DECISION

 

Nordstrom, Inc.; and NIHC, Inc. v. Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf

Claim Number: FA2401002079435

 

PARTIES

Complainant is Nordstrom, Inc. and NIHC, Inc. ("Complainant"), represented by Douglas M. Isenberg of The GigaLaw Firm, Georgia, USA. Respondent is Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf ("Respondent"), Iceland.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <nordstromrack.us.com>, registered with NameCheap, 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.

 

Darryl C. Wilson, as Panelist.

 

PROCEDURAL HISTORY

Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated on January 14, 2024.

 

Complainant submitted a Complaint to Forum electronically on January 16, 2024; Forum received payment on January 16, 2024.

 

On January 17, 2024, NameCheap, Inc. confirmed by e-mail to Forum that the <nordstromrack.us.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the "CDRP Policy").

 

On January 18, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 7, 2024, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@nordstromrack.us.com. Also on January 18, 2024, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts.

 

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

 

On February 8, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the CDRP Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, CDRP Rules, 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.

 

PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS

The Complainants in this administrative proceeding are Nordstrom, Inc. (a Washington (USA) corporation), and NIHC, Inc. (a Colorado (USA) corporation). Complainant NIHC, Inc., is an intellectual property holding company for, and a wholly owned subsidiary of, Complainant Nordstrom, Inc. Given the legal relationship between Nordstrom, Inc., and NIHC, Inc., it is appropriate that this Complaint is filed on behalf of both entities. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.4.1.3, "[a] trademark owner's

affiliate such as a subsidiary of a parent or of a holding company… is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint."; see also Guess? IP Holder L.P. and Guess?, Inc. v. Jerry Guess, FA 2002904 (Forum Aug. 23, 2022) "The Forum's Supplemental Rule 1(e) defines "The Party Initiating a Complaint Concerning a Domain Name Registration" as a "single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint." 

 

The Panel here finds that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and thus it will treat them as a single entity in this proceeding.

 

PARTIES' CONTENTIONS

A.       Complainant

Complainant is a leading fashion retailer founded in 1901 that currently serves customers in stores at more than 350 Nordstrom, Nordstrom Local, and Nordstrom Rack locations, and also online through its Nordstrom and Nordstrom Rack apps and websites.

Respondent is using the Disputed Domain Name in connection with a website that appears to be associated with Complainant by using the NORDSTROM mark and by offering for sale goods that are the same as the goods offered by Complainant in connection with the NORDSTROM mark.

 

The Respondent has no rights or legitimate interests in the Disputed Domain Name. Complainant has never assigned, granted, licensed, sold, transferred or in any way authorized the Respondent to register or use the NORDSTROM mark in any manner.

 

Respondent's use of the Disputed Domain Name in connection with a website that appears to be developed, sponsored by, or otherwise associated with Complainant is clearly illegitimate and misleading. Respondent cannot establish rights or legitimate interests in the disputed domain name.

 

Respondent's deceptive unauthorized use of Complainant's mark on its website is clearly "creating a likelihood of confusion" with the NORDSTROM mark, constituting bad faith pursuant to paragraph 4(b)(iv) of the Policy.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is the owner of domestic and global registrations for the mark NORDSTROM which it has used continuously since at least as early as 1984 in connection with its manufacture and distribution of products and services in the clothing industry. Complainant also owns and uses multiple domain names that consist of or include the NORDSTROM mark, including <nordstrom.com> (created July 14, 1994) and <nordstromrack.com> (created September 30, 1998).

 

Respondent is Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf ("Respondent"), of Reykjavik, Iceland. Respondent's registrar's address is unlisted. Respondent registered the disputed domain name <nordstromrack.us.com> on or about April 17, 2022.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 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 or is being used in bad faith.

 

The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Compliant.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the CDRP Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

Complainant asserts rights in the NORDSTROM mark based upon registration with the USPTO (see USPTO Reg. No. 1281000 registered June 5, 1984). Registration of a mark with the USPTO sufficiently establishes rights in the mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i)."). The Panel here finds that Complainant has established rights in the mark under Policy ¶ 4(a)(i).

