The Neiman Marcus Group, Inc. and NM Nevada
Trust v Domaindeals a/k/a Domain Admin
Claim Number: FA0608000785521
PARTIES
Complainants are The Neiman Marcus Group, Inc. and NM Nevada Trust (“Complainants”), represented by David J. Steele, of Christie, Parker & Hale LLP, 3501 Jamboree Road, Suite 6000, Newport Beach, CA 92660. Respondent is Domaindeals a/k/a Domain Admin (“Respondent”), PO Box, NY, NY 10001.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <neimanandmarcus.com>,
registered with Key Registrar, Inc.
PANEL
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.
Roberto A. Bianchi as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 25, 2006; the National Arbitration Forum received a
hard copy of the Complaint on August 28, 2006.
On August 28, 2006, Key Registrar, Inc confirmed by e-mail to the
National Arbitration Forum that the <neimanandmarcus.com>
domain name is registered with Key Registrar, Inc and that the Respondent is
the current registrant of the name. Key
Registrar, Inc has verified that Respondent is bound by the Key Registrar, 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 September 1, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 21, 2006 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@neimanandmarcus.com by
e-mail.
On September 1, 2006, in reply to The Forum’s notification of the
Complaint and the commencement of the proceeding, Respondent sent an email to
The Forum’s Domain Dispute Case Coordinator, with copy to Complainant.
On September 29, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Roberto A. Bianchi as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant The Neiman Marcus Group, Inc.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends the following:
-
NM Nevada Trust
owns and licenses to The Neiman Marcus Group, Inc. the Neiman Marcus trade name
and NEIMAN MARCUS trademark, a famous and distinctive mark in
retailing. The subject domain name is confusingly similar to Complainant’s NEIMAN
MARCUS Marks.
-
Respondent has no rights or legitimate interests in the contested domain
name. Respondent is merely using
the reputation, and goodwill associated with Complainant’s mark to attract
users to its website for commercial gain.
Respondent cannot rely on Paragraph 4(c)(i), of the Policy because the
unlawful registration and use of a domain name cannot be a bona fide use. Respondent
is not known individually, or as a business, or in any other manner by any of
the domain name, nor by Neiman Marcus.
Respondent has no affiliation or relationship with Complainant and has
no legitimate reason for using Complainant’s trademark within a domain
name. Respondent cannot avail itself of
Paragraph 4(c)(iii), because its use of the disputed domain name is clearly
“commercial.”
-
Respondent
registered the domain name with the intention of attracting users searching for
Complainant’s trademark or attempting to reach Complainant’s website. Respondent then offers links to goods that
are competitive with Complainant’s for Respondent’s commercial gain. Accordingly, Paragraph 4(b)(iv) is clearly
satisfied, and a finding of bad faith is supported. Respondent’s failure to provide
accurate WHOIS information further supports a finding of bad faith under the
UDRP policy.
B. Respondent
The only submission by the Respondent in this proceeding was an
un-signed email dated September 1, 2006, with the following text:
“You can have the domain, it is open for transfer please withdraw your
complaint.”
Because this text was not sent in hardcopy to The Forum, it can hardly
qualify as a formal Response compliant with ICANN Rule # 5(b). However the Panel considers it as a
submission from Respondent in reply to the Complaint. See “Rights or Legitimate Interests” below.
C. Additional Submissions
There were no additional submissions from the parties.
FINDINGS
Each of the Complainants separately owns one
or more of the following marks registered with the Trademark and Service Mark
Principal Register of the United States Patent and Trademark Office:
Neiman-Marcus (stylized), NEIMAN MARCUS, NEIMAN-MARCUS, and NeimanMarcus
(stylized). Separately, the “Neiman
Marcus” marks cover one or more of the following goods or services: women’s
apparel in class 39, men’s, women’s and children’s clothing in class 39
(international class 25), watch fobs, cuff links, etc. in class 28, retail
specialty department store services in class 101 (international class 42),
fruit preserves in class 46 (international class 29), credit card services in classes
100, 101 and 102 (international class 36), beef and other foods, etc. in class
46 (international class 29). The
registration of each of such trademarks or service marks predates the
registration of the disputed domain name made by Respondent on July 10, 2006.
