The Neiman Marcus Group, Inc. and NM
Claim Number: FA0702000917064
Complainant is 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- North Tower, Newport Beach, CA, 92660. Respondent is Leninm Mike (“Respondent”), Zelenograd, 1117, 141, Moscoww 0, 124460, RU.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <marcus-neiman.com>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 14, 2007; the National Arbitration Forum received a hard copy of the Complaint February 15, 2007.
On February 16, 2007, Direct Information Pvt Ltd d/b/a Publicdomainregistry confirmed by e-mail to the National Arbitration Forum that the <marcus-neiman.com> domain name is registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry and that Respondent is the current registrant of the name. Direct Information Pvt Ltd d/b/a Publicdomainregistry verified that Respondent is bound by the Direct Information Pvt Ltd d/b/a Publicdomainregistry registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On February 16, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 8, 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@marcus-neiman.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 13, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The disputed domain name that Respondent registered, <marcus-neiman.com>, is confusingly similar to Complainant’s NEIMAN-MARCUS mark.
2. Respondent has no rights to or legitimate interests in the <marcus-neiman.com> domain name.
3. Respondent registered and used the <marcus-neiman.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, NM Nevada Trust, owns and licenses the Neiman Marcus trade name and the NEIMAN-MARCUS family of marks currently in dispute. Complainant, The Neiman Marcus Group, Inc., is a nationwide retail chain and mail order catalog business, specializing in “innovative” high-end fashion and merchandising. Complainant has provided retail goods and services since 1907 under the NEIMAN MARCUS family of marks and owns numerous trade and service mark registrations, including the NEIMAN-MARCUS mark registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 601,375 issued January 25, 1955).
Respondent registered the <marcus-neiman.com> domain name October 25, 2006. Respondent’s disputed domain name resolves to a web page that simply states: “Under Construction;” and provides a yellow button that links Internet users to another website containing numerous links to various unrelated 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 will draw such inferences as the Panel 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 Complainant to 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 established with extrinsic evidence in this proceeding that it has rights to and legitimate interests in the NEIMAN-MARCUS mark through its long-standing registration with the USPTO. The Panel finds that Complainant’s registration is sufficient to establish rights in the NEIMAN-MARCUS mark for purposes of Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bin g Glu, FA 874496 (Nat Arb. Forum January February 13, 2007) (finding rights in the METLIFE mark as a result of its registration with the United States federal trademark authority); see also Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding the Complainant’s federal trademark registration establishes rights under Policy ¶ 4(a)(i)).
Complainant contends that the disputed domain name
that Respondent registered, <marcus-neiman.com>,
is confusingly similar to Complainant’s well-known mark. Respondent’s domain name contains all the
features of Complainant’s NEIMAN-MARCUS mark but reverses the terms “neiman”
and “marcus.” The Panel finds that
Respondent’s domain name is confusingly similar to Complainant’s
long-established mark for purposes of Policy ¶ 4(a)(i). See
The Panel finds that Complainant satisfied Policy ¶
4(a)(i).
Complainant established that it has rights to and legitimate interests in the mark contained in its entirety in the disputed domain name. Complainant alleges that Respondent lacks such rights or legitimate interests in the <marcus-neiman.com> domain name. Where Complainant has made a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth concrete evidence that it does possess rights or legitimate interests in the disputed domain name. 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”).
Complainant contends that the disputed domain name, <marcus-neiman.com>, resolves to a
website that merely displays the phrase: “Under Construction,” along with a
yellow button that redirects Internet users to another website, which features
links to various unrelated commercial websites.
The Panel infers from Respondent’s use that Respondent generates
click-through fees for each misdirected Internet user. Such use is not a use in connection with a bona
fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See WeddingChannel.com Inc. v. Vasiliev,
FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users
to websites unrelated to the complainant’s mark, websites where the respondent
presumably receives a referral fee for each misdirected Internet user, was not
a bona fide offering of goods or services as contemplated by the
Policy); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644
(Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly
similar to Complainant’s mark to divert Internet users to websites unrelated to
Complainant's business does not represent a bona fide offering of goods or
services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under
Policy ¶ 4(c)(iii).”).
Moreover, Complainant contends that Respondent has not established rights or legitimate interests under Policy ¶ 4(c)(ii). The WHOIS information for the <marcus-neiman.com> domain name lists the registrant as “leninm Mike.” In the absence of evidence of a license to register domain names featuring Complainant’s mark, or any derivation thereof, the Panel finds that Respondent is not commonly known by the disputed domain name for purposes of Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
The Panel finds that Complainant satisfied Policy ¶
4(a)(ii).
Complainant also alleges that Respondent acted in bad faith in registering and using a domain name that contains in its entirety Complainant’s protected mark. Respondent is using the <marcus-neiman.com> domain name to operate a website that features the phrase “Under Construction” and includes a yellow button that redirects Internet users to another website that contains links to various commercial websites, presumably for the purpose of collecting referral fees. The Panel finds that Respondent is using the disputed domain name to confuse Internet users as to Complainant’s affiliation with the <marcus-neiman.com> domain name and that Respondent is capitalizing on that confusion through the collection of click-through fees. Such use is evidence of bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
The Panel finds that Complainant satisfied Policy ¶
4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marcus-neiman.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 22, 2007.
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