 

The Disputed Domain Name contains the NORDSTROM mark in its entirety and merely adds generic top level domains. For purposes of the CDRP, the top-level domain ".com" and the second-level domain ".us"  are ignored when comparing the Disputed Domain Name to the NORDSTROM mark. See, Mattress Firm, Inc. v. Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf, Forum Claim No. 01989499 ("adding the '.us' ccTLD and the '.com' gTLD… do not distinguish the Domain Name from Complainant's mark for the purposes of Policy ¶ 4(a)(i)"), see also Advanced Micro Devices, Inc. v. Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf, Forum Claim No. 2018765 ("the domain name is identical to the AMD mark as it consists of the AMD mark and adds the '.us.com' TLD");

 

 

The Panel here finds the domain name is identical and/or confusingly similar to Complainant's mark per Policy ¶ 4(a)(i).

 

The Complainant has proven this element.

 

Rights or Legitimate Interests

The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) ("Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests"). Complainant has made out a prima facie case here.

 

To Complainant's knowledge, Respondent has never been commonly known by the Disputed Domain Name and has never acquired any trademark or service mark rights in the Disputed Domain Name. Further Complainant has never authorized Respondent's use of Complainant's mark in any manner. Where WHOIS information suggests a respondent is not known by a disputed domain name, if there is no further evidence to the contrary, Panels have found a respondent is not commonly known by the disputed domain name. See SPTC, Inc. v. Bonanzas.com, Inc., FA 409895 (Forum Mar. 14, 2005) (no rights or legitimate interest in domain name SOTHEBYSAUCTIONS.COM because respondent was not known by SOTHEBY'S name). Here the WHOIS information for the disputed domain name indicates the registrant as Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf. Respondent provided no evidence to indicate that Respondent is in fact known by the disputed domain name.

Respondent is using the Disputed Domain Name in connection with a website that appears to be developed, sponsored by, or otherwise associated with Complainant as it uses Complainant's NORDSTROM mark and offers for sale goods that are the same as the goods offered by Complainant. By using the NORDSTROM mark and offering for sale goods that are the same as the goods offered by Complainant, Respondent has failed to establish a bona fide offering of goods or services under the Policy. Respondent has also failed to demonstrate rights or legitimate interests under Paragraph 4(c)(i) of the Policy. See Scott and White Memorial Hospital and Scott, Sherwood, and Brindley Foundation v. Bao Shui Chen, WIPO Case No. D2009-0174 (finding no rights or legitimate interests where "the Respondent was… using the disputed domain name to re-direct Internet users to commercial websites that promote the services of competitors in the same business as the Complainant");

 

The Panel here finds Respondent is not commonly known by the disputed domain name, and further lacks rights or legitimate interests in the name per Policy ¶ 4(a)(ii).

 

The Complainant has proven this element.

 

Registration or Use in Bad Faith

Respondent is using the Disputed Domain Name in connection with a website that falsely purports to be a website for, or is otherwise associated with, Complainant. Such use has previously been found to be "likely fraudulent" and "indicates an intent to deceive or, at a minimum, act in bad faith with the intent for commercial gain." See DocuSign, Inc. v. Traffic CPMiPV, Maria Carter, WIPO Case No. D2010-0344, see also, Emu (Aus) Pty Ltd. and Emu Ridge Holdings Pty Ltd. v. Antonia Deinert, WIPO Case No. D2010-1390 ("a reasonable person who visited the Respondent's website was likely to be misled in relation to the source, sponsorship, affiliation, or endorsement of the website and the products purportedly made available for online sale on the website").

In light of the history of Complainant's mark, Complainant's significant presence and brand recognition, and Respondent's use, the panel here finds that Respondent knew of the Complainant's mark when it registered the domain name, and through its use sought to obtain a commercial benefit by attracting Internet users based on consumer confusion. Respondent's registration and use in such a manner constitutes bad faith under the Policy. See OSRAM GmbH v. Azarenko Vladimir Alexeevich, WIPO Case No. D2016-1384 September 5, 2016 (finding bad faith where "Respondent must have been aware of the Complainant and its said trademark when it registered the disputed domain name" and "the Panel cannot conceive of any use that the Respondent could make of the disputed domain name that would not interfere with the Complainant's long-established trademark rights").

 

The Panel here finds that Complainant has shown bad faith registration and use by Respondent per Policy ¶ 4(a)(iii).

 

The Complainant has proven this element.

 

DECISION

Having established all three elements required under the CDRP Policy, the Panel concludes that Complainant's requested relief shall be GRANTED.

 

Accordingly, it is Ordered that the <nordstromrack.us.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

 

Darryl C. Wilson, Panelist

Dated: February 22, 2024