The Neiman Marcus Group, Inc. and NM Nevada
Trust v. Cluster Records
Claim Number: FA0609000787274
PARTIES
Complainants are 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, California, USA. Respondent is Cluster Records (“Respondent”), 1465 NE 123 St, Apt 502, North Miami, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <bri-guyneimanmarcus.com>, <brianneimanmarcus.com>,
<brianneimanmarcus.net>, and <brianneimanmarcus.org> (the
“Domain Names”), registered with Go
Daddy Software, Inc.
PANEL
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 Panel in this proceeding.
Clive Elliott as Panel.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 31, 2006; the National Arbitration Forum received a
hard copy of the Complaint on September 1, 2006.
On September 1, 2006, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <bri-guyneimanmarcus.com>, <brianneimanmarcus.com>,
<brianneimanmarcus.net>, and <brianneimanmarcus.org> domain
names are registered with Go Daddy Software, Inc. and that the 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 September 7, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 27, 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@bri-guyneimanmarcus.com,
postmaster@brianneimanmarcus.com, postmaster@brianneimanmarcus.net, and
postmaster@brianneimanmarcus.org by e-mail.
On October 5, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Clive Elliott as Panel.
Procedural Default
A copy of the Response was received on September 9, 2006. However, the National Arbitration Forum did
not receive a hard copy. The National
Arbitration Forum did not consider this Response to be in compliance with ICANN
Rule #5 (a). Nevertheless, given that
Respondent did file a Response and that it purports to answer the allegations
in the Complaint the Panel has decided to take its comments into account and
exercise its discretion accordingly.
RELIEF SOUGHT
Complainant requests that the Domain Names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complaint asserts that NM Nevada Trust owns and licenses to The Neiman
Marcus Group, Inc. (collectively “Complainant”) the Neiman Marcus trade name
and NEIMAN MARCUS trademark which is the subject of numerous United States
trademark registrations. Complainant’s
Neiman Marcus retail business was established in 1907 as a local specialty
store in Dallas, Texas. It states that
it has grown into a nationwide chain of retail stores and a worldwide mail
order catalog retail business, which has developed a reputation for high
quality goods and services, through its use of the Neiman Marcus name.
Complainant states further that it owns numerous United States
trademark registrations of its marks NEIMAN-MARCUS and NEIMAN MARCUS (the
“Neiman Marcus Marks”) and provides details of these marks. It further states that since 1907, it has
continuously and exclusively used the Neiman Marcus Marks in the United States
and around the world.
Complainant submits that as a result of such use, it has established in NEIMAN MARCUS a famous and distinctive mark in the retailing sphere.
Complainant states that in 1999, it expanded its retailing business by
launching an e-commerce website at <neimanmarcus.com>.
Complainant submits that the Domain Names each misappropriate
sufficient textual components from the Neiman Marcus Marks and that ordinary
Internet users familiar with Complainant’s goods are likely to think that,
owing to the visual and phonetic similarities between the Domain Names and
Complainant’s marks, an affiliation exists between the Domain Names and the
marks. It further states that the
Domain Names incorporate Complainant’s exact mark as the prominent portions of
the domain name, and merely add the phrase “bri-guy” or the name “brian” to the
Neiman Marcus Marks.
Complainant submits that Respondent uses confusingly similar domain
names to unlawfully misdirect Internet users searching for Complainant’s
website or its goods and services a commercial website which features advertisements
and an Internet directory containing links to directly competitive products.
Complainant argues that the registration of a confusingly similar
domain name that is obviously connected with a particular trademark owner by
someone with no connection with the trademark owner suggests bad faith.
Finally, it submits that because the Neiman Marcus Marks are so
obviously connected with Complainant, the registration and use of the Domain
Names by someone with no connection with Complainant suggests bad faith.
B. Respondent
The Response is brief and less than enlightening. Its operative part reads as follows:
“Honestly gentlemen there is no need for such
harsh allegations that:
A). I have stolen used or even wanted to
intentionally buy any protected names.
but obviously the threats and allegations are uncalled for and unpleasant ;
1).
The only responsible party is go daddy for selling to me personally the
site names;
the names you now challenge .
as listed in the email
are held by Brian Neiman for a book DVD production all negotiations will
have to be
a) handled by him or any appointed individual
or attorneys he desires to use.
B) any additional negotiations or information
please contact my attorney or Mr Neimans
attorneys
available
upon request;
additionally :
how can you let protected names out there for sale you and your entire
company should be ashamed of
yourselves for being so incompetent. For Now and in the Future
DO NOT DISTURBE(sic) ME WITH FOOLISHNESS OR
ALLEGATIONS OF WRONG DOING TAKE ME FOR REAL DUDE.”
(1) The Domain Names, namely <bri-guyneimanmarcus.com>, <brianneimanmarcus.com>, <brianneimanmarcus.net>, and <brianneimanmarcus.org> are confusingly similar to the Neiman Marcus trade name and Neiman Marcus Marks;
(2) That the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(3) The Domain Names were registered and are being used in bad faith.
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.
Respondent has lodged a Response and the Panel has decided to take it into account. However, Panel is only able to assess the position based on the evidence and submissions filed by the parties. Likewise, in the absence of any contrary assertion or dispute either generally or on a specific issue, undisputed assertions and submissions which on the face of it appear to be credible, may be presumed to be correct and thus relied upon.
These
comments are made given the Respondent’s request to not be disturbed by foolish
accusations and to be taken seriously.
