet users seeking Complainant's website to a website of Respondent
and for Respondent's benefit is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use
under Policy ¶ 4(c)(iii).”).
Moreover,
Respondent has offered no evidence, and there is no proof in the record,
indicating that Respondent is commonly known by the <neimanmarcusoutlet.com>
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 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 respondent using the
domain name in connection with a legitimate or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
commercial websites unrelated to Complainant’s business, via the disputed
domain name. Since Respondent’s domain
name is confusingly similar to Complainant’s NEIMAN MARCUS mark, Internet users
accessing Respondent’s domain name may become confused as to Complainant’s
affiliation with the resulting website.
Thus, Respondent’s commercial use of the <neimanmarcusoutlet.com>
domain name 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 <neimanmarcusoutlet.com> domain name
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 name
with knowledge of Complainant’s rights in the mark due to Complainant’s
aggressive promotion and long use of the mark in commerce. 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 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 <neimanmarcusoutlet.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Crary, Panelist
Dated:
July 6, 2005
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