national arbitration forum

 

DECISION

 

The Neiman Marcus Group, Inc. and NM Nevada Trust v. Ho Nim

Claim Number: FA1002001305813

 

PARTIES

Complainant is The Neiman Marcus Group, Inc. and NM Nevada Trust (“Complainant”), represented by Anne F. Bradley, of Christie, Parker & Hale, LLP, California, USA.  Respondent is Ho Nim (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <nieumanmarcus.com>, <neirmanmarcus.com>, <neaumanmarcus.com> and <niemnmarcus.com> registered with Above, 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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 29, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 1, 2010.

 

On February 2, 2010, Above, Inc. confirmed by e-mail to the National Arbitration Forum that the <nieumanmarcus.com>, <neirmanmarcus.com>, <neaumanmarcus.com> and <niemnmarcus.com> domain names are registered with Above, Inc. and that Respondent is the current registrant of the names.  Above, Inc. has verified that Respondent is bound by the Above, 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 February 5, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 25, 2010 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@nieumanmarcus.com, postmaster@neirmanmarcus.com, postmaster@ neaumanmarcus.com, and postmaster@niemnmarcus.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 4, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <nieumanmarcus.com>, <neirmanmarcus.com>, <neaumanmarcus.com> and <niemnmarcus.com> domain names are confusingly similar to Complainant’s NEIMAN MARCUS mark.

 

2.      Respondent does not have any rights or legitimate interests in the <nieumanmarcus.com>, <neirmanmarcus.com>, <neaumanmarcus.com> and <niemnmarcus.com> domain names.

 

3.      Respondent registered and used the <nieumanmarcus.com>, <neirmanmarcus.com>, <neaumanmarcus.com> and <niemnmarcus.com> domain names in bad faith.

 

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

 

FINDINGS

Complainant, The Neiman Marcus Group, Inc. and NM Nevada Trust, holds numerous trademark registrations for its NEIMAN MARCUS mark with the United States Patent and Trademark Office (e.g., Reg. No. 934,177 issued May 16, 1972) in connection with retail speciality department store services.

 

Respondent, Ho Nim, registered the <nieumanmarcus.com> domain name on October 27, 2009, the <neirmanmarcus.com> domain name on November 5, 2009, the <neaumanmarcus.com> domain name on October 15, 2009, and the <niemnmarcus.com> domain name on January 23, 2010.  The disputed domain names resolve to websites featuring links to competitors of Complainant.  Respondent presumably receives pay-per-click fees from these linked websites.

 

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

 

Complainant asserts rights in its NEIMAN MARCUS mark through its holding of multiple trademark registrations for the NEIMAN MARCUS mark with the USPTO (e.g., Reg. No. 934,177 issued May 16, 1972).  The Panel finds that Complainant has established rights in the NEIMAN MARCUS mark under Policy ¶ 4(a)(i) through its registration with the USPTO.  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Complainant argues that Respondent’s <nieumanmarcus.com>, <neirmanmarcus.com>, <neaumanmarcus.com> and <niemnmarcus.com> domain names are confusingly similar to Complainant’s NEIMAN MARCUS mark pursuant to Policy ¶ 4(a)(i).  Respondent’s <nieumanmarcus.com> domain name is confusingly similar because it transposes two letters in Complainant’s mark and adds an additional letter.  The Panel finds that the transposition of letters creates a confusing similarity between the disputed domain name and Complainant’s mark.  See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark).  The Panel also finds that the addition of a letter to Complainant’s mark creates a confusing similarity between Complainant’s mark and a disputed domain name.  See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark).

 

Respondent’s <neirmanmarcus.com> domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark because it merely adds a letter to Complainant’s mark.  The Panel finds that the addition of a single letter to Complainant’s mark creates a confusing similarity between the disputed domain name and Complainant’s mark.  See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark).

 

Respondent’s <neaumanmarcus.com> domain name is confusingly similar to Complainant’s NEIMAN MARCUS mark because it replaces the letter “i” in Complainant’s mark with a the letter “a” and adds an additional letter to Complainant’s mark.  The Panel finds that misspelling Complainant’s mark by replacing the letter “i” with the letter “a” creates a confusing similarity between the disputed domain name and Complainant’s mark.  See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”); see also Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 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 also finds that the addition of a single letter to Complainant’s mark creates a confusing similarity between the disputed domain name and Complainant’s mark.  Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark).

 

Respondent’s <niemnmarcus.com> domain name is confusingly similar because it merely transposes two letters in Complainant’s mark and deletes the letter “a” from the mark.  The Panel finds that the transposition of two letters creates a confusing similarity between the disputed domain name and Complainant’s mark.  See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to the complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Wyndham IP Corp. v. LaPorte Holdings, Inc., FA 373545 (Nat. Arb. Forum Jan. 17, 2005) (finding the <wynhdam.com> and <wyandham.com> domain names to be confusingly similar to the complainant’s WYNDHAM mark because the domain names merely transposed letters in the mark).  The Panel also finds that the deletion of a single letter from Complainant’s mark creates a confusing similarity between the disputed domain name and Complainant’s mark.  See Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”); see also Myspace, Inc. v. Kang, FA 672160 (Nat. Arb. Forum June 19, 2006) (finding that the <myspce.com> domain name was confusingly similar to the complainant’s MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity).

 

All of Respondent’s disputed domain names delete the space between the words in Complainant’s mark and add the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the deletion of the spaces and the addition of gTLDs does not distinguish the disputed domain names from Complainant’s mark.  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).  Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that Respondent’s <nieumanmarcus.com>, <neirmanmarcus.com>, <neaumanmarcus.com> and <niemnmarcus.com> disputed domain names are confusingly similar to Complainant’s NEIMAN MARCUS mark.

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names.  Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).  Based on the arguments made in the Complaint, the Panel finds that Complainant has established a prima facie case in support of its contentions and Respondent has failed to submit a Response to these proceedings.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”).  Nevertheless, the Panel will examine the record to determine whether Respondent has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).

 

The WHOIS information lists the registrant as “Ho Nim.”  Complainant has not licensed Respondent to use its NEIMAN MARCUS mark and Respondent does not have any legal relationship with Complainant that would entitle Respondent to use Complainant’s mark.  The Panel finds that Respondent is not commonly known by the disputed domain name pursuant to 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 Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Respondent’s disputed domain names were registered between October 15, 2009 and January 23, 2010.  The disputed domain names resolve to websites featuring links to competitors of Complainant.  Respondent presumably receives pay-per-click fees from these linked websites.  The Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods offering of goods and services pursuant to Policy ¶ 4(c)(i) or making a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).  See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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)); see also Royal Bank of Scotland Grp 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).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

The Panel finds that Respondent’s use of the disputed domain name to display links to third-party websites that compete with Complainant constitutes a disruption of Complainant’s business pursuant to Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).

 

The Panel finds that Respondent is using the disputed domain name to intentionally attract Internet users and profit through the receipt of pay-per-click fees.  The Panel finds that this use is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); 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 finds that Policy ¶ 4(a)(iii) has been satisfied.

 

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 <nieumanmarcus.com>, <neirmanmarcus.com>, <neaumanmarcus.com> and <niemnmarcus.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  March 18, 2010

 

 

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