DECISION

The Neiman Marcus Group, Inc. v. Huh Jinwang

Claim Number: FA0204000109047

PARTIES

Complainant is The Neiman Marcus Group, Inc., Dallas, TX (“Complainant”) represented by David J. Steele, of Christie, Parker & Hale LLP.  Respondent is Huh Jinwang, Dong-gu Daegu, KOREA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <neimanmarcus.net>, registered with OnlineNIC, 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 (the “Forum”) electronically on April 3, 2002; the Forum received a hard copy of the Complaint on April 5, 2002.

On April 4, 2002, OnlineNIC, Inc. confirmed by e-mail to the Forum that the domain name <neimanmarcus.net> is registered with OnlineNIC, Inc. and that Respondent is the current registrant of the name.  OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, 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 April 8, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 18, 2002 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@neimanmarcus.net by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On May 13, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 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

The disputed domain name <neimanmarcus.net> is confusingly similar to NEIMAN MARCUS and NEIMAN-MARCUS (collectively, the “NEIMAN MARCUS marks”), registered marks in which Complainant holds rights.

Respondent has no rights or legitimate interests in respect of the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent did not submit a Response in this proceeding.

FINDINGS

Complainant’s principal retail chain, the Neiman Marcus Company, was established in 1907 as a specialty store that has now become an internationally recognized innovator in fashion and merchandise.  Complainant has developed, through its NEIMAN MARCUS marks, a reputation for high prices and high quality in the retail fashion world.  Complainant operates thirty-one retail stores, and it reports that hundreds of thousands of consumers hold its NEIMAN MARCUS branded charge accounts.

Complainant owns several trademarks in NEIMAN-MARCUS and NEIMAN MARCUS, registered on the Principal Register of the United States Patent and Trademark Office as early as January 1955 (Reg. No. 601,375).  Complainant also operates a website at <neimanmarcus.com> to further its retail operations.

Respondent registered the disputed domain name on November 14, 2001.  Respondent’s only use of the domain name is to operate a web site created solely to sell the domain name. As Respondent explains on its website. “We regret to say that this web site is not operate [sic] any more.  We decided to sell the web site. So, if you [sic] interested in buying it, contact us.”  At first glance, Respondent’s web site creates the impression that at one point Respondent actually operated a consulting company named “NeimanMarcus Consulting Inc.”  However, no such company actually exists.  Repeated searches failed to reveal any information on any ongoing business concern so named.  In fact, Respondent has merely crafted this facade of a web site to create the appearance that some legitimate business concern had in fact registered and was using the domain name.

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 the 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.

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; and

(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.

Identical and/or Confusingly Similar

Complainant through registration and use has established it has rights in the the NEIMAN MARCUS marks.  Therefore, Respondent’s <neimanmarcus.net> domain name is identical to Complainant’s registered marks because the addition of a top level domain name like “.net” does not affect a mark for the purpose of determining whether it is identical to the domain name.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Little Six, Inc., v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE trademark and service mark).

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

Rights or Legitimate Interests

The fame of Complainant’s marks is sufficient to show that Respondent could not be commonly known by the marks.  See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).  As a result, Respondent does not have any rights or legitimate interests in the domain name at issue because Respondent is not commonly known by the 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 Respondent does not have rights in domain name when Respondent is not known by the mark). 

Respondent’s offer to sell the domain name suggests that Respondent has no rights or legitimate interests pursuant to Policy ¶ 4(c)(iii).  See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell domain name suggests it has no legitimate use).

Also, there is no evidence that demonstrates that Respondent has made any legitimate, noncommercial or fair use of the  <neimanmarcus.net> domain name pursuant to Policy ¶ 4(c)(iii) nor is there evidence of a bona fide offering under Policy ¶ 4(c)(i).  See Chanel, Inc. v. Heyward, D2000-1802 (Feb. 23, 2001) (finding no rights or legitimate interests where "Respondent registered the domain name and did nothing with it").

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

Registration and Use in Bad Faith

Respondent’s registration of Complainant’s famous mark in its entirety for Respondent’s domain name is evidence of bad faith.  See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding bad faith when (1) the domain name contains Complainant’s mark in its entirety, (2) the mark is a coined word, well-known and in use prior to Respondent’s registration of the domain name, and (3) Respondent fails to allege any good faith basis for use of the domain name).

Finally, Respondent’s conduct indicating its purpose for registering the domain name was to sell it for profit is evidence of bad faith pursuant to Policy ¶ 4(b)(i).  See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent willingness of Respondent to sell the domain name in issue from the outset, albeit not at a price reflecting only the costs of registering and maintaining the name); see also Dollar Rent A Car Sys. Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that Respondent demonstrates bad faith by registering the domain name for the purpose of selling the domain name in an amount in excess of out of pocket costs).

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 the requested relief should be hereby granted.

Accordingly, it is Ordered that the <neimanmarcus.net> domain name be transferred from Respondent to Complainant.

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

Dated: May 17, 2002

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