However, if Respondent wishes to be taken seriously it is incumbent on
it to provide a believable and informative response. The Response refers to
Brian Neiman, presumably on the basis that such an individual exists and
has some legitimate interest in not just the name Brian Neiman but also the
Domain Names. However, the Panel can
only take so much from vague insinuations of this type and at the end of the
day needs to weigh up the probabilities as best it can. Regrettably, the Respondent provides little
to support its plea to be taken for real.
Complainant asserts that it has established rights in the NEIMAN MARCUS mark pursuant to Policy ¶ 4(a)(i) through its trademark registrations for the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 601,375 issued January 25, 1955). In Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005), the panel found that the complainant’s trademark registration with the USPTO for the RBK mark was adequate to establish rights pursuant to Policy ¶ 4(a)(i). Moreover, according to the panel in Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005), “Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)… .”
On this basis the Panel finds that Complainant’s trademark registrations for the NEIMAN MARCUS mark with the USPTO demonstrate Complainant’s rights in the mark under Policy ¶ 4(a)(i).
The Panel further finds that the Domain Names are confusingly similar to Complainant’s federally registered NEIMAN MARCUS mark pursuant to Policy ¶ 4(a)(i). It does so on the basis that the Domain Names consist primarily of Complainant’s registered NEIMAN MARCUS mark in its entirety, with the addition of the generic or descriptive terms, “bri-guy” or “brian,” and the generic top-level domain (“gTLD”) “.com,” “.net,” or “.org.” Previous panels have held that similar alterations to a mark do not negate the confusing similarity created between the mark and the disputed domain names under Policy ¶ 4(a)(i). In Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001), the panel found confusing similarity where the domain name in dispute contained the identical mark of the complainant combined with a generic word or term. See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)).
Accordingly it concludes that
Respondent’s disputed domain name is confusingly similar to Complainant’s mark
pursuant to Policy ¶ 4(a)(i), because the Domain Names feature Complainant’s mark with the addition
of a descriptive or generic term.
Therefore, the Panel concludes that the Domain Names are confusingly similar to Complainant’ mark in accord with Policy ¶ 4(a)(i). Accordingly, the Panel is satisfied that the first element of the Policy has been met.
Complainant must initially establish a prima facie case that Respondent lacks rights or legitimate interests in the Domain Names under Policy ¶ 4(a)(ii). Nevertheless, once Complainant demonstrates a prima facie case, the burden then shifts to Respondent to prove that it has rights or legitimate interests in the Domain Names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (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 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 right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent asserts in its Response that the Domain Names are held by “Brian Neiman” for a “book DVD production”. It is open for the Panel to find that this constitutes a “plausible explanation” to which it must give weight. See IG Index PLC v. Index Trade, D2000-1124 (WIPO Oct. 16, 2000). However, for the reasons identified above the Panel is given no more than a glimmer of information and under the circumstances finds this paucity of detail insufficient to constitute a plausible explanation.
Complainant alleges that the evidence on record does not suggest that Respondent is commonly known by the Domain Names. Complainant also avers that Respondent is not affiliated with Complainant in any way. Moreover, Complainant contends that Respondent is not known individually or as a business by any of the Domain Names. Thus, if the Panel determines that Respondent has not shown that it is commonly known by the disputed domain names, the Panel may conclude that that Respondent does not have rights or legitimate interests in connection with the Domain Names pursuant to Policy ¶ 4(c)(ii). See 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest 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).
An individual with the name “Brian Neiman” or the nickname “Bri-Guy” may possibly exist but the Panel is not able to determine that matter on the information provided and it is not for it to speculate on what may or may not be the position. In any event, even if this were established to be the case, Respondent has made no effort to explain why the name “neimanmarcus” rather than “neiman” simplicity appears in the Domain Names.
On the basis of the
record the Panel finds that Respondent has not used the Domain Names in
connection with either a bona fide offering of goods or services in
accord with Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii), because the disputed domain names resolve to websites featuring links to
third-party websites that offer products in direct competition with
Complainant’s business.
The Panel further finds that Respondent utilized the Domain Names with the intent to divert Internet users to unrelated websites that provide links to competing commercial websites, and concludes that Respondent has not used the Domain Names in a manner consistent with either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(a)(i)); see also Bank of Am. Corp. v. Nw. 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).”).
Thus the Panel is satisfied that the second element of the Policy has been met.
As
noted above, Complainant contends that the Domain Names, which are
confusingly similar to Complainant’s registered NEIMAN MARCUS mark, resolve to
websites offering links to commercial websites that directly compete with
Complainant’s business. On this basis
the Panel finds that the Domain Names potentially confuse Internet users as to
the affiliation between Complainant and Respondent’s websites, the direct result
of which is the commercial benefit of Respondent.
It is also of the view that
Respondent’s use of the Domain Names demonstrates bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See
State Fair of Tex. v. Granbury.com,
FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the
respondent registered the domain name <bigtex.net> to infringe on the
complainant’s goodwill and attract Internet users to the respondent’s website); see also Entrepreneur Media,
Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) (“While an intent to confuse
consumers is not required for a finding of trademark infringement, intent to
deceive is strong evidence of a likelihood of confusion.”); see also Zee TV USA, Inc. v.
Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent
engaged in bad faith registration and use by using a domain name that was
confusingly similar to the complainant’s mark to offer links to third-party
websites that offered services similar to those offered by the complainant).
The Panel is therefore satisfied that the third element of the Policy has been met.
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 <bri-guyneimanmarcus.com>, <brianneimanmarcus.com>,
<brianneimanmarcus.net>, and <brianneimanmarcus.org> domain
names be TRANSFERRED from Respondent to Complainant.
Clive Elliott Panel
Dated: October 18, 2006
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum