The Neiman Marcus Group, Inc. & NM
Nevada Trust v. Kevin Daste
Claim
Number: FA0505000488509
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <neimanmarcushome.com>, registered with Go
Daddy Software, Inc.
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.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
29, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 31, 2005.
On
May 31, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <neimanmarcushome.com> is
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. 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
June 6, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 27, 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@neimanmarcushome.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 29, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Louis E. Condon
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 <neimanmarcushome.com>
domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark.
2. Respondent does not have any rights or
legitimate interests in the <neimanmarcushome.com> domain name.
3. Respondent registered and used the <neimanmarcushome.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
The Neiman
Marcus retail business was established in 1907 as a local specialty store in
Dallas, Texas. Over the years, Neiman
Marcus has grown into a nationwide chain of retail stores, in addition to
operating a worldwide mail order catalog retail business. Complainant operates thirty-five Neiman
Marcus stores in retail locations in major markets worldwide. Hundreds of thousands of consumers hold
Neiman Marcus charge accounts, and sales revenues for the Neiman Marcus stores
and mail order catalogs exceed $1 billion dollars annually.
NM Nevada Trust
owns and licenses to The Neiman Marcus Group, Inc. the NEIMAN MARCUS
trademark. The NEIMAN MARCUS trademark
is the subject of numerous U.S. trademark registrations, including registration
numbers 601,375 (issued Apr. 6, 1954), 601,723 (issued Feb. 1, 1955), 601,864
(issued Feb. 8, 1955), 1,733,202 (issued Nov. 17, 1992). The mark is registered in connection with a
variety of goods and services including women’s apparel, men’s clothing, and
mail order catalog services, inter alia.
Respondent
registered the <neimanmarcushome.com> domain name on April 8,
2005. The domain name resolves to an
active website. According to a
printout, dated May 26, the resolved website contains a variety of hyperlinks
related to the Neiman Marcus store.
These links include “Neiman Marcus Department Store,” “Neiman Marcus,”
and the “Neiman Marcus Store.” The
website also contains links to other commercial websites.
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.
The registration
of trademark with a legitimate governing authority is sufficient to establish a
presumption of valid and subsisting trademark rights under Policy ¶
4(a)(i). In this case, Complainant owns
numerous U.S. registrations for the NEIMAN MARCUS mark. Therefore, Complainant has established a
presumption of valid trademark rights in the NEIMAN MARCUS mark. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5,
2002) (finding that the 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); see
also 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).
Complainant asserts that the <neimanmarcushome.com> domain name is confusingly similar to
its NEIMAN MARCUS mark, despite the addition of the word “home” to
Complainant’s mark. The addition of the
word “home” to a third-party mark has been found insufficient to overcome the
confusing similarity of incorporating the third-party mark in the domain
name. For example, in Bank of Am.
Corp. v. Nobuyuki Takahashi, FA 197930 (Nat. Arb. Forum Nov. 4, 2003), the
panel found that the <bankofamericahome.com> domain name was confusingly
similar to the complainant’s BANK OF AMERICA mark. Additionally, in Am. Online, Inc. v. N/A, FA 288982 (Nat.
Arb. Forum Aug. 6, 2004), the panel found the <aolhome.com> domain
name confusingly similar to complainant’s AOL mark. Based on these prior decisions, the Panel finds that the <neimanmarcushome.com>
domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark pursuant
to Policy ¶ 4(a)(i).
Complainant has
established Policy ¶ 4(a)(i).
The failure of
Respondent to respond to the Complaint functions as an implicit admission that
Respondent lacks rights and legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(a)(ii). See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to
respond can be construed as an admission that they have no legitimate interest
in the domain names); see also Bloomberg L.P. v. GAF, FA
190614 (Nat. Arb. Forum Oct. 20, 2003) (finding that since Respondent did not
come forward to explain what legitimate use it may have had in the domain
names, the panel could “presume that
Respondent lacks rights and legitimate interests in the domain names at
issue”).
Prior panels
have found that using a domain name, which is identical or confusingly similar
to a third-party’s mark to misdirect Internet users to its own website for
commercial gain is not a bona fide offering of goods or services, nor a
legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and
(iii). Respondent is using a domain
name, which is confusingly similar to Complainant’s NEIMAN MARCUS mark, to
attract Internet users to its own website, presumably for commercial gain. Consistent with prior decisions, the Panel
finds that this is not a bona fide offering of goods or services, nor a
legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and
(iii). See Geoffrey, Inc. v.
Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 25, 2003) (finding that
Respondent had no rights or legitimate interests in a domain name that it used
to redirect Internet users to an Internet directory website that featured
advertisements and an Internet directory); see also Pioneer Hi-Bred Int’l
Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that
Respondent did not have rights or legitimate interests in a domain name that
used Complainant’s mark and redirected Internet users to website that pays
domain name registrants for referring those users to its search engine and
advertisements).
The WHOIS
registration information lists the registrant as “Kevin Daste.” This information fails to suggest that
Respondent is commonly known by the disputed domain name 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").
Complainant has
established Policy ¶ 4(a)(ii).
Respondent is in
violation of Policy ¶ 4(b)(iv) because it has intentionally attempted to
attract Internet users to its websites for commercial gain by creating a
likelihood of confusion with Complainant’s mark. Respondent registered a domain name that is confusingly similar
to Complainant’s NEIMAN MARCUS mark. Respondent has used the domain name to
attract Internet users to its own websites that offer search services and
hyperlinks that directly relate and describe Complainant’s own
products—evidencing Respondent’s prior knowledge of Complainant’s trademark
rights. Moreover, it is reasonable for
this Panel to infer, in the absence of a response, that Respondent is earning
some sort of revenue from Internet users that access its links. In the absence of a response, these facts
and inferences lead the Panel to conclude that Respondent has violated Policy ¶
4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with Complainant’s well-known marks, thus creating
a likelihood of confusion strictly for commercial gain); see also 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)).
Moreover, as
stated above, Respondent has evidenced its own knowledge of Complainant’s trademark
rights in NEIMAN MARCUS as the result of resolving the disputed domain name to
a website that contained several links that relate and describe Complainant’s
stores. This is further evidence of
Complainant’s bad faith registration and use of the disputed domain name
pursuant to Policy ¶ 4(a)(iii). See Yahoo!
Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of
the YAHOO! mark negated any plausible explanation for Respondent’s registration
of the <yahooventures.com> domain name); see also Digi Int’l v. DDI
Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively.”).
Complainant has
established Policy ¶ 4(a)(iii).
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <neimanmarcushome.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
July 12, 2005
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