As shown in Annexes
“C” and “D” to the Complaint, the <neimanandmarcus.com> website contains a number of links to web pages and
sites advertising goods and services offered by competitors of Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 Complainants
have established that they separately have rights in the “Neiman Marcus”
marks. See “Findings”
above. The only difference between the
domain name in dispute and such marks is the word “and” between the words
“Neiman” and “Marcus” in the domain name.
It is well-known practice to replace name
elements like “and” or “&” by a hyphen when using the respective name as a
second level domain name. See
Rohde & Schwarz GmbH & Co. KG v. Pertshire
Mktg., Ltd., D2006-0762 (WIPO Aug. 21,
2006); see also Deutsche Telekom AG v. Dexcom Holdings B.V.,.
DTV2006-0001 (WIPO Mar. 12, 2006) (finding that adding or omitting a hyphen is
not sufficient to avoid confusion between the domain name and the complainant’s
trademark). Conversely, the addition of
the word “and” and the suppression of the hyphen or the space between the
“Neiman” and “Marcus” names –depending on which of the “Neiman Marcus” marks is
being considered– does not diminish the confusion between the domain name and
Complainant’s marks.
Thus, the
Complainants have proved the first element of the Policy, that the domain name
at issue is confusingly similar to Complainant’s marks.
By denying that Respondent is known by the domain name, or that it owns any intellectual property rights in the domain name, or that it has any affiliation or relationship with Complainants, and by stating that Respondent is not using the domain name in connection with a bona fide offer of goods or services, but instead it is merely using the reputation, and goodwill associated with Complainants’ marks to attract users to its website for commercial gain, the Complainants have established a prima facie case that Respondent lacks rights or legitimate interests in the domain name. This shifts the burden to Respondent to show rights or legitimate interests. See Mattel, Inc. v. Yesbarbie, FA 114754 (Nat Arb. Forum Sept. 12, 2002).
In fact, Respondent’s only submission in this proceeding consists of an
email sent to The Forum in reply to the notification of the complaint and the
commencement of the proceeding, with copy to the Complainants, containing the
following text: “You can have the domain, it is open for transfer please
withdraw your complaint.” Whether or
not this text may be taken as an acceptance of Complainant’s rights in the
domain name, or as Respondent’s readiness to comply with the remedy requested
by the Complainants, it certainly does not assert any rights or legitimate
interests of Respondent in the disputed domain name.
Further, from the evidence submitted by the Complainant it appears that Respondent is using the website under the disputed domain name to divert Internet users to the websites of Complainant’s competitors, with the likely intention of obtaining “click-through” revenue. Thus, Respondent is not making “a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”, pursuant to Policy paragraph 4(c)(iii).
In absence of any submission in Respondent’s favor, the Panel finds that Respondent lacks rights or legitimate interests in the domain name.
The Complainants have proved that Respondent is using the disputed domain name for a website clearly intended to misdirect Internet traffic. Numerous links to commercial websites appear on the <neimanandmarcus.com> web page, featuring goods and services not sponsored by or affiliated with the Complainants, but competing with the goods and services of the Complainants. That a “domain parking” company is providing such links does not excuse Respondent. It was Respondent itself who caused the links to appear when it decided to park the disputed domain name, seeking to obtain revenue per click. See Diners Club Int’l Ltd. v. O P Monga, FA 670049 (Nat. Arb. Forum May 22, 2006); see also Allen-Edmonds Shoe Corp. v. joseph FA 624511 (Nat. Arb. Forum Feb. 28, 2006); 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). Since the Complainants are in the business of selling goods and services of many kinds, it appears that Respondent registered the domain name with the aim of unfairly extracting a profit by creating confusion among Internet users, who are driven into the belief that the pages posted on the website under the disputed domain name are associated with or sponsored by the Complainants.
Respondent’s bad faith is further evidenced by the fact that Respondent provided false telephone and physical address information when it registered the domain name. See IntelliTrack Inc. v manager, admin FA 362178 (Nat. Arb. Forum Dec. 28, 2004), finding that false contact information consisting in erroneous telephone, ownership and physical address information obscures Respondent’s activities and evidences bad faith. See Mattel, Inc. v. KPF, Inc., FA 244073 (Nat. Arb. Forum Apr. 2, 2004).
In sum, the Panel
is satisfied that the domain name was registered and is being used in bad faith
by the Respondent.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <neimanandmarcus.com> domain name be TRANSFERRED from Respondent to Complainant, The Neiman Marcus Group, Inc.
Roberto A. Bianchi, Panelist
Dated: October 13, 2006
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