national arbitration forum

 

DECISION

 

The Neiman Marcus Group, Inc. and NM Nevada Trust v. Kevin Bordes a/k/a BasicDomains.Net

Claim Number: FA0612000874493

 

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, CA 92660.  Respondent is Kevin Bordes a/k/a BasicDomains.Net (“Respondent”), 8905 Jefferson Highway, River Ridge, LA 70123.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <neamanmarcus.com>, registered with Droplabel.com 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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 20, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 21, 2006.

 

On December 22, 2006, Droplabel.com Inc confirmed by e-mail to the National Arbitration Forum that the <neamanmarcus.com> domain name is registered with Droplabel.com Inc and that Respondent is the current registrant of the name.  Droplabel.com Inc has verified that Respondent is bound by the Droplabel.com 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 January 3, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 23, 2007 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@neamanmarcus.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On January 26, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <neamanmarcus.com> domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark.

 

2.      Respondent does not have any rights or legitimate interests in the <neamanmarcus.com> domain name.

 

3.      Respondent registered and used the <neamanmarcus.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainants, The Neiman Marcus Group, Inc. and NM Nevada Trust (collectively, “Complainant”), have been in the high-end retail business since 1907.  Complainant operates a chain of retail stores across the United States under the NEIMAN MARCUS mark and publishes a mail order catalog of retail goods that it distributes throughout the world.  Complainant also maintains a website at the <neimanmarcus.com> domain name.

 

Complainant holds numerous trademark registrations for the NEIMAN MARCUS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 601,375 issued January 25, 1955; Reg. No. 601,723 issued February 1, 1955; Reg. No. 601,864 issued February 8, 1955; Reg. No. 934,177 issued May 16, 1972; Reg. No. 1,593,195 issued April 24, 1990).

 

Respondent’s <neamanmarcus.com> domain name, which it registered on September 9, 2006, resolves to a commercial web directory displaying links to various other retail shopping websites, some of which compete with Complainant.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Through registration of the NEIMAN MARCUS mark with the USPTO, Complainant has established rights in the mark pursuant to Policy ¶ 4(a)(i).  See Miller Prods. Co. v. Grozinger, FA 823231 (Nat. Arb. Forum Dec. 5, 2006) (“Rights in a trademark can be shown in several ways, including by way of a U.S. trademark registration.  A trademark registration constitutes prima facie evidence of its ownership and validity of the mark.”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).

 

Respondent’s <neamanmarcus.com> domain name contains a misspelled variation of Complainant’s NEIMAN MARCUS mark, simply substituting the letter “a” for the letter “i.”  In Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001), the panel found the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the respondent merely substituted the letter “e” for the letter “i” in the complainant’s mark.  Likewise, the mere substitution of one letter in Respondent’s domain name does not sufficiently distinguish the <neamanmarcus.com> domain name from the NEIMAN MARCUS mark, and therefore, the Panel finds the disputed domain name to be confusingly similar to the mark pursuant to Policy ¶ 4(a)(i).  See Intelius, Inc. v. Kim Sang Hyn, FA 703175 (Nat. Arb. Forum Jul. 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the <neamanmarcus.com> domain name.  Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).

 

Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the disputed domain name.  See 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); see also Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise).  However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

Respondent has registered the domain name under the name “Kevin Bordes a/k/a BasicDomains.Net,” and there is no other evidence in the record suggesting that Respondent is commonly known by the <neamanmarcus.com> domain name.  Accordingly, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name 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 Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum Jul. 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).

 

In addition, Respondent’s <neamanmarcus.com> domain name resolves to a commercial web directory containing links to Complainant’s competitors and to other content.  In TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002), the panel concluded that respondent’s registration and use of confusingly similar domain names to divert Internet users to its own website did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii), and that hosting links to the complainant’s direct competitors only reinforced that conclusion.  Likewise, Respondent is also diverting Internet users to its own website containing links to Complainant’s competitors, and therefore its use of the disputed domain name also is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial use under Policy ¶ 4(c)(iii).  See The Royal Bank of Scot. Group plc et. Al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).

 

Furthermore, as the <neamanmarcus.com> domain name is simply a misspelled variation of Complainant’s mark, the Panel finds that Respondent is engaged is typosquatting, which provides additional evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent has registered and is using the <neamanmarcus.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because the disputed domain name resolves to a website with links to Complainant’s competitors and to unrelated content.  The Panel infers that Respondent receives click-through fees for each consumer it diverts to third-party websites.  Therefore, Respondent is taking advantage of the confusing similarity between Complainant’s NEIMAN MARCUS mark and the domain name in dispute in order to profit from the goodwill associated with the mark.  This diversionary use of the disputed domain name provides evidence of bad faith registration and use under Policy ¶ 4(b)(iv).  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting from click-through fees); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶ 4(b)(iv).”). 

 

Furthermore, Respondent has registered and used the disputed domain name for the  purpose of disrupting the business of Complainant, because Respondent’s website at the disputed domain name displays links to Complainant’s competitors.  Therefore, Respondent has registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S.  Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).

 

Moreover, Respondent’s misspelling of Complainant’s NEIMAN MARCUS mark in the <neamanmarcus.com> domain name indicates that Respondent is typosquatting.  Typosquatting constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006) (“Respondent misspells the Mark with intent to intercept internet users from Complainant’s web site, given the fact that Complainant’s website is a popular website and the Disputed Domain Name is a misspelling of the Mark which is highly likely to occur.  This typosquatting is evidence of bad faith.”); see also Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).

 

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 <neamanmarcus.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  February 9, 2007

 

